Trademark owners who attempt to file and prosecute their own trademark applications are really being pennywise and pound foolish. I appreciate the reasons for filing your own trademark applications, particularly in this economy. Many times, trademark owners are small companies in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non-attorneys.

It seems I have a constant of clients that have filed their own trademark applications, and some that have used non-attorney services. These clients are now up against some very tough rejections from the Trademark Office, or are having other difficulties with the trademark prosecution process. Inevitably, these clients wind up spending more money to pay an attorney to fix the application, or to re-file the application, than it would have cost to hire an experienced trademark attorney to file the application for them.

I am pleased that a recent case gives me the opportunity to discuss two of my favorite things — whiskey and trade dress, an often overlooked and highly underrated form of intellectual property.

Trade dress is actually a kind of trademark, but the analysis is very different.   It falls under the definition of “symbol” or “device” under §2 of the Lanham Act (15 U.S.C. § 1052).  Trade dress is also discussed thoroughly in Chapter 1202.2 of the Trademark Manual of Examining Procedure (“TMEP”).   Where a trademark is   words or symbols that function to identify the source of goods, trade dress is the actual shape or design of the product or its packaging.  It is the image as a whole and can include shape, color, size, and other thematic elements.  While a single name or logo can be a trademark, trade dress is better thought of as the sum of an item’s parts.  For example, the Coca-Cola bottle, the Rolls-Royce front grill, and the overall appearance of restaurants like IHop and McDonalds are all protected under trade dress, meaning that not only is it impermissible to copy the name of the good, but also the appearance of the good as well.

In order to qualify for protection as trade dress, the thematic elements must have acquired distinctiveness or secondary meaning and they must not be functional.  With respect to acquired distinctiveness, the public must associate the thematic elements of the alleged trade dress with the source of goods.  For example, if the label were removed from, say the Coca-Cola bottle, the carbonated beverage consuming public would still recognize the bottle as containing Coca-Cola’s beverage and not some other soft drink.  Showing this level of distinctiveness typically requires a fair amount of evidence.

A Google search of the term “patent strategy” in quotes conducted on May 11, 2012, returned no fewer than 188,000 references.  A similar search of the terms ‘patent strategy’ without quotes returned 81,000,000 references.  Indeed, anyone who reads press releases or financial news can tell you that companies, both big and small, repeatedly talk of developing a patent strategy for the twenty-first century that will enable them to compete in the global market place and take advantage of existing synergies and ongoing alliances in a manner that will create shareholder value and bring new technologies to market.

What a mouthful! Blah… blah… blah!  Existing synergies and ongoing alliances?  That seems to be code for “we don’t have a clue but want to make it sound like we are doing something to keep our investors/shareholders happy.”  And if I hear any more about moving forward through the twenty-first century I think I will be sick to my stomach.  For crying out loud, strategies for the twenty-first century are only about a decade (or more) late!  Further, anyone who thinks that their company will be dominant, let alone relevant, by the end of the twenty-first century obviously hasn’t learned anything from history.  Virtually none of the dominant tech companies remain dominant for more than a generation.  There are, of course, notable exceptions.  IBM and Apple are two very notable exceptions to the rule.

If you are a user of Twitter you have probably seen more than a few tweets, always on Friday’s, using “#FF” followed by a number of names.  ”#FF” stands for “Follow Friday.”  On Fridays many Twitter users will suggest who others should follow by tweeting with the hashtag #FF.  If this doesn’t make any sense to you — no worries.

For me Twitter is about news and information.  It is one of the ways that I keep my finger on the pulse of what is happening, so I put a premium on those who convey information.  I also typically prefer those who are not “machine like” Tweeting dozens of things over a short period of time.  Let me know about what YOU believe is worth my time.  If I wanted a disk dump I would just go to Google News.

Those with Twitter accounts who are looking for some good folks to follow look no further.  Likely everyone in the industry is already familiar with folks like Professor Dennis Crouch of PatentlyO, who tweets @patentlyo, so I tried to focus (for the most part) on some lesser known tweeters.  Below are some of my favorites on Twitter; people who in my humble opinion are excellent to follow.  You may also want to check my previous recommendations.  See Follow Friday: IP Tweeters on Twitter.

Of course, you can follow me @ipwatchdog and Renee @ipwatchdog_too.  See you on Twitter!

April was Autism Awareness Month.  The Center for Disease Control (CDC) defines autism disorders as a group of developmental disabilities, which can cause social, communication and behavioral challenges.  According to CDC estimates, 1 in 88 children are identified with an autism disorder.

The social, communication, and behavioral challenges associated with autism disorders often make it difficult for persons diagnosed with an autism disorder to find and maintain a job.  Indeed, parents of children diagnosed with autism are often told that their child will not likely be able to sustain an independent life.

This, however, is not always the case.  In 2008, the Fairfax Virginia based law firm of Muncy, Geissler, Olds & Lowe, PLLC (MG-IP) hired Kevin Gibson, a Fairfax resident who was diagnosed with autism at the age of 18 months.  Like many others diagnosed with autism, Kevin was told he would never live independently.  Kevin, now 26 years old, continues to work full-time at MG-IP managing the firm’s file room.  Kevin organizes and manages thousands of patent files and is able to immediately locate any file in the office.

Pilot program will allow consideration of an IDS after payment of the issue fee without a RCE

Washington - The United States Patent and Trademark Office (USPTO) today announced the start of the Quick Path Information Disclosure Statement (QPIDS) pilot program as part of its on-going efforts towards compact prosecution and pendency reduction. The program reduces the number of Requests for Continued Examination (RCEs) filed for consideration of an IDS after the issue fee is paid.

“The one point on which all voices of the IP community agree is that the most important thing USPTO can do to help is to get their new inventions to the marketplace faster and more efficiently, in turn enabling them to create new jobs and opportunity,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos. “The Quick Path IDS pilot is another example of USPTO’s commitment to eliminating delays and increasing efficiency for our stakeholders.”

For many companies the best course of action is to file an International Application under the Patent Cooperation Treaty (sometimes referred to as a PCT application) and pursue patent protection around the world with the filing of a single, uniform patent application.  The PCT process is favored by many companies because of the long processing time.  The international stage of the PCT application can last for up to 30 months, which puts off when you have to make a decision about where to pursue rights.  This is particularly helpful if the innovation is early stage or encompasses basic scientific research that will need to be translated into a commercially useful innovation, or scaled in order to be feasible. In these scenarios so much can go wrong from scientific breakthrough to commercially useful invention that it does not make sense to spend vast sums of money early in the process when the invention may still fail to prove itself.

Typically there are a logical set of countries where maximum market opportunity exists for any innovation and you are likely to want to pursue protection in those countries where the economy is well adapted to provide the most economic potential for exploitation. With some innovations there are many countries that are capable of supporting a market for high-tech innovations, which sometimes causes people to want to apply for patents in a variety of jurisdictions.

Information on the world’s specialized intellectual property courts can now be found in one place. The Study on Specialized Intellectual Property Courts, a joint effort published by the International Intellectual Property Institute (IIPI) and United States Patent and Trademark Office (USPTO), is the first study to catalog the world’s specialized intellectual property court regimes. Not surprisingly, the study concludes that governments around the world should adopt some form of specialized IPR court to handle intellectual property cases.  Specialized IPR courts were found to enhance efficiency, lead to more timely resolution and foster more consistent rulings and outcomes.  Such courts are also an important signal to individuals and industry that a country takes intellectual property enforcement seriously, which we in the industry know is a precursor to economic development and outside investment.

In order to assist researchers in their efforts to compare countries’ respective regimes, the International Intellectual Property Institute is hosting an interactive map of the study’s results on its website.

Bruce Lehman, Chairman and President of the International Intellectual Property Institute and former Assistant Secretary of Commerce and Director of the USPTO, praised the study’s publication saying: “Effective rule of law is essential to the stability of the global intellectual property rights system. This study provides countries considering implementing specialized court regimes with the accumulated knowledge of the world’s most effective intellectual property institutions.”