Obtaining Protection For Your Valuable Innovations And Brands

Broadly speaking, innovations and brands are also known as “intellectual property,” because they are a form of property that originates from a concept or other intellectual activity. Solving a problem in a new way (also known as an invention and/or a trade secret) is an example of an intellectual activity that can give rise to a property right. As another example, an intellectual property right can exist in a brand developed for marketing a product or a service.

So, what are the different forms of intellectual property, and how do you go about protecting your intellectual property? In general, the different types of intellectual property are: patents, trademarks, copyrights and trade secrets. You should be aware, however, that although there are multiple different types of intellectual property, a single product or service can embody more than one type of intellectual property.

For example, a product could include a patented feature, but could also be produced by a method that is trade secret. As another example, a product configuration could be a copyrighted work of art, but could also be the subject of a design patent. Overlaps between the different forms of intellectual property can get quite complex, so it is highly recommended that you seek the advice of a competent, experienced intellectual property expert before deciding how you will go about protecting your property.

At Smith IP Services, our focus is on obtaining patents and registered trademarks for Clients worldwide. We also provide associated services, such as, rendering patentability, infringement, freedom to operate (clearance) and validity opinions, and performing IP due diligence for mergers and acquisitions.

Following is a brief explanation of each of the general types of intellectual property (patents, trademarks, copyrights and trade secrets). Keep in mind, however, that each of these can be further subdivided, and different countries have corresponding different ways of categorizing intellectual property rights. The explanations below apply to the US, but similar types of intellectual property exist in most other countries.


In the US, patents can be obtained for utility, plant and design inventions. A patent owner can exclude others from making, using, selling or importing the patented invention.

Most common are utility patents, which are directed to the useful aspects of an invention (for example, how it works, its structure or, for a method, the steps of the method). A design patent is directed to ornamental (aesthetic) features of an article of manufacture. A plant patent is directed to a new asexually reproduced plant variety.

To obtain patent protection for an invention, a patent application is prepared and filed. Eventually, the patent application is examined by a patent examiner. After negotiation with the examiner and assuming all goes well, a patent is then granted, giving the owner the exclusive rights mentioned above. The entire process can take from many months to many years, depending on a variety of factors.

Generally speaking, a utility patent expires 20 years after its filing date, but certain circumstances can alter the patent’s expiration date. One of those circumstances is failure to pay maintenance fees after the patent is granted. If a maintenance fee is not paid, the patent can expire prior to its full twenty year term.


A trademark is a device (design, logo, brand, text, sound, color, etc.) that distinguishes a source of your product or service from those of your competitors. Trademarks for services are sometimes referred to as “service marks.” Trademarks (whether for products or services) are also sometimes referred to simply as “marks.”

In the US, as in other countries that base trademark protection on the English “common law” system, rights in a trademark are derived from use of the trademark on particular products, or in conjunction with particular services. Thus, when a trademark is registered, it is only registered for those particular products or services on which the trademark has actually been used. For this reason, special care is taken in listing the products or services when a trademark application is prepared.

An application can be filed if there is a mere intent to use the trademark on particular products or services, but registration of the trademark will not happen until there is actual use of the trademark on those particular products or services (unless the application is a Madrid Protocol application, which is beyond the scope of this explanation). After filing, the application is examined and assuming all goes well, the trademark is published for opposition by anyone who contends they may be harmed by registration of the trademark. Assuming no opposition is filed, the trademark then becomes registered.

A trademark registration must be renewed every ten years. As part of the renewal process, the trademark owner must show that the trademark is still being used on those products or services for which it was registered (or acceptable non-use must be shown, or the products or services must be canceled from the registration). A similar showing of trademark use must be accomplished between five and six years of the initial registration.


A copyright is the right to exclude others from copying an original work of authorship. The copying can be in the form of an actual physical copy, a performance of a work (such as a musical or dance performance), a re-broadcast, a derivative work or sampling, etc. Basically, if a second work includes all or a significant part of a prior work, or is otherwise derived from the prior work, that second work can infringe a copyright in the prior work. However, some forms of copying (such as, parody, news reporting, critical analysis, etc.) are excused under the doctrine of “fair use.”

Registration of a copyright is fairly straightforward. The US Copyright Office provides registration forms for physical or online filing, and the required fees are minimal. After filing, the copyright should typically become registered in due course.

Generally speaking, a copyright expires 50 years after the death of the author, although there are many caveats making it sometimes difficult to determine when a particular copyright expires. No maintenance fees or renewals are required to keep a copyright in force.

Trade Secrets

A trade secret is information that gives you a competitive edge, but is not publicly available. For example, a process for producing a product, a recipe for a food or drink, a customer list and a pricing structure can all be trade secrets. If a trade secret is improperly revealed to the public or a competitor, the trade secret owner’s recourse is to file a suit for misappropriation of the trade secret, or for violation of a confidentiality or non-disclosure agreement.

To protect a trade secret, the owner must treat it as if it is valuable secret information and take reasonable measures to prevent the secret from being revealed. For example, documents containing the trade secret should be marked “confidential” or “proprietary information,” and access to the documents should be closely controlled. When it is necessary to reveal the trade secret to other parties, those other parties should sign confidentiality or non-disclosure agreements.

Trade secrets and patents are in many ways mutually exclusive. For example, a particular product feature or method steps usually cannot be both a trade secret and protected by a patent (which requires public disclosure). However, it would be possible for one feature of a product to be protected by a patent, and for a different feature of the same product to be a trade secret.

As mentioned above, and because the issues involved are usually so complex, the determinations as to what types of intellectual property to protect, and how to go about obtaining protection for that intellectual property, should result from consultation with a reputable, experienced IP professional.

Patentability Searches

There are, in general, four “stages” of legal services typically provided for a Client in a patent procurement effort. In sequence, these stages are: (1) conducting a patentability search and rendering a preliminary patentability opinion, (2) preparing and filing a patent application, (3) prosecuting the patent application, and (4) handling formal patent issuance if the application is allowed.

In the first stage, the goal is to determine with some confidence whether an invention is actually patentable, in order to better decide whether continuing with the patent procurement effort is justified. Note that the term “patentability search” is sometimes substituted with the term “novelty search,” to highlight the fact that no search can in fact be used to determine with certainty that an invention is patentable. At most, a search can reveal that an invention is not novel, or it can reveal that there is a high likelihood the invention will be considered obvious by a patent examiner.

For a typical patentability search, the invention is reviewed and summarized, focusing on its most commercially important and assumed novel features. Then, a search is conducted in an attempt to locate reference documents that relate to or disclose the features of the invention. The reference documents can include patents and published patent applications, technical treatises, scientific journal articles or any other type of publications.

The references can then be reviewed and compared to the invention, in order to form a preliminary opinion regarding the potential patentability of the invention. This opinion will inform the decision as to whether the costs of preparing and filing a patent application for the invention should be incurred.

Performing a patentability search prior to preparing and filing a patent application is useful for at least two reasons. First, the uncovered references give a good “snapshot” of the general level of prior art that bears upon whether, and to what extent, patent protection may be available for the invention. Second, having a knowledge of the general content of the relevant prior art before preparing an application enables drafting of patent claims having proper scope (that is, broad enough to capture the full extent of the invention, without encompassing the known prior art).

While conducting a patentability search is usually quite desirable, the law does not require such a search. Some applicants choose to dispense with the search altogether. This, of course, saves on legal fees and any out-of-pocket expenses associated with the search, but it also does not obtain the benefits of the search.

In any event, a patent examiner will perform a search as part of examining the patent application, and the examiner may uncover particularly relevant prior art. Thus, although conducting a patentability search does not guarantee that a particular invention is patentable, it tends to lessen considerably the possibility that the costs of preparing and filing a patent application will be incurred for an invention that is not patentable.

Small Entity Status

Certain fees paid to the US Patent and Trademark Office for a patent application or a patent can be reduced by 50% if the patent applicant or patentee is a “small” entity. But what does it mean to be a small entity?

Actually, a person or entity does not necessarily have to be “small” in size, worth or income in order to qualify for small entity status. For example, a person could have a yearly income of millions of dollars, a university could have billions of dollars in endowments, and a business entity could have hundreds of employees and earn millions or billions of dollars in revenue each year, and each of these could still possibly qualify for small entity status. Thus, small entity status should be viewed more as a way of singling out certain applicants or patentees for preferential treatment, than as a way of identifying those that are most deserving of financial advantages because they are “small.”

There are three categories of applicants or patentees that can qualify for small entity status. These categories are: persons, small business concerns and nonprofit organizations.

A “person” is an individual (a human being) that is an inventor or a person to whom the inventor has transferred some rights in the invention. Thus, to qualify for small entity status, a person must trace his/her rights in the invention back to the inventor (or one or more co-inventors). There are no limits on the person’s yearly income or total wealth.

A “small business concern” is a business entity having no more than 500 employees. There are no limits on the business entity’s yearly revenue or total assets.

A “nonprofit organization” is an educational institution (such as a university or other institution of higher education), or an organization (such as a nonprofit charitable, religious, scientific, community support, disaster relief, animal protection or environmental organization) that would be tax-exempt under certain provisions of the Internal Revenue Code. Again, there are no limits on the organization’s yearly revenue or total assets, but net earnings cannot flow to a shareholder, and the organization’s activities cannot include certain political activities (such as influencing legislation or supporting a candidate for office).

For each of the above categories, there is a requirement that rights in the invention to which the application or patent is directed have not been assigned, granted, conveyed or licensed (and is there is no obligation to assign, grant, convey or license) to another party that does not qualify for small entity status. Thus, a party that otherwise qualifies for small entity status loses that qualification if the party grants or licenses rights in the invention (or is under an obligation to do so) to another party that does not qualify as a small entity. Exceptions are provided for cases where the rights in the invention are granted or licensed to a US governmental agency.

If there is any uncertainty as to whether an applicant or patentee qualifies for small entity status, then small entity status should not be asserted. Improperly paying reduced fees can result in invalidity of a patent, and so the reduction in fees is definitely not worth the risk of an inappropriate assertion of small entity status.

Requirements for Trademark “Specimens”

The term “specimen” is used in the sense of an example of use of a trademark. All trademarks must be appropriately used in order to qualify for, and in order to maintain, a registration. The purpose of a specimen is to show the Trademark Office that you have properly used the trademark. Thus, a specimen is not merely an example of the trademark itself, but is instead an example of how the trademark is used on or in conjunction with the goods or services for which the trademark is (or is to be) registered.

Most importantly, the specimen must show the Trademark Office that your use of the trademark is consistent with the various “use” requirements. Briefly, these requirements are: 1) the use must be in interstate or international commerce, 2) the trademark must be used on or in connection with the goods or services, 3) the use must be on the same goods or services specified in the application or registration, 4) the trademark used must be the exact same trademark as shown in the application or registration, and 5) the use must be a “trademark” use, i.e., as a brand or source identifier.

In most situations, the specimen itself is easily prepared. You can just take a digital picture of your use of the trademark on your product and email the picture to us. We will let you know if the specimen is acceptable.

Note that it is not acceptable to fabricate, mock-up or simulate a use of the trademark. The specimen must be an example of how the trademark is actually used on the goods or in conjunction with the services in commerce.

If the trademark is not actually used directly on the product, or if the trademark is for a service, you can send an example of how you use the trademark when the product or service is sold or delivered to the customer. We can work with almost any graphical file format (JPEG, PDF, GIF, TIFF, etc.).

An acceptable specimen must show the mark as it is actually used on or in connection with the goods in commerce. Ideally, a trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. In most cases, where the trademark is applied to the goods or the containers for the goods by means of labels, a label is an acceptable specimen.

Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown. Shipping or mailing labels are not acceptable if the mark as shown is merely used as a trade name (the name for a business) and not as a trademark. An example of this is the use of the term solely in an address.

Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is a proper method of trademark use. The trademark may be imprinted in the body of the goods, as with metal stamping, it may be applied by a rubber stamp or it may be inked on by using a stencil or template.

The terminology “applied to the containers for the goods” means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen. For example, gasoline pumps are normal containers or “packaging” for gasoline. A specimen showing use of the trademark on a vehicle in which the goods are marketed to the relevant purchasers may constitute use of the mark on a container for the goods, if this is the normal mode of use of a mark for the particular goods.

For goods or services marketed on the Internet, you may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable for goods only if it provides sufficient information to enable the user to download or purchase the goods from the website. If the website simply advertises the goods without providing a way to purchase it, the specimen is unacceptable.

For a display to constitute an acceptable use of the trademark, the display must be associated directly with the goods offered for sale. It must bear the trademark prominently. Displays associated with the goods essentially comprise point-of-sale material, such as banners, window displays, menus and similar devices.

Such a display must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. Further, the display must prominently display the trademark in question and associate it with, or relate it to, the goods. The display must be related to the sale of the goods such that an association of the two is inevitable.

Folders and brochures that describe goods and their characteristics, or serve as advertising literature, are not acceptable “displays” by themselves. In order to rely on such materials as specimens, you must submit evidence of point-of-sale presentation.

In appropriate cases, catalog specimens are acceptable specimens of trademark use. Such a specimen is only acceptable if: 1) it includes a picture of the relevant goods, 2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods, and 3) it includes the information necessary to order the goods (e.g., an order form, or a phone number, mailing address, or e-mail address for placing orders).

However, the mere inclusion of a phone number, Internet address and/or mailing address on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order. However, it is not necessary that the specimen list the price of the goods.

As discussed above, a website page that displays a product, and provides a means of ordering the product, can constitute a “display associated with the goods,” as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods. Such uses are not merely advertising, because in addition to showing the goods, they provide a link for ordering the goods. In effect, the website is an electronic retail store, and the web page is a store display or banner which encourages the consumer to buy the product. A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a store display and taking the item to the cashier in a store to purchase it. The web page is thus a point of sale display by which an actual sale is made.

However, an Internet web page that merely provides information about the goods, but does not provide a means of ordering them, is viewed as promotional material, which is not acceptable to show trademark use on goods. Merely providing a link to the websites of online distributors is not sufficient. There must be a means of ordering the goods directly from your web page, such as a telephone number for placing orders or an online ordering process. The mark must also be displayed on the web page in a manner in which customers will easily recognize it is a trademark, rather than as something else (e.g., an address, the name of a business, information, etc.).

If printed matter included with the goods functions as a part of the goods, such as a manual that is part of a kit for assembling the product, then placement of the mark on that printed matter does show use on the goods. However, in this case, the instruction manual must be as much a part of your goods as are the various parts that are used to build the goods.

The Trademark Office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods, packaging, or displays associated with the goods. This is strictly limited, however, and is not intended as a general alternative to submitting labels, tags, containers or displays associated with the goods — it applies only to situations in which the nature of the goods makes use on these items impracticable. For example, it may be impracticable to place the mark on the goods or packaging for items such as natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars.

Advertising material is generally not acceptable as a specimen for goods. Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use. Similarly, informational inserts are generally not acceptable to show trademark use.

The following types of items are generally considered advertising, and unless they comprise point-of-sale material, are not acceptable as specimens of use on goods: advertising circulars and brochures, price lists, announcements, publicity releases, listings in trade directories and business cards.

Moreover, material used to conduct your internal business is unacceptable as a specimen of use on goods. These materials include all papers whose sole function is to carry out your business dealings, such as invoices, bill heads, waybills, warranties and business stationery (e.g., letterhead).

Bags and other packaging materials bearing the name of a retail store and used by the store merely for packaging items of sold merchandise are not acceptable to show trademark use for the products sold by the store (e.g., bags supplied at a cash register). When used in this manner, the name merely identifies the store.

If material inserted in a package with the goods is merely advertising material, then it is not acceptable as a specimen of use on or in connection with the goods. Material that is only advertising does not necessarily cease to be advertising because it is placed inside a package.

Package inserts such as invoices, announcements, order forms, bills of lading, leaflets, brochures, printed advertising material, circulars, publicity releases, and the like are not acceptable specimens to show use on goods.

Service Marks
A service mark specimen “must show the mark as actually used in the sale or advertising of the services,” and the specimen “must show an association between the mark and the services for which registration is sought.” The mark must be used in such a manner that it would be readily perceived as identifying the source of the services. The specimen should at least mention the services, and show use of the trademark in direct association with the services.