Trademarks and Infringement Concerns for Startups

Recently a suit was filed against Microsoft based on the name of its Bing search engine for trademark infringement and other bases. The complaint was recently filed, so a lot of information is not yet available. However, useful information for trademark and brand planning for startups can be gleaned from the news articles, court filings, and USPTO records, and company websites.

http://www.cio.com/article/511289/Design_Company_Bing_Sues_Microsoft_Over_Trademark?source=rss_news

The complainant, Bing Information Design, calls itself a design firm on its website. It’s trademark application states that “Bing!” has been used in connection with services including, in part, advertising and design services, advertising via the internet, and promoting the goods and services of others. Microsoft’s trademark application seeks to use “Bing” in connection with advertising services, dissemination of advertising for others via the Internet, promoting the goods and services of others, and other products/services. The “Bing” and “Bing!” marks are similar and the services seem to overlap. There are multitude of other factors in determining trademark infringement, but at first glance the lawsuit does not seem baseless, even if the court holds that Microsoft did not infringe Bing Information Design’s mark.

It is hard to say what will be the outcome of the lawsuit based on the current (and future) information. However, from a startup’s perspective (or others launching a brand name), this article should highlight a couple of issues:

  1. Before launching a brand name, perform as thorough a search as possible. Proactively searching can minimize later problems. It is usually preferable to know about a similar mark before spending time and money creating the goodwill associated with a mark. Also, Bing Information Design had not applied to register the “Bing!” mark and had not registered bing.com, thus a brief level search may not have located its presence.
  2. Be open to multiple possible brand names. Microsoft has stated that its believes the lawsuit is without merit and that it does not believe there is any confusion in the marketplace. However, assume for a moment that a startup (with a smaller budget than Microsoft) is seeking to use “Bing” as a mark in connection with a search engine that generates revenue from advertising. And assume further that the startup knows of another company using the name “Bing” in connection with providing advertising services. Even though it is an ambiguous situation, it may be prudent to uses a different mark. Microsoft would surely survive such a situation, but that startup may not be able to survive the lost employee time and money involved in a potential lawsuit.
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Common Factors on Timing to File a Patent Application

Frequently, I am asked when a patent application should be filed . I often start the discussion with questions in two areas:

  1. Is the new product or process complete?
  2. What is (or will be) happening to demonstrate and monetize the new product or process?

Is the product or process complete?

In asking this question, I am,  in part, trying to determine if the inventor can meet disclosure requirements for a patent application. The disclosure needs to be sufficient and precise enough to show what the inventor knew at the time of filing the patent application. Additionally, the disclosure should contain enough information to enable one knowledgeable in the technology at issue to make and use the technology.

In one conversation, I talked to a musician who wanted to alter input sounds and music in a certain manner. At the time, he was not clear whether he wanted to alter the sound mechanically, electronically, or other means. In his case, it was far too early for him to proceed with a patent application. He needed to work further on his idea to define, refine, and possess it. On the other hand, I have met with people who have had the idea for a new product, drawings, and were able to effectively discuss the creation and operation of the new product. In some cases, those individuals had sufficient disclosure to file a patent application, even before a prototype was built.

What has been done and what will be done with the new product or process?

Frequently innovators are trying to monetize the new product or process (no surprise there). This may involve demonstrations, pitching to angels/VCs, sales, offer of sale, distributing information on the product, etc. In the United States and other countries, patents rights are impacted by public disclosure, public use, offers of sale, or sale of material which is the subject of a patent application. Generally all of those actions cause a loss of foreign patent rights. In the United States, a patent must be filed within a year of those actions to avoid a bar to one’s patent rights. However, as a practical matter, even if one expects to only seek patent rights in the United States, the patent application should be filed before any of the mentioned actions. One risk in exposing the idea is that another may file a patent application prior to your patent application.  In the U.S., the first person to file usually succeeds in litigation when there is a dispute as to who owns the intellectual property. Thus, one is in a better position by filing a patent application prior to public presentation, public use, sale (or offer) of the new product or process.

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Trademarks – An Overview of the Registration Process

 

Frequently, the owner of those rights may choose to seek the advantages of registering the trademark. Typical steps involved in the registration process include:

  1. performing a search

  2. preparing and submitting the trademark application

  3. and responding to issues raised by the trademark office

During the process of creating trademarks, such as brand names or logos, a search should be initiated. A search based on your potential trademark is performed to minimize the chances of using a mark that is unavailable. If a similar mark is located, it may be prudent to create a different brand name or logo rather than proceed with that brand name in business or in a trademark application. The search can locate other possibly confusingly similar trademarks, as well as reducing other issues in the trademark registration process. The sources searched can vary, but may include trademark registries, company filings, company directories, product databases, trade journals or other sources.

After the search report is reviewed, an application may be submitted to the appropriate trademark office(s). In order to draft the trademark application, information on the mark will be gathered and analyzed. Some information under consideration will be a sample of the mark itself, how and where the mark is being used, who will own the rights in the mark, and evidence of use of the mark. This information will be used to draft and submit a trademark application.

In time, the trademark office will review the submitted trademark application. The trademark office will perform its own trademark search, as well as review the application for other compliance issues. Common issues raised by the trademark offices include:

  • likelihood of confusion with other trademarks
  • descriptive marks
  • generic marks
  • merely ornamental marks

The applicant needs to address the issues raised in the trademark application. If successful in addressing those issues, the applicant’s mark will be published for opposition, where parties with standing may oppose the application. If there is no opposition, the mark will be registered.

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Can an invention combine existing technologies?

Clients frequently ask whether it is possible to be granted a patent on an invention that does not contain new components. The answer is “yes.” The majority of patents are in fact “combination”  or “improvement” patents. It is rare that someone creates something as new as a transistor or another fundamental building block technology. People frequently create new machines or articles of manufacture based on existing technologies. Take a look at the attached article titled “Self-Taught Inventer [sic] Creates Homemade Electric Wheelchair”

http://www.weirdasianews.com/2009/11/27/selftaught-inventer-creates-homemade-electric-wheelchair/

In essence, his creation is a combination of existing technology. The bare bones elements of his creation include shaped materials in various components, wheels, and electricity. The video shows him using commonly available tools to build his creation. We know that metal of various shapes is not new. We also know that powering the rotation of a shaft via electricity is not new. However, a wheelchair with a shaft attached from which multiple wheels are connected that enables the injured or elderly to descend stairs without assistance is a combination of existing technology that could form the basis of patent application.

Assuming the wheelchair does not already exist, the main question to ask is whether the new combination of features is nonobvious. In other words would a person of ordinary skill in the technology have combined the features to produce the unique item on the filing date of the patent application? If not, and the new combination complies with other aspects of patent law, a patent can issue on the new technology.

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