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Intellectual Property

Registered Patent Attorney Herbert Joe provides intellectual property (IP) legal services to select clients of the Law Office of Michael E. Young PLLC.

This legal protection includes patents, copyrights, trademarks, service marks, trade dress, trade secrets, and other IP owned or licensed by the firm’s clients.

From copyright infringement to provisional patent applications, talk to Attorney Joe about how he can help you.

Does Your Startup Own All Of Its Intellectual Property?

By Intellectual Property, Intellectual Property Lawyer

When you set up a new business venture, it’s common to focus on rapid growth without thinking about who owns the assets. This is particularly true when it comes to intellectual property (IP).

For example, you might form an limited liability company (LLC) or corporation but forget to transfer the company’s domain name registration to the business entity instead of owning it personally.

Or have employees and independent contractors doing creative work for you, such as software development or Web content creation, but don’t get in writing that the company owns these assets from those getting paid to do the work.

Who owns intellectual property is important to the long-term viability and value of your startup. Because it’s hard to get experienced investors, go public (IPO), or sell the company in a private acquisition if it’s unclear what the venture actually owns.

If you need help getting your IP ownership handled correctly for your company, it’s time to schedule a phone consultation with with Registered Patent Attorney Herbert Joe. Attorney Joe handles patents, copyrights, trademarks, and other startup intellectual property issues.

Trademark Symbols: What You Need To Know

By Intellectual Property, Intellectual Property Lawyer

trademark symbolsThere’s a lot of confusion as to when to use trademark symbols — and which symbol to use for a particular mark. Here’s a brief overview of the role of each symbol in protecting your brands for goods and services.

TM – Trademark Symbols

If you have a mark to brand goods that’s not been federally registered, a superscripted “TM” is typically attached to the mark to assert you’re using it as a common law trademark.

SM – Service Mark Symbols

Like trademarks for goods, you can use a mark to brand services. A superscripted “SM” is typically attached to the mark to claim it as a common law service mark if the mark has not be federally registered.

Related Article: How A Trademark Lawyer Can Help You Protect Your Brand

® – Registered Trademarks and Service Marks

If you register your trademark or service mark with the U.S. Patent & Trademark Office (USPTO), the registration lets you attach an “R” within a circle to let others know it’s a registered mark.

There are three important things to note about federally registered marks:

(1) many marks do not qualify for registration;

(2) your mark has additional legal protections if it is registered; and

(3) once registered, there are additional maintenance documents you’ll need to file with the USPTO to keep your federal registration. Otherwise, it will lapse.

State Registrations

Many states (including Texas) have a registration system for trademarks and service marks.

However, state registration does not offer the same level of protection as federal registration with the USPTO.

And state registration does not change the type of trademark symbols you can use. This means you cannot use the ® symbol because of a state registration…that’s only for federal registrations.

Where To Get Legal Help With Trademarks And Service Marks

Registered Patent Attorney Herbert Joe helps clients with trademarks and service marks. If you have patent or copyright intellectual property issues, he can help you with those too. Just book a phone consultation now to speak with him using our online scheduling system.

How A Trademark Lawyer Can Help You Protect Your Brand

By Intellectual Property, Intellectual Property Lawyer

How A Trademark Lawyer Can Help You Protect Your BrandWhether you sell goods and/or services, you want to protect your business brand by preventing others from misusing it to hurt your image. In many cases, a trademark lawyer can help you get maximum legal protection for your brand.

What Is A Trademark?

Your trade mark is your brand name for one or more goods that you sell. You can express this brand in multiple ways, including a name, symbol, words, device, or a combination of these with the purpose of identifying your good(s) separately from competitors.

Related Article: About Intellectual Property Lawyer Herbert Joe

about intellectual property lawyer herbert joeIf you have not registered your trademark with the U.S. Patent & Trademark Office (USPTO), you may assert your unregistered mark as your brand by adding a superscripted “TM to it.

However, to reduce the risk of getting into legal hot water, it’s a good idea to have trademark attorney review your unregistered mark and have a search performed to see if there are competing claims to the mark or one similar to it.


what is a service markWhat Is A Service Mark?

Just as a trademark is a brand for your good(s), a service mark is a brand for one or more services that you sell. If you don’t have a registered service mark with the USPTO, you may assert your unregistered service mark by adding a superscripted “SM” to it.

However, just like an unregistered trademark, you’ll probably want to have an experienced trademark attorney review your unregistered service mark to see if there are legal risks, including potential competing claims to the mark by others.

what is a registered trademarkIf your trademark or service mark qualifies under federal law, you can apply to register it with the U.S. Patent & Trademark Office (USPTO) for extra legal protection under U.S. law. For a registered mark, you add a superscripted “R” inside of a circle.

Why register?

A registered mark receives special protections under U.S. federal law that are unavailable to unregistered marks. For example, a registered mark creates a legal presumption nationwide that you own the mark with exclusive right to use it for the goods and/or services for which you registered it with the USPTO.

If you are building a brand for products and/or services, this is why it typically makes sense to take advantage of USPTO registration for your mark if it is eligible.

Most mark owners retain an experienced trademark lawyer to handle the application process.
This typically includes preliminary work to determine whether you should apply for registration, such as a comprehensive search of federal, state and common law marks that may conflict with the mark you want to register. This search is important because the federal database of registered marks, the USPTO Trademark Electronic Search System (TESS), does not include state and common law unregistered marks that may conflict with the mark you want to register.

In addition, your trademark attorney will use the USPTO Acceptable Identification of Goods and Services Manual to properly classify and describe the goods and/or services for which you’re seeking registration. This is very important because you want the registration to protect your brand but not be overbroad so that it inaccurately covers goods or services unrelated to what your brand. For example, if your mark is the unique name of your restaurant chain, the description shouldn’t be so broad that it covers children’s swimwear you don’t sell in your restaurants.

The application itself will be reviewed by an attorney who works as a trademark examiner for the USPTO. Although this attorney may answer some procedural questions if you file the application yourself, as a USPTO employee the examiner will not give you legal advice.

Trademark Registration Renewal and Abandonment

How do you maintain the federal registration for your mark?

Generally, after between 5 and 6 years after your registration date, you’ll need to file a maintenance document with the USPTO (Declaration of Continued Use or Excusable Nonuse).

In addition, every 10 years after your registration date, you’ll want to renew your registration by filing a maintenance document with the USPTO (Combined Declaration of Continued Use and Application for Renewal).

An experienced trademark lawyer can handle these maintenance documents for you.

What happens if you fail to file to timely file these documents?

The USPTO will deem the mark to have been abandoned (cancelled or expired) and you will lose all of the advantages of having a registered mark. However, you may still have lesser legal rights for it as an unregistered mark.

trademark infringement and licensingMark Infringement

If someone unlawfully uses your mark (e.g. counterfeit goods), you may have a claim for infringement against them.

Your available remedies will vary depending upon a variety of factors, including whether your mark is registered or unregistered, the nature of the infringement (how the mark was unlawfully used), and applicable law.

If your mark is registered with the USPTO, you may be entitled to significant statutory damages and an award of attorney’s fees under federal law. For an unregistered mark, you are likely to collect less to compensate you for the infringement.

Trademark Licensing

trademark licensing agreementYou may choose to license your mark for others to use. This is often done in exchange for licensing fees.

It’s important to use a qualified trademark lawyer to prepare your licensing agreements so that they protect your legal rights and don’t conflict with each other. Otherwise, the benefits of licensing are outweighed by the lawsuits filed against you by angry licensees when they discover you’ve sold them conflicting rights.

On the other hand, you may wish to license a mark owned by another business or individual. If the mark’s owner is willing to license it to you, your attorney can protect you by ensuring the agreement protects your rights as a licensee.

Where Do You Find A Good Trademark Lawyer?

An experienced Registered Patent Attorney can help you with your trademarks and service marks, including federal registration with the USPTO if they qualify.

Related Article: How A Patent Lawyer Can Protect Your Invention

Good Internet transactional attorneys can also help you with trademark issues, such as preparing licensing agreements that boost the income you receive from your marks while protecting your intellectual property.

How A Patent Lawyer Can Protect Your Invention

By Intellectual Property, Intellectual Property Lawyer

How A Patent Lawyer Can Protect Your InventionA good patent lawyer will be able to help you determine whether your invention can be protected by registration with the U.S. Patent & Trademark Office (USPTO). As part of the process, you’ll learn the type of patent you’ll want to get to for your intellectual property.

What Is A U.S. Patent?

If the USPTO ultimately determines your invention a “new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof,” then the federal government will grant you the exclusive right to make, use or sell your intellectual property for 14 to 20 years, depending upon the type of patent. If others want to legally use your invention during that time, they have to pay you for the privilege (license) of doing so.

Related Article: Beware of Invention Promotion Companies

What About A U.S. Provisional Patent?

Like a unicorn, that really doesn’t exist. However, there are some circumstances justifying the need to file a provisional patent application (PPA) for your invention with the USPTO first, especially as the U.S. has now adopted a “First to File” (and no longer a “First to Invent”) patent system, in order to establish priority.

Note that if one files a PPA, it must be “converted” to a regular, non-provisional application within 12 months of filing the PPA, else the PPA is automatically deemed abandoned, i.e. you’ll lose the benefits of filing the provisional app and be statutorily barred from filing the non-provisional application thereafter.

Although a provisional patent does not exist (just a PPA), there are 3 types of patents the USPTO can issue depending upon what you’ve invented. Your Registered Patent Attorney will be able to identify the kind of patent you should seek and prepare the application for the USPTO to examine.

This may be the most critical part of a patent: the patent application!

It’s the properly drafted application that can maximize your property and legal rights.

Patent types include:

• Utility Patents
• Design Patents
• Plant Patents

Most patents are utility patents. In rare circumstances, a proposed invention may qualify for more than one type of patent, and/or qualify for copyright protection and/or trademark protection. A Registered Patent Attorney can help.about intellectual property lawyer herbert joe

What Is A Registered Patent Attorney?

Not all lawyers can practice patent law before the USPTO. An attorney must pass a very difficult patent bar exam in order to become a Registered Patent Attorney (RPA). Although there are 1.3 million lawyers in the United States, only about 2% are Patent Attorneys registered with the USPTO.

Related Article: Intellectual Property Lawyer Herbert Joe

The average length of time for a patent to be approved is almost 30 months from filing, but the actual time can vary greatly depending on many factors, like the complexity of the proposed invention.

What If Your Invention Doesn’t Qualify For A Patent?

You may learn from your patent lawyer or the USPTO that your intellectual property can’t be protected by a patent.

If that happens, your attorney can advise you on other possible ways to protect your IP, including steps to shield it, for example, as a trade secret. In other words, you still may be able to profit from your invention without having a patent for it.

What About Patent InfringementIf you already have an enforceable patent but someone is using a part of your invention without your permission, you should seek legal help from a registered patent attorney (RPA) immediately. Your patent lawyer may be able to enforce your exclusive rights via a court order (an injunction) to stop the infringement, force the infringer to pay you royalties and/or award you damages.

On the other hand, if you’ve been accused of infringing someone else’s intellectual property, you should immediately seek legal advice, preferably from an RPA, as one may be subject to the additional damages (up to three times compensatory damages) from “willful infringement.”

What About Trademarks?

Trademarks can be the most important asset of a company, e.g., one study determined that trademarks make up about 1/3 of corporate value. So, coming up with and then protecting your distinguishing word, logo, shape, sign, expression, etc., that distinguishes your products or services from others, may be a necessary and invaluable business decision.

Can A Patent Lawyer Also Help You With Copyrights?

Copyrights can be invaluable intellectual property for the creator of an original artistic or literary work, e.g., a movie, a song, a book, computer programs, photos, etc. Copyrights include the exclusive right to make, publish and sell your copyrighted property. There are distinct advantages to timely federally registering your copyright.

A good Registered Patent Attorney should be able to assist you with all of your Intellectual Property needs.

Internet Law News: Copyright Law Versus First Amendment

By Intellectual Property
copyright law gag on free speech

Can copyright law gag Internet free speech?

Can a city’s mayor silence his critics on the Internet using copyright law? That’s the dispute apparently brewing because of voiceover criticisms made against the mayor on YouTube clips of city council meetings.

Are the opinions expressed protected by the First Amendment as fair use or do the videos constitute copyright infringement?

Hat tip to Mike Masnick at See City Of Inglewood Allotted $50,000 To Hire A Lawyer Flagrantly Abuse Copyright Law To Try To Silence A Citizen.

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