She thought what if you could hard-boil eggs in a heat-resistant, egg-shaped container that prevented hairline fractures and meant you no longer had to pick and peel eggshells?

Many of us have had that “What if?” moment, but then we need to figure out what comes next. Kaufman decided to submit her “Egg Toss” idea into Edison Nation’s search for top As Seen on TV (ASOTV) product ideas. She didn’t have a CAD drawing or a minute of video; rather, she had a well-explained, well-written description of her egg-making concept.

Edison Nation and its ASOTV partner selected her idea and developed the product into what is now known as Eggies. The popular kitchen gadget is found in retailers nationwide, and to date, more than 1 million Eggies have been sold. Kaufman—listed as an inventor on the patents—splits the royalties with Edison Nation.

If you’ve ever had an “aha” moment like Betsy’s but lacked the knowledge and resources to make your idea a reality, you’re not alone.

In a recent survey, more than 90 percent of respondents believe it is a difficult process to bring an invention to the store shelf. Seventy-five percent cited money and not knowing how as the main reasons they had previously not been able to bring an idea to market, and 81 percent of those surveyed said in the past they’ve had a great idea that they didn’t pursue only to later see it successfully come to market.

This is where inventors’ communities such as Edison Nation come in. “Edison Nation levels the playing field between idea people and real inventors,” said Kaufman.

An inventors’ community can help ordinary people bring their ideas to fruition, and Edison Nation actively seeks these ideas for products that could end up on store shelves. As is the case with Kaufman, if you can describe an idea or simply draw it on a napkin, it may be brought to market through Edison Nation’s capabilities. It costs nothing to join the online community and just $25 to submit an idea to most searches.

The company partners directly with manufacturers and retailers, such as Bed Bath & Beyond and Rawlings Sporting Goods, that have an innovation need.

For example, if Bed Bath & Beyond is looking for new dorm room products, Edison Nation posts criteria for this product search, and its members can submit their ideas to be considered. If an idea is selected for licensing by Bed Bath & Beyond, Edison Nation gives the inventor an advance on future royalties, which will be split 50/50 between the inventor and Edison Nation. The cost of bringing a product to market can range from thousands to hundreds of thousands of dollars.

In addition, through the operation of a $25 million innovation fund, Edison Nation is able to develop and license ideas and innovations. Edison Nation handles everything from patenting, prototyping and all steps involved in validating ideas and getting them to the store shelf, all at no additional cost to the inventor.

To date, the company has discovered and developed 35-plus products, including Kaufman’s Eggies and other top sellers such as the Gyro Bowl, Mister Steamy, and Emery Cat Board. Together, these products have sold more than $175 million without any of the inventors taking the risk of cashing in 401(k)s or quitting their jobs to make these dreams come true.

Most recently, Edison Nation partnered with the Boy Scouts of America for an “Innovation Challenge” to inspire young minds to submit creative new product ideas. It also partnered with Daymond John, the sought-after new business consultant known for his role on ABC’s “Shark Tank” and as CEO of FUBU, to present an opportunity for people with innovative product ideas to pursue licensing and commercial success. Finally, Fisher-Price partnered with Edison Nation to find innovative ideas for mechanical dolls, plush and plastic characters with compelling, entertaining and interactive features that will make them the next must-have item.

To learn more about Edison Nation, sign up for a free account or simply to take a look at what product searches are running now, visit http://www.EdisonNation.com.

“But inventing is about more than just a good idea,” Davison offers. “It’s also about taking a chance.”

As the founder and CEO of Davison, an award-winning new products development company that creates more than 150 new product samples each month, he knows a thing or two about inventing.

More than 20 years ago, Davison’s very first invention was a toothbrush sterilizer, but a larger company beat him to market. That failure sowed the seeds for what Davison calls his most successful invention—his nine-step method for shepherding ideas from sketch to prototype to market—and fueled his determination to give every idea person the opportunity to see his or her big idea realized.

One first-time inventor, Joy Clymer of Fruita, Colorado, was so frustrated by trying to transport deviled eggs to a picnic that she conceived of the idea for a covered platter with egg-shaped cutouts. Her successful product, called Party Traveler, is licensed under the name Party on the Go for QVC.

Most inventions solve a problem. For EMS pilot Joseph Springer of Harleysville, Pennsylvania, his invention was born out of his fondness for the crispy edges of homemade brownies. His Silicone Dessert Bar Pan, which ensures firm edges no matter what’s baked in it, was a hit, especially on QVC.

Some inventions improve on an existing idea. Kay Thompson of Clarkston, Michigan, found that walking her two Shelties in winter was anything but fun for her canine friends, whose paws always became cold, wet and salt soaked. So she created boots that would not slip off in the snow like the many she had tried. Now, her stay-put and fashionable Pugz Shoes for Dogs are all the rage.

Davison offers these tips to those who “dare to invent”:

Dare to Take Action: Do your research to see if there is already something similar on the market.

Dare to Share: Share your idea with others. A nondisclosure or confidentiality agreement will protect you from having your idea stolen.

Dare to Evaluate: Evaluate your idea honestly and think about how to market the product.

Dare to Ideate: Shape your creation with sketches, illustrations and photos.

Dare to Leave a Paper Trail: Use a notebook to write down all your ideas.

To see real-life stories of everyday inventors, tune in to the “Dare to Invent” webisode series at http://www.davison.com/webisodes.

This is an open letter to my readers – your comments and feedback are appreciated.

You may have noticed we’ve recently made a few changes here at ESBJournal.com.

While overall I’m pleased with the results, I’d like to share the impetus behind the changes; which, I must tell you, was anything but pleasant.

It all started with a tersely-worded email I received in January of this year, a letter which alleged that the use of the word “entrepreneur” in our then-masthead was an infringement on the trademark held by Entrepreneur Media Inc., the publishers of Entrepreneur Magazine®.

The publication has a long and storied history of going after small businesses for the use of the word “entrepreneur” in their name. In fact, if you are looking for some interesting reading, and a perfect example of what I’d simply call “brand bullying,” check out some of the links when you enter “Entrepreneur Media Inc. + trademark” into Google.

A Bit About Trademarks
For those who have ever gone through the arduous process of filing for a trademark, you already know that one must disclaim use of any generic words or identifiers in your application if you wish for it to actually gain approval. Despite this, EMI has been able to assert a near death-grip on the word “entrepreneur,” and has managed to maintain a very strong, and dare I say impenetrable barrier to anyone who should have the misfortune of deciding to use this word in their business, site or domain name.

Certainly, if the folks at EMI knew me, they’d know that as someone who has been been a victim of having her intellectual property stolen and misused, I would never engage in such activities.

Stepping down off the soapbox — let me get back to the story.

When I initially received the EMI letter, I didn’t worry about it too much — simply because my publication and domain were named ESBJournal, and the subhead under the logo only served to describe to visitors what the “ESB” stood for. Unfortunately, EMI did not share this opinion.

Last week, I received a call in my office on Friday at 6pm from another one of EMI’s attorneys, to follow up on the email from January (which, I might add, they never replied to after I’d sent them my response back in January). Despite my continued assertion that I was not engaged in any sort of malicious activity designed to infringe upon their mark or create confusion in the marketplace, it was clear that this was not going to go away.

I hung up and immediately set out to Google, where I identified a few other business owners who’d found themselves in similar circumstances. I emailed one, and received a phone call within minutes.

Like me, this business owner was simply using a word that we have come to know as an identifier of individuals who set out to pursue the American dream of small business ownership. And like me, this gent found himself drawing the attention and the irye of EMI for doing so.

He chose to fight, and, after what I’m sure turned out to be a very long and expensive process, he’s still operating his website.

I applaud him, but I wasn’t willing to follow his example.

The End Result – A New Look, But the Message Remains the Same
As the owner of a number of trademarks, I have been down this road before, and I was not interested in treading it again. Even though I still vehemently disagree with EMI, I wanted to make this go away. And, despite the fact that as a branding consultant I was painfully aware of the ramifications of doing so, I made changes to my logo, my site colors, and my masthead.

The result, of course, is what you are looking at right now. We may have a new look, but the message remains the same. And make no mistake, I’m not going anywhere. My commitment to you remains as strong as when I started this publication over four and a half years ago.

It took me the better part of a weekend in order to make changes across the site, as well as the multitude of social profiles, business listings, and the like. And, I needed to update the listings with Google, which required additional behind-the-scenes work.

In the end, it could have been much worse — the fact that the domain has always resided upon ESBJournal.com certainly prevented what could have been an even more costly endeavor — can you imagine having to sacrifice over four years’ worth of content in the search engines? I get queasy just thinking about it.

Let me be perfectly clear on one very important point – I don’t begrudge EMI for protecting their trademarks. I have done the same, on more than one occasion, and will continue to do so as long as my marks are live. My frustration lies in the fact that such a generic word was given the protection of a trademark to begin with — and the blame for that does not lie with EMI.

Sharing this story with my readers was something I felt was very important, for two reasons. First, it provides an excellent example of some of the shortcomings of the trademark process, and what we can potentially encounter as brand owners. In addition, I hope that it demonstrates my ongoing commitment as the publisher of ESBJournal — I want you to know you can trust me to provide you with information on everyday issues, identify helpful resources, and share both the triumphs and setbacks that I personally encounter as I continue my journey as a small business owner.

And with that, allow me to introduce the new and improved ESBJournal – where we’ll continue to focus on everything small business. Our logo may have changed, but the message remains the same — we’re all in this together.

It all started with a seemingly innocent-looking Google Alert. I’ve set up these free fact-finding tools to cover things like my name and brand name to trademarks that I own, and other key niche criteria. I make a point in looking them over daily – they provide a quick snapshot of niche discussions to brand reach.

Perhaps a lesser known benefit is that they are also particularly effective at sniffing out content thieves.

While content theft is certainly nothing new, the rise in popularity of auto-blogging tools has made it infinitely easier to do. Many blog site owners are sadly unaware that the RSS feed that they provide as a courtesy to their readers may be harnessed for such insidious purposes.

The Line Between Aggregators & Content Scrapers
I have absolutely nothing against aggregators - in fact, I have agreements in place with several of them. They provide a service – not only to those seeking out information in a specific niche, but also to the publishers whose content they promote. They do not publish my full posts, but rather an excerpt, with a direct link pointing to the location where the full article can be found (my site).

Content scrapers, by comparison, will seek to pull your entire site feed – full-text articles, as well as images. In the case of my culprit, he even drew upon my bandwidth in order to display my images. The site was framed with Google Adsense, clearly reinforcing my suspicion that the scraper’s intent was to cash in on my content.

Long story short, I had the site closed down in under 14 hours.

Some Misconceptions About Copyright Protection
The topic of copyright seems to be shrouded both in misconception and misinformation. The “poor man’s copyright,” for instance, holds that you can print off your site and mail it to yourself in the hopes of using the unopened, postmarked envelope as an assertion of your copyright. Unfortunately, this is incorrect. US Copyright law does not make any reference to the “poor man’s copyright.” In truth, the only comprehensive method for protecting your copyrighted materials is to register them formally with the US Copyright Office.

Another long-held misconception is that you can only fight copyright infringement if you have an attorney, and a large bankroll to fund the process. While some instances of copyright infringement do end in legal proceedings, that doesn’t mean that they all have to end that way.

In this country, your creative works are automatically covered by copyright at the moment they are created, even if you have not formally registered them. There are avenues that you can pursue to prevent users from the inappropriate and unauthorized use of your content – you simply need to familiarize yourself with them.

Content thieves bank on the fact that the internet is a vast place with many dark corners in which he can hide. Information is your single best weapon to find plagiarists – and it enables you to shine a bright spotlight on these individuals and put an end to their activities.

For more information on how you can secure, monitor, assert and protect your copyrighted materials, check out the Content Protection Tips website, where you can download a free 30-minute audio. You’ll also find our extended package — which includes a printed quick reference guide with nearly FOUR DOZEN RESOURCES, tools and services to protect your intellectual property. It also includes a ONE HOUR audio, and (6) tutorial videos.

About the Author:
Traci Hayner Vanover, aka The Promo Diva®, is a business consultant and coach that specializes in the unique marketing and promotional needs of small businesses, authors and startups. Her website, Content Protection Tips, is a joint venture with Klassen Communications, and details how she managed to identify a content thief and get her copyrighted content removed from his site in under 14 hours, and shares information and resources to help you do the same.

Drawing on over twenty years of Fortune 500 experience in the fields of marketing research and promotion, Traci’s blog, Propabranda, utilizes pop culture and trends to illustrate business concepts and principles, and blends helpful tips and resources with a healthy dose of humor. Traci is the founder and publisher of Everything Small Business Journal.

I believe that there are several problems with the proposed legislation (S. 23)—a recycled policy package that failed to pass muster in its earlier incarnations.

The proposed legislation, known as the Patent Reform Act, would change this country’s patent process from a “first to invent” system to a “first inventor to file” system that is similar to the process used by other countries. It’s likely that such a change would favor large corporations, with their deep pockets and numerous in-house attorneys and stack the deck against small inventors and university researchers.

The proposed legislation would also have a direct effect on consumers and American workers. It would do this by making patent rights more difficult to enforce and making it easier for offshore copycats to bring pirated goods infringing U.S. patents into this country without a significant penalty.

As it’s currently designed, a proposal to reform this country’s patent process is likely to hinder rather than reward innovation. That could be bad news for consumers, workers and inventors. This means that American jobs will be lost, as well as our country’s competitiveness in the global economy.

This is not to say that reform is not needed. On the contrary, change is called for, but it is change at the Patent Office level that would present the most tangible benefits to inventors and to the industry.

For example, Congress should stop diverting funds from the Patent Office itself and free up funding that would allow it to hire more examiners. This would have the double benefit of speeding up the review process and improving the quality of the examination of patents actually issued.

Creating a two-tier patent system with “junior” and “senior” patents with computer-based novelty examination of applications for junior patents would free up examiners to focus on applications for senior patents.

About the Author:
Alexander Poltorak is the founder and president of American Innovators for Patent Reform (AIPR) and CEO of General Patent Corporation, an intellectual property management and patent licensing firm. He is coauthor of two books on intellectual property. To learn more, visit http://www.aminn.org and http://www.generalpatent.com.

To let your elected officials know your opinion on this or other issues, visit the website at http://www.house.gov or http://www.senate.gov.

Going back to the year 1974, inventor Alan Amron was selling and giving away samples of his newest creation at a trade show held at the Americana Hotel in New York City. Amron called this item “Press-on Memos,” the same sticky notes the world has since come to know as “Post-it Notes”. The world has been told this is a product straight from the innovative minds of the 3M company; it says so in their television ads. “Nothing, however, could be farther from the truth,” says Amron.

Amron says 3M executives were impressed with his sticky notes product when they saw it. He had worked out the technical details, including, but not limited to, the formulation of the rubber cement — both adhesive enough to stick, but not so adhesive as to leave a mess. Amron gave 3M executives samples and documentation of his Press-on Memos. They gave him their business cards and told him he would soon be contacted. No such contact was made, so he called them. He was then told that after careful review, the creative 3M engineers felt the product could not be made without gumming up the machinery and that it would be too expensive. Amron thought the deal with 3M was dead in the water.

But apparently, as Amron observed, 3M was more impressed than they let on or “some extra creativity was infused upon the already creative minds at 3M in the intervening years. 3M employed their ingenuity and corporate might to not only solve the formerly-insurmountable technical and cost problems, but also to claim the product was their own.”

All this has been laid out in court documentation, Amron vs 3M entire original Federal complaint click here:
Federal Case Index #97-CV-7281-TCP/MLO, Amron vs. 3M, Minn, Mining. But because Amron was just one man with very limited resources up against a corporate giant, Amron ended up settling out of court for a fraction of what Post-it Notes have made 3M to this date.

Amron has since invented numerous products and he feels the time has come to set the record straight for his invention “that almost every civilized person on the planet has used to make life a little more convenient.”

Closer examination of the settlement reveals that Amron is free to claim that he invented “Press-on Memos”, and he is also free to license or manufacture his invention as he made it 37 years earlier, though he is not entitled to any of the money 3M has made from “Post-it Notes.”

There is nothing in writing preventing 3M from claiming they invented Post-it Notes, so 3M continues to publicly claim they invented Amron’s invention. This is what Amron finds disturbing. “Life continues as normal for 3M, and they continue to be the mythological company of innovation they portray on television and glossy ads, and saying it often enough makes it true in the eyes of an information-overloaded culture.”

So now the 62-year-old New York inventor is coming out as the “original inventor” of press on sticky memo. “Turns out, this corporate giant can’t legally prevent me from telling the truth, the whole truth, and nothing but the truth.” And, apparently, publishing companies are finding Amron’s truth compelling. The interest he’s generating has publishers courting him. He hopes one day to see his story in book form, where it will trump what he calls “the great 3M marketing fiction.”

Whether you are a fashion designer, creative writer, or some other artist, it is shocking and painful to see your works posted and used without your permission.

However, artists typically react by attempting resolution through one extreme or the other. Some begin threatening litigation immediately, even hiring a lawyer or filing a suit on their own behalf. More often, though, they will be far too casual about ending the infringement, hoping to rely on a phone call or email simply stating that an infringement has taken place and can only be resolved by following the artist’s instructions for removal.

Perhaps it is obvious that speeding towards litigation is not the best option. Should you find yourself standing before a judge, with or without an attorney, it will not look good if you did not even try to end things amicably. The court will want to see a paper trail that shows a progression of efforts becoming less and less cordial until court seemed the only option.

Still, everything you do should be with an eye towards all possible outcomes, including litigation. The idea is to show through emails, your notes of phone calls, and letters that you were not only patient and understanding, but more so than could be expected of the average person. Otherwise, it is virtually certain that defense counsel will exclaim, “But your Honor! We only just found out about this and have hardly had a chance to review the facts before we were swept into court!” The court wants to see that you put in significant effort to resolve any dispute before using valuable and thinly spread judicial resources.

(Along these lines, keep in mind that the court will not hear any case unless the subject work has been properly registered with the United States Copyright Office. Registering with the Writers Guild of America, mailing the material to yourself, or any other method will simply not do anything but maybe prove that the work existed in that form on that date. It will not get you to a judge. On the other hand, if you do properly register the work with the U.S. Copyright Office, then you may benefit from statutory damages of up to $150,000 per infringement and attorneys fees. Also, the burden of proof is more favorable for the plaintiff. All in all, for $35, it’s the best insurance policy you can buy).

By the same token, though, a paper trail of extemporaneous emails will not show enough deliberate effort. Thankfully, when it comes to the Internet, there is a specific method for notifying Internet Service Providers (“ISPs”) about an infringement claim. This specific method comes from the DMCA.

Congress sought to promote a policy that freedom of speech should reign as free as possible on the Internet. Hence, the DMCA allows ISPs a safe harbor from copyright infringement suits so long as they follow certain guidelines. One of those guidelines is that they are not the generator of the allegedly infringing content, just the “publisher” of that content from a third party. Another of those guidelines is that they remove anything upon getting proper notice of the claimed infringement.

What constitutes proper notice is set forth explicitly within the DMCA:

• Name, address, and signature (electronic signature is sufficient) of the complaining party;
• The name or other identification of the infringing material and its specific location (i.e., the URL);
• Other information to enable the ISP to identify the subject works;
• A statement of good faith by the owner/complainant that he believes the use of the materials has no legal basis; and
• A statement of accuracy, under penalty of perjury, that the owner/complainant has the exclusive right to the use in question.

Most people can find information about the format of the notice, but do not know where to send it. Fortunately, another guideline required for safe harbor is that the ISP register a “Designated Agent” with the United States Copyright Office. The list of designated agents is available at http://www.copyright.gov/onlinesp/list/a_agents.html. And, if your work has truly been infringed, then there is no need to be skittish about sending this notice: these ISPs get such letters on a regular basis.

Once received, the ISP must remove the material in a timely manner, usually within a week or two, depending on the size of its overall service. After taking down the material, the ISP must send a notice to the original poster, giving him a chance to refute the charge of infringement. Usually, the takedown is the final resolution of the issue.

Some may ask why an ISP does not just take down any material upon complaint whether such notice was “proper” or not? In fact, a certain number of ISPs will do just that. But this is not always the path of least resistance. In 2008, Universal Music Corporation sent a notice and takedown letter to YouTube for a video of a baby dancing to “Let’s Go Crazy.”

Rather than letting the issue slide, the baby’s mother, who initially posted the video for family, filed a law suit. The judge ruled in favor of the mother, saying that the song was a fair use and that this was obvious enough for Universal Musician Corporation to have known that.

It is easy to see that a big company should not be allowed to bully individuals out of their free speech. It stands to reason that an individual should not be able to silence another individual. This is why the Copyright Act attempts to balance, on one hand, incentives for the progress of the arts versus, on the other, freedom of-everyone’s freedom of speech.

Consequently, the government has provided the guidelines in the DMCA for people to protect use of their work without infringing on anyone else’s rights. This can certainly be frustrating. But it is worth jumping through a couple of hoops to ensure that the First Amendment thrives.

About the Author:
David H. Faux, P.C. practices Intellectual Property, Entertainment, Art, and Business/Commercial Law. His past and present clients include individuals and organizations involved in the fashion, sports & fitness, fine arts, photography, and graphic design industries.

Prior to becoming an attorney, Dave spent several years as a music journalist and, then, a publicist in the Northwest. He holds both a Master of Science and Master of Arts degree. He also spent a year in South Korea as a Fulbright Scholar. His years in the music and fine arts industries as an entrepreneur, scholar, and international traveler inform his approach to the law, giving him an insight not achieved by most other lawyers. Visit his website at http://dhf-law.net.

The leading case on use of a color is Qualitex Co. v. Jacobson Products Co. and involves the use of a special shade of green-gold coloring on the pads made and sold to dry cleaning firms for use on dry cleaning presses. When the defendant used the color on its pads, plaintiff argued that this was improper, since the green-gold on this particular product served as an identifier to distinguish Qualitex’s goods.

The court agreed with the plaintiff that the color was an identifier. As such, it was in the interest of the marketplace to prevent competitors from using the same color on the same product. This decision furthers the general policy of trademark: preventing others from copying source identifying marks reduces the consumers’ costs in shopping and making purchasing decisions.

But this is not to say that everybody should use color as an identifying mark. I would suggest a claim over color for unique packaging, (e.g., Tiffany’s robin’s-egg blue boxes) or if the color truly separates your product from others (e.g., green ketchup). Otherwise, choice of a specific color will be limiting.

In the instance that you already are using a specific color whenever you use the mark, you may still want to consider claiming it in favor of having flexibility down the road. If you have been using one shade of purple for a decade-now an “incontestable” mark-but switch to using pink, as well, you might be diluting your previous mark, at least insofar as claiming the use of that shade of purple on that specific product. Even worse, if you expand the product to use the entire rainbow, you could be undoing years and years of hard-earned good will by creating confusion among your own consumers.

Therefore, unless you began your application with a specific color in mind, it is probably inadvisable to claim one as your own. Nevertheless, if you still have questions, you should contact a seasoned trademark attorney who can collect all the specific facts of your specific circumstance. This is the only way to get an absolutely accurate response to any legal question.

This article merely gives an overview of some very complicated rules and does not attempt to include all factors and considerations that apply in all instances. It should not be construed as legal advice to your specific problem.

About the Author:
David H. Faux, P.C. practices Intellectual Property, Entertainment, Art, and Business/Commercial Law. His past and present clients include individuals and organizations involved in the fashion, sports & fitness, fine arts, photography, and graphic design industries.

Prior to becoming an attorney, Dave spent several years as a music journalist and, then, a publicist in the Northwest. He holds both a Master of Science and Master of Arts degree. He also spent a year in South Korea as a Fulbright Scholar. His years in the music and fine arts industries as an entrepreneur, scholar, and international traveler inform his approach to the law, giving him an insight not achieved by most other lawyers. Visit his website at http://dhf-law.net.

I.Introduction

In my opinion, this is a mistake. Most first-year attorneys know just enough law to cause a lot of trouble for themselves and their clients, regardless of the underlying legal matter. Sure, that first-year attorney will likely work his way out of that trouble, but it can be a long roller-coaster ride, and somebody will have to pay for it. The level of trouble caused can be increased exponentially with a lay person who has never attended so much as a day of law school.

Regardless of my opinion, this is the world we live in. It is your right as a United States citizen to represent yourself on your own matters before any governmental body. Of course, it is also your responsibility should anything go wrong. You will not be able to claim ignorance to the court. That might find you some wiggle room in motion practice, but never works with more serious matters, such as securities, patent, trademark, and contracts. Again, think long and hard about what you are “saving” or otherwise “getting” in exchange for representing yourself on a serious legal matter. And follow the advice that I received as a first-year associate from one of the most senior partners of the firm: he looked at me with a fatherly smile and said, “Whatever else you might do, don’t mess it up.”

II.Correspondence with the USPTO
When dealing with the United States Patent and Trademark Office (the “USPTO”) about registering your trademark, it may be difficult to know what is expected of you. The good news is that you are not unique: everything you are attempting has already been accomplished (or restricted) hundreds or thousands of times before this moment. Hence, for every question you have about a characteristic of your trademark, there are a multitude of marks with that same characteristic.

A.Registering A Composite Mark
For example, an applicant to the USPTO may have a composite mark that incorporates words in stylized font (the brand name) with a graphic and sometimes a slogan to be used on a variety of classes, such as pants, collared shirts, and t-shirts. With so many elements, the applicant might only fit the words in stylized font on the hangtag of all three items, the graphic on the front of the collared shirt (e.g., Lacoste’s crocodile), and all the elements on the front of the t-shirts. So the applicant wants to know whether to file one or more applications with the USPTO.

The first step is to brainstorm marks that have these elements of a brand name, graphic, and slogan. This may take a lay person a long time to perform the research through Google, going through one’s closet, watching television commercials, or what have you. But keep in mind that these characteristics are not particular to clothing. One relevant mark would be RINGLING BROS. BARNUM AND BAILEY CIRCUS, which has the “globe” graphic and the slogan, “The Greatest Show on Earth.” Another mark would be BUDWEISER, which has the eagle emblem with the slogan, “King of Beers.”

Once you have thought of an established mark that shares your situation, go to www.uspto.gov, “Search Marks,” and perform a “New User Search Form” for that mark. Make sure you view only the “Live” results, so that you do not unwittingly repeat a mistake from a mark that is “Dead” because it did something wrong in the application process.

Once at the mark’s page, you will see four cells across the top labeled “TARR Status,” “ASSIGN Status,” “TDR,” and “TTAB Status.” Click on “TDR,” which stands for “Trademark Document Retrieval.” Once there, you can look through the applications, specimens, and all correspondence.

Of course, because you are viewing how an established company prosecuted their application, it will seem that they spared no expense. For instance, Ringling Bros. has several marks: the stylized brand name, the graphic, and the slogan; just the slogan; just the brand name; the graphic and the slogan; etc. Each mark cost them a minimum of $275 in government fees, plus what they spent in legal fees.

Assuming money is an object for you, you may want to file one mark with all the elements. If a competitor starts using one of the elements, you may have a cause of action for infringement. Alternatively, you may want to file the word mark as your primary brand indicator upon which to build. But this depends on too many factors that are particular to your situation. Giving specific advice in a general article like this is a “one-size-fits-none” prospect. Stating, “All start-up companies looking to save money on trademark applications should feel comfortable filing x,” is too risky for an attorney. Such a statement is simply untrue for a significant percentage of businesses. This is why attorneys have that annoying habit of responding to such questions with, “It depends. Here’s my card if you want to call me and talk about it.” It might be annoying, but it is the best advice a responsible lawyer can give.

B.Opposing a Registration and Other More Complicated Matters
Such research may work for more complicated trademark issues, as well. Naturally, the more involved the issue, the more involved the research.With something like an opposition to a trademark, you could easily spend hours upon hours looking in the TDR sections of a multitude of marks before finding anything remotely useful.

In these situations, you should remember that the USPTO probably has some guidelines or even sample forms for you to use. A case in point arises when you wish to oppose a registration. Here, you would want to poke around the USPTO website to see if anything is on point. This should lead you to “File Forms Online.” After looking through all the forms available to see which are most applicable, you should arrive at “Letter of Protest” under “Petition Forms.” This should get you going.

Finally, as frustrating as it might be, you can always call the government directly. The people at the USPTO are actually quite friendly, albeit overworked. Expect to be on the phone for a while.

As to the specifics of what to put into the correspondence to the USPTO and what evidence to include for your opposition… well, it depends.

III.Conclusion
It always sounds a bit disingenuous for an attorney to say, “You need an attorney.” As they say, to a hammer, every problem looks like a nail. However, the reason there are attorneys that do only trademark is because there are very sophisticated issues at every stage of the trademark application process.

Surely, you can blast something off to the USPTO and hope for the best. But a good attorney will be able to collect the entire universe of significant facts about your personal and specific situation. These facts will be used to make sure that you do not do too little to protect your mark.

Also, with trademark, you have to be careful not to do too much, either. For example, when filing a TEAS Plus application, you might be tempted to select all the options given under a specific International Class. However, claiming items under an International Class for which you are not engaged in commerce can void your entire application, even years after you have established exclusive use. Therefore, proceed carefully.

About the Author:
David H. Faux, P.C. practices Intellectual Property, Entertainment, Art, and Business/Commercial Law. His past and present clients include individuals and organizations involved in the fashion, sports & fitness, fine arts, photography, and graphic design industries.

Prior to becoming an attorney, Dave spent several years as a music journalist and, then, a publicist in the Northwest. He holds both a Master of Science and Master of Arts degree. He also spent a year in South Korea as a Fulbright Scholar. His years in the music and fine arts industries as an entrepreneur, scholar, and international traveler inform his approach to the law, giving him an insight not achieved by most other lawyers. Visit his website at http://dhf-law.net.

On May 20, the Office of Advocacy hosted a roundtable on patent reform and its impact on innovative, high-tech small businesses that use the patent system.

While the U.S. Patent and Trademark Office (PTO) lacks substantive rule making authority, Advocacy invited the agency to participate in the roundtable in order to address small business questions and concerns on the highly technical field of patent law. In addition, Advocacy invited small businesses and other interested parties who represent various patent system users and practitioners, including small technology companies, patent attorneys who work with small firms, and venture capital firms that invest in small technology-driven businesses. These diverse stakeholders were able to present their issues with the proposed reform and offer alternatives that would protect small businesses.

Ron Katznelson, representing Bi-Level Technologies, a California-based technology business, argued that the change to the first- inventor-to-file system would put small businesses at a competitive disadvantage because the focus in the patent system would shift the timing of patent filings earlier in the invention process while increasing the required number of filings. He also argued that the need for earlier and more public disclosure would further disadvantage small businesses by potentially infringing upon a popular current model of raising capital, which uses limited disclosure to raise funds during the invention process but prior to patent filing.

Attorney Mike Messinger echoed many of Katznelson’s concerns in his presentation, stating that small firms simply want quality patents and are willing to pay for them through higher fees if needed. Mike Rainey from Intellectual Ventures, a firm that funds small business inventors, licenses and develops patents, and engages in independent research and development, proposed a novel alternative to the current patent reform ideas. Rainey recommended moving the system to first-inventor-to-file while retaining the current “grace period” structure, the element of the patent system that governs disclosurerequirements. Many small business representatives in attendance agreed that this compromise solution would lessen the potential negative impact on small businesses.

Advocacy will continue to monitor the patent reform legislation and convey the concerns small business patentees have with proposed changes. In addition, Advocacy will continue to promote an open dialogue on this issue between the PTO and the small business representatives, so that the concerns of this important segment of the high-tech community are addressed and these small businesses can continue to stimulate innovation and job creation.

For more information on Advocacy’s patent reform roundtable please contact Assistant Chief Counsel Kate Reichert at (202)205-6972.