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Nathan selected as a 5-time Super Lawyer

Nathan was again selected as one of Super Lawyers' Rising Stars for 2015 for the fifth year running. Super Lawyers is a nationwide "rating service of outstanding lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The selection process is multi-phased and includes independent research, peer nominations and peer evaluations.

Super Lawyers magazine features the list and profiles of selected attorneys and is distributed to attorneys in the state or region and the ABA-accredited law school libraries. Super Lawyers is also published as a special section in leading city and regional magazines across the country."

Benefits and consequences of provisional patent applications

Many times when clients come to me for assistance, they've either seen or actually used an online invention help company. From my perspective, all these guys ever seem to do is file provisional patent applications. I rarely see the quality of work I'd expect from a  practicing patent lawyer from these online outfits. This is why the USPTO has a "Scam Prevention" page targeted towards invention promotion firms.

Given the bad rap for provisional applications, some patent attorneys flatly refuse to file them. In my experience, however, a provisional application can be a useful tool. This is especially so when the inventor hasn't developed a full plan for how the product will be made on a production scale. Here are the things I explain to my clients about the provisional process:

Provisional Patent Application Option: If your inventive concept is not yet complete, or information turned up in the patent search requires you to design around prior art, you may elect to file a provisional patent application. This application is not examined on the merits by the PTO. Rather, it establishes an early filing date for your inventive concept. The provisional patent application is good for one year, after which you must either file a regular utility patent application or abandon the invention.

Benefits of a Provisional Patent Application: The provisional application gives you a year in which to develop your inventive concept into a marketable or near marketable form. If your invention is already marketable, a provisional application gives you the option to explore market viability for a year before filing a regular utility application. Some of the requirements of a utility application are not present for provisional applications, so provisional applications are somewhat less expensive than utility applications. 

Consequences of a Provisional Patent Application: New inventive concepts developed in the one-year interim period after filing a provisional application many not receive the benefit of the provisional application’s filing date. For this reason, the provisional application needs to be as detailed as possible when filed. A utility application will require significant additional work beyond that performed for a provisional application. The provisional application may also delay the examination of a utility patent application.

In my view, the inventor must weigh the pros and cons of a provisional patent before electing to pursue one. A client must always give informed consent for attorney decisions, and filing a provisional application for every client takes that choice away from the client. This is why invention promotion firms are wrong to use a cookie cutter approach. Likewise, attorneys that refuse to provisionals for any client may also be doing their clients a disservice.

What do you think are the correct circumstances for using a provisional application? 

The wrong way to pick a brand name

In looking back at the firm blog, it looks like I took a full summer vacation from writing here. Truth be told, I've got an interesting new project that's been keeping me busy. Stay tuned for exciting news next month...

Here in south Arkansas, we certainly appreciate a good fish fry or crawfish boil. We've all seen various Louisiana-based products on the shelves, from hot sauce to crawfish boil to fish fry. Here are a few examples:

The hot sauces shown above are all Louisiana-style hot sauces (primarily vinegar and red peppers). You can see from the labels that these producers draw attention to the association with Louisiana and New Orleans. 

Products that use a geographic location in their name (like Louisiana) are considered descriptiveDescriptive is a term of art in the trademark world. A descriptive term can't serve as a trademark unless consumers associate the term with a particular source for the product.

Enter the company that makes Louisiana Fish Fry Products. This company filed a trademark application for their name and logo that appears on their products. The U.S. Patent & Trademark Office rejected the application, finding that the words LOUISIANA FISH FRY PRODUCTS was either highly descriptive or outright generic for the types of products being sold by the company. The company appealed to the Trademark Trials & Appeal Board and lost, and then appealed to the federal appeals court responsible for handling (relatively rare) trademark application appeals. Both the TTAB and the federal court agreed with the examiner's finding that the term LOUISIANA FISH FRY PRODUCTS wasn't capable of signifying source.

The problem for the company is that it will be very difficult to stop imitators from using the company's brand name because it is so descriptive of Louisiana-style food products. A brand name you can't protect isn't much of a brand name.

So, what's the lesson to take away from the Louisiana fish fry case? You need to be careful in selecting the brand name for your products. You want to select a name that's capable of distinguishing your products or services in the marketplace. These types of names can either be arbitrary, like APPLE for computers, or suggestive, like NOBURST for winterization antifreeze. In my opinion, suggestive marks are the best of both worlds, because through imagination, thought, or perception, the consumer reaches a conclusion as to the nature of the goods or services being offered.

How do you come up with your product names?

Nine Things You Need to Know about Trademark Registrations — Part III

If you've gotten a trademark registration from the U.S. Patent & Trademark Office, or are thinking about getting one, there are several things you should know. This is last part in a three-part series about federal trademark registrations.

7. Treat Your Trademark Like a Business Asset. Your trademark is a business asset, which gives it qualities that are important to income, business valuation, and estate planning considerations.

  • Personal Property. Trademarks are considered personal property, like cars or jewelry, and can be bought and sold like other personal property.
  • Business Valuation. You may wish to list your trademark registration as a business asset on your balance sheet. Trademark registrations typically fall under the “goodwill” business asset, and federal registrations increase the value of goodwill substantially due to the strengthening of the brand associated with the trademark. Your trademark lawyer will be able to help if you need a formal appraisal of your trademark for business purposes.
  • Income Generation. Some trademark owners choose to create intellectual property holding companies for trademarks and other intellectual property. These holding companies license intellectual property rights to others (which may or may not include companies with common ownership). Holding companies can be useful in generating a royalty stream associated with your intellectual property. You should consult with an accountant to determine if a holding company is an appropriate method for you to generate income that receives preferable tax treatment. Most trademark lawyers can help you set up holding companies and the associated license and transfer documents necessary to convey trademark registrations.
  • Estate Planning. If you own your trademark rights individually, the trademark will be treated like any other divisible asset, such as a bank account. There are downsides to a lack of estate planning for individually-owned trademarks, including the fact that every heir could have the right to sell, license, or otherwise encumber the trademark to the detriment of all other devisees. For this reason, a solid plan needs to be in place for individually-owned trademarks. 

8. Changes in Ownership or Address. If ownership of the trademark changes (either by sale or restructuring), the USPTO should be formally notified by recording the paperwork. Likewise, if your address changes, the USPTO needs to be updated so it will send any notices relating to the registration to the proper address.

9. Be Wary of Official-Looking Paperwork. Many unscrupulous companies send solicitations to trademark registrants on official-looking letterhead, or in official-looking emails, for worthless services. This is a large enough problem that the USPTO has a page dedicated to non-USPTO solicitations on its website at (last visited March 1, 2015). You should not send money to anyone concerning your trademark without consulting a trademark lawyer first. 

That concludes our three-part series on trademark registrations. Thanks for reading!

Nine Things You Need to Know about Trademark Registrations — Part II

If you've gotten a trademark registration from the U.S. Patent & Trademark Office, or are thinking about getting one, there are several things you should know. This is Part II in a three-part series about federal trademark registrations.

4. Marking Using the ® Symbol. Once you get a federal registration, you should begin using the mark with one of the three following registration notices: the ‘‘®’’ symbol, ‘‘Registered in U. S. Patent and Trademark Office,’’ or ‘‘Reg. U.S. Pat. & Tm. Off.’’ Failure to do so will prevent you from recovering damages in a trademark infringement lawsuit from an infringer prior to his or her receipt of actual notice of your registration.

5. Rights Conferred by Registration. The registration of a mark is conclusive evidence of (1) the validity of the registered mark, (2) registration of the mark, (3) your ownership of the mark and (4) your exclusive right to use the mark in commerce. Although the mark is registered, it may be challenged during the initial five years of the term by anyone who believes that he or she will be damaged by your registration. Further, it can be challenged at any time if the mark becomes a generic name, if you abandon the mark by failing to use it, or if an opposer can successfully argue that the registration was otherwise illegal or fraudulent.

6. Duty of Enforcement. You have a duty to enforce your trademark rights against others who use your trademark, or a confusingly similar mark, in commerce. If you do not enforce your trademark rights against others in a timely fashion, you may lose the right to enforce the mark against those infringers. Furthermore, if the mark becomes generic, you will lose the right to enforce it against anyone. 

  • Immediately notify your trademark lawyer if you learn of other marks that are similar to yours and that may cause confusion with consumers or that may dilute the strength of your mark.
  • Monitoring. Your trademark lawyer should be able to arrange a monitoring service to watch for uses of or applications for other trademarks that may be similar to yours so you can timely enforce your rights.

 We'll conclude our three-part series on trademark registrations next week. Thanks for reading.