How are patents and trademarks different?
The goal of this article is to provide a helpful summary of differences between patents and trademarks that will actually help you in making good business decisions. This is not an exhaustive list of differences. Instead, we will focus on key distinguishing features of each IP right. My hope is that you can then formulate and implement a smart IP strategy. The USPTO has a helpful basic summary on the differences between patents, trademarks and copyrights.
Timing difference between filing patents and trademarks
Patents are time sensitive. You have a limited amount of time to apply for patents before your patent rights may be lost forever. With foreign patents, you may be disqualified simply for publicly disclosing your invention before securing a patent filing date. In the US, you have a 1-year grace period to file a patent application for a publicly disclosed invention.
Trademarks do not have such deadlines. You could have been using a trademark for years before applying for registration. However, there may be procedural and substantive disadvantages in delaying your trademark application, especially if someone else’s registration for a similar mark is over 5 years old.
There is one timing similarity between patent and trademark filings: being the first to file has significant advantages.
Usage difference between patents and trademarks
Trademarks generally require continuous use in order maintain rights. This is true of both registered marks and unregistered common law trademarks. Failure to use a mark continuously can lead to a loss of trademark rights known as abandonment.
Patents do not require usage in order to maintain rights. Utility patents simply require a series of maintenance fees to be timely paid during certain anniversaries following the grant date. Design patents have no maintenance fees. Whether or not a patent owner actually uses their patent will not affect the validity of their patent rights.
Expiration difference between patents and trademarks
Patents have a definite and limited term. Design patents expire 15 years from the date of grant. Utility patents may last up to 20 years from the filing date provided that the three maintenance fees are timely paid in sequence.
Trademark rights may last indefinitely so as the owner continues using the mark. As long as the trademark owner satisfies post-registration requirements and fees, a trademark registration need not expire.
How the patent process differs from the trademark registration process
For a utility patent, the process from initial filing to patent grant is long, expensive and full or uncertainty. A design patent is generally quicker and easier to obtain. A patentability search can identify prior art that may be used to reject the novelty of an invention. A prior art search, however thorough, might not adequately predict how examiners will combine multiple references to reject your claims as being obvious.
Trademark applications generally have greater certainty than utility patent applications, especially if a knockout search is performed prior to filing. A knockout search can identify confusingly similar trademarks and help the applicant pivot to a different mark.
How do patent costs compare to trademark costs?
Flat rates for procuring IP have been around for years. Trademarks are more conducive to fixed fees due to greater certainty in the registration process. Utility patent applications have substantially greater complexity, more uncertainty, longer USPTO wait times, higher number of rejections. Generally, utility patents are significantly more challenging path to obtain.
At our firm, a utility patent may cost 7 to 15 times more than a trademark registration. For example, a trademark registration at our firm starts at $1,000 for a single class of goods or services.
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