Written by Henry Glick and legally reviewed by Amber Sheppard
Our current paralegal and 3L at Loyola University School of Law Henry Glick is going to break down the differences between the two so you can figure out if you even need to meet with a Northshore trademark and patent lawyer or a Mississippi Gulfcoast trademark and patent lawyer. Henry spent a summer interning in the Patent Division for the United States Patent and Trademark Office in Dallas, Texas.
His work was legally reviewed and edited by me. Tubbs just slept in the corner, but at this point, I’m just glad she’s at the office.
The point of a trademark is to identify the source of goods or services. If you have a trademark, you want consumers to know they purchased your goods or services. Brand recognition like this is critical to your business valuation and reputation.
The following that are used in commerce to identify a particular good or service with a business in that particular class can be trademarked:
You can learn more about Trademarks in our past articles “Trademark 101 for Louisiana Small Businesses” and “Louisiana Creatives & Artists Need a Lawyer Too”.
The point of a patent is to stop another person from making something you invented. It is meant to protect the innovator: YOU!
There are three types of patents that get federal patent registration:
1. Utility
2. Design
3. Plant (yes, plants!)
Suppose you spend much time and money developing a new and exciting device. In that case, a patent will let you ‘protect your investment’ by keeping others from copying your invention. This is often seen with utility patents, where the patent covers an idea with some function included. Another patent is a design patent, meant to protect ornamental designs like how something looks.
Trade-dress is the marketing embedded in individual products. Rather, it’s how the product is dressed-up for the marketplace. Think of the numerous bottled and canned beverages that line supermarket aisles. The “product” is just a boring looking liquid (Gatorade notwithstanding), but the way the bottle or can is dressed communicates much more to the consumer than the liquid by itself could ever do.
In certain situations, you can protect your trade dress!
Yes.
Design patents overlap with most with trademarks. They technically don't protect the same thing. But if you step back and look at the problem as whole, they do.
For example, the original Coke bottle was the subject of a design patent, which later became the essence of the trade-dress for Coke. The design patent for Apple’s iPhone, though still under patent protection, will likely become part of Apple’s trademark once the design patent expires. In the case of utility patents it is almost impossible to defend.
The manufacturer of Pocky snacks was unable to defend their snack as part of a trademark, since it was once the subject of a utility patent. Similarly, Traffix (a road-work sign manufacturer) couldn’t defend their previously patentable sign design that they claimed was a trademark.
Design patents and trademarks can offer protection for the same product, just in different ways. You must meet the requirements of each to receive those protections.
For instance, a patent must be relate to a process, machine, articles of manufacture, compositions of matter, or improvement to an invention and be:
A trademark is protected under common law as soon as it is used in commerce. Don’t get excited- common law protections do not allow you international registration, attorney’s fees, court costs, or carte blanche ability to sue and stop other folks. Only a federal USPTO registration does that. Examining attorneys do look at common law use in commerce when issuing (or denying) registration.
However, a federal trademark registered with the USPTO allows greater protections. These protections include:
Don’t freak out. That’s a lot of words just to say “Maybe!” Amber is a lawyer with a trademark law firm in St. Tammany Parish, it’s what she does. That being said she has had clients that needed trademarks and patents, all for different reasons.
For the average business owner, obtaining both a design patent and a trademark registration is not needed. Assuming you are eligible for a design patent, it might not be worth the extra costs and fees associated with getting patent protections if you do not plan on expanding.
What you think needs a patent may actually just need trade dress protection under trademark law. Discuss your options with an attorney if you think this is something you want to pursue. The feasibility of your patent being granted must be considered before you shell out the cash for one.
In comparison, trademarks have lower fees and relatively quicker turnaround times. The trademark process is not quick; the current waiting time to be assigned an examining attorney to your case is at least eight months.
Trust no one. Ok, that’s dramatic, but seriously- have a confidentiality agreement or nondisclosure agreement (NDA) for anyone that:
Mark everything about it, if sent via email or software, as CONFIDENTIAL. Amber loves to make that bold and uses red color. You can stick in the footer of your documents or subject line of emails/body of emails. Know that trade secrets also have protection
You can also apply for a provisional patent. This allows you an additional six months to work on your design before registration is complete.
You can file an Intent to Use trademark application (known as 1(b)) and not use the name, sound, or mark until it’s registered. That can take up to a year.
Or, you can use the mark, and place TM behind it’s use online. You can file an In Use application (known as 1(a)) and once approved replace the TM with ©. This puts folx on notice that you are staking a claim in the name.
You can also file state trademark registrations in the states you do business in prior to your federal mark being approved. That protects you in those states. It’s typically cheaper, but offers less long-term protections.
Ultimately, the decision to seek registration will be up to you and your business law team. If you need help deciding, look for a patent and trademark attorney for small businesses in Slidell (or whatever town you are based in). Trademarks and patent applications are federal law so you could use a lawyer licensed in any state.
Sheppard Law is a Slidell trademark law firm, but Amber works with small businesses across the state of Louisiana and Mississippi.
She can help you with:
Reach out for a paid consultation or to receive our intellectual property law firm Slidell based pricing sheets here or intake@ambersheppardlaw.com.
You can always call or text at 985-326-1656.
Henry Glick’s Other Articles:
· Cognovit Clauses in Louisiana (Guest Post by Henry Glick)
This blog was originally published on 10/07/2024. © Sheppard Law PLLC, 2024- present.
