When do patents and trademarks overlap?
Everyone once in awhile, a client may have IP rights that involve both patents and trademarks. When the two types of IP overlap, it helps to have a patent and trademark attorney that can carefully navigate pending IP applications to avoid forfeiting rights.
For example, how can a trademark application affect your patent-pending status?
What trademark application should be filed when not yet patent-pending?
Suppose you are planning to file a utility patent application, such as a provisional or nonprovisional. Since the patent application has not yet been filed, it would be in your best interest to maintain the position that the invention has not yet been publicly disclosed.
In the meantime, you want to file a trademark application to protect the cool name for this new invention. Can you guess where I’m going? New clients occasionally come to us with trademark applications already filed based on use, while they are not yet patent-pending.
This can be a problem if you are trying to maintain that the invention has never been publicly disclosed. A better practice would be to file an Intent-To-Use trademark application so that you can consistently argue that the invention was not publicly disclosed prior to the filing date of your patent applications. An attorney familiar with both patents and trademarks would be able to provide guidance when these IP issues overlap.
What patents should you file after your trademark application has been filed?
Suppose you already filed a trademark application based on use. That means that you are selling the product with the trademark. You now want to file a patent application. Can it be done? How should the patent application be drafted?
One option is to make sure your patent application describes and claims features that are not included in the product already on sale. This might enable you to file foreign even though your product has already been sold or publicly disclosed.
Do you need to form a company before filing patents?
Should you form a company before filing trademarks?
Yes, especially if you plan to file an ITU application. If possible, it’s better to avoid transferring an ITU application from yourself to your company before using the mark. So form the company first, then file the trademark application.
File patent or trademark first?
For the above reasons, it would make sense to file your patents first before filing trademark applications. If your company has not yet been formed, here is a recommended sequence of steps for protecting your IP:
- file patent application;
- file trademark application under company name.
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