Inventor invention trademark patent questions Malcolm J. Chisholm Jr.

FREQUENT CLIENT QUESTIONS
1. - SOLO INVENTORS:
I am a solo inventor, and have conceived of a great invention, but I have no experience in developing or marketing a product. Will pursuing patent protection help me make money?
Atty. Chisholm:

Such clients generally fall into one of two categories. The first category is individuals who have been led to believe that securing a patent on their invention will lead to a patent license with a large manufacturer, and the license will generate royalties that will substantially exceed the significant amount of money the client has spent on securing the patent. In almost twenty years of prosecuting patents, I have never seen such a turn of events. Therefore, I rarely represent such clients.
However, a second category of solo inventors are those who can make a commitment of time and effort to start a small business developing and marketing their invention. In such "10% inspiration - 90% perspiration" circumstances, patent and often trademark protection as well are very important. A successful path often includes the inventor having the ability to make or to have the invention manufactured, and also being able to commit 30 plus hours per week to developing sales and actually selling the invention for the approximately 18 - 24 months a U.S. Patent is being prosecuted. During that time, the inventor's small business will determine whether-or-not the invention can be sold at a price that supports a profit. Hopefully the invention will sell well, generate positive purchaser feedback, and become protected by both a patent and trademark. After a year or two of such effort, a large manufacturer may then be successfully attracted to purchase the business including patent license royalties, etc., to dramatically expand the market for the invention. Many of my clients have succeeded in this manner.

2. - SELECTING A TRADEMARK:
I have a product that I use and sell at my traveling, holistic-healing seminars. I would like a trademark that reminds my clients of the product and my teachings. How can I select such a trademark?
Atty. Chisholm:

It is important to take care in proper selection of a trademark prior to introducing a product into the marketplace. While common law trademark rights arise upon usage, federal registration with the U.S. Patent & Trademark Office is extremely important to secure exclusive rights, and to prevent or simplify any disputes by an entity using a confusingly similar mark. Many of my clients seek to protect a mark that describes or suggests their goods or services. I invariably endeavor to dissuade them, and instead to guide them to selecting an "arbitrary" mark. There are essentially three types of marks: "descriptive", "suggestive" and "arbitrary" marks.
An "arbitrary" mark means the mark has no direct or inherent relationship to the goods and/or services with which it is related. Examples of "arbitrary" marks include "FORD", "APPLE", "CANNON", "HEWLETT PACKARD", "L.L. BEAN" and the list is long and legendary. "Suggestive" or "descriptive" marks, such as "SLIM FAST", "BURGER KING", "JIFFY LUBE" are much more difficult to protect, often previously used by competitors, and frequently used by counterfeiters. Therefore, arbitrary marks are typically easier to protect, but selection of a mark is a business decision including many other factors. Frequently a client has an attractive word or phrase that is “suggestive”, and I will encourage them to add an "arbitrary" word or words prior to the suggestive phrase, such as the client's family name, and then secure protection of that mark. A good example of how ingrained the "suggestive" mark trend is found in the story of the "INTEL" company using numeric characterizations of their chips, such as "386", "486", etc., which because they were suggestive of the capacities of the chips could be used by competitors. "INTEL" ultimately selected an "arbitrary" word that it could own exclusively, with the introduction of its well-known "PENTIUM" line of chips. Other companies have transitioned from descriptive or suggestive phrases to "arbitrary" marks, such as "IBM", "AT&T", etc.
With the advent of the internet, it is much easier than ever to perform screening searches on proposed marks to see if they are being used by potential competitors. I counsel clients to come up with two to three "arbitrary" marks for a product or business, and I will then narrow the selection to the one that has the best chance of acquiring the exclusive rights incident to registration with the U.S. Patent & Trademark Office. If federal trademark protection can be achieved, the recipient of the federal registration is then able to utilize the designation of "R" in a circle, as with FORD®.

3. - PROVISIONAL PATENT APPLICATIONS:
Should I submit a "provisional patent application" for my invention?
Atty. Chisholm:

Provisional patent applications have some advantages and some drawbacks, and are appropriate only in certain circumstances. Provisional patent applications are explained at the U.S. Patent & Trademark Offices web-site at www.uspto.gov, and readers are encouraged to explore that source.
Advantages of a provisional patent application are that the overall cost is modest, and typically about one-fifth to about one-third of the cost of a full utility patent application. Filing a provisional patent application provides an immediate "priority date" that is the filing date of the provisional application. A full utility patent application must be filed within a year of the filing date of the provisional application in order to ultimately lead to any patent protection. However, establishing an immediate "priority date" may be very important for quite a number of reasons.
For example, if a product is about to be introduced into the market within a couple of weeks, and the ordinary turn-around time for a full utility patent application is more than a couple of weeks, it may be appropriate to file a provisional patent application to secure a priority date prior to any sales or offers for sales to preserve international patent protection. Similarly, if a product has been sold for nearly a year, and no patent applications have been filed, all patent protection may be lost at the expiration of a year from the offering for sale or sale, etc., of the product. A provisional patent application may be filed within a week to secure a filing date prior to the expiration of the year to preserve any patent rights in the U.S.A., even though international patent protection may be lost.
Another common circumstance meriting filing of a provisional patent application is where a manufacturer is introducing a new product, but is uncertain of market receptivity. Rather than undertake the expense of a full utility patent application, the manufacturer may file a provisional patent application, and then within 9 - 10 months decide whether-or-not to follow up with a utility patent application if sales reach expectations.
Extreme caution is advised however, because of a major drawback of provisional patent applications. The subsequent full utility patent application may not include any components that are not in the previously filed provisional patent application. For example, suppose an invention includes four key elements, A, B, C and D, and a provisional patent application is filed. During sales, it is determined that element D is inadequate, and must be replaced with improved element E that was not disclosed in the provisional patent application. The full utility patent application may not claim element D. Hence a utility application claiming elements A, B, C, and E, will not enjoy the benefit of the priority date of the provisional patent application which may lead to loss of all international patent protection, and may even lead to loss of U.S. Patent protection. Consequently, a provisional patent application should only be filed after careful consideration of many circumstances.

Also see article published in "Berkshire Trade and Commerce", Vol. 8, No. 5, September 2004