Can You Register a Descriptive Mark?


QUESTION: Can you trademark “Adjective + Subject” type wordmarks?
I’m considering starting a cosmetics company, and are looking into names, e.g. Creative Cosmetics, Captivating Cosmetics or some other adjective + cosmetics name. Are these kinds of Adjective + Subject names (if available) likely wordmarkable or would they likely be deemed too generic? In the latter case trademarking the logo + wordmark would be a better bet and you could save some time and dollars by not even attempting registering the wordmark only.

ANSWER: Marks that describe the product being sold can be expected to run into challenges when seeking federal registration of the mark. In this case, marks like Creative Cosmetics and Captivating Cosmetics may be seen as describing the cosmetics being sold.


Enforce Trademark Even Though Not Registered?


QUESTION: Can I enforce a trademark infringement if I have not registered my trademark? I created an item that I sell. Recently, I discovered someone has copied my item. I created the design, mark, and text. This person is claiming their item is the original and mine is fake.

ANSWER: Yes. If you are using a trademark, you have trademark rights that can be used to stop infringers.

China and Other Foreign Patents


QUESTION: We have a patent in China but did not make the PTC within 12 months.
We got a utility patent in China in 2015 for our invention. However before all test where done we did not make the deadline of the 12 months to go for a PTC. Now we made modifications to our invention that is a significant improvement. Questions : 1. How should we apply for a modification of the original patent? 2. Can we go for a PTC if the modification of our patent is approved? 3. Is there any other way to get the patent international even we missed the deadline of 12 months?

ANSWER: If you file a PCT application within 12 months of filing a “national” application (e.g., China), you can claim “priority” to the national application. Once your national application issues as a patent, it becomes prior art to your newly filed patent applications (e.g., PCT or other).

If your newly filed patent application is not “obvious” in view of your issued Chinese patent, you can still get a patent but you will not be able to claim priority based on your Chinese patent.

Trademark Registration of “Generic” Name with Logo


QUESTION: Can you trademark logos with generic company names after failed wordmark applications? I had a wordmark application get denied because it was too generic, let’s say it was “The Carwash Company”. Could we alternatively trademark our logo which includes a unique graphical identifier and our company name? This is to be able to enroll in the Amazon Brand Registry which currently requires a USPTO trademark.

ANSWER: Yes, the combination of a generic name with a unique logo will increase the likelihood of obtaining a trademark registration.

State Versus Federal Trademark Registration?



QUESTION: I have a business that I’ve been using for awhile, just never trademarked it. My business name is under an LLC. I want to know if I would get rejected from trademarking it even though I started using it before the others. Its trademarked 5x’s and one person trademark the name for tshirts (like I want to), and then a travel service. Or should I just trademark it separately state to state instead of going through USPTO?

ANSWER: Obtaining state trademark registration may allow you to get around others who already have federal trademark registration. However, state registration provides trademark rights that are different from federal trademark rights. And even if you get state registration, you may still be infringing another’s federal trademark rights.

What Does the Word “Comprises” Mean in a Patent

QUESTION: In a patent application, does “comprises a pulley” protect against multiple pulleys? In the claim section, e.g. a device comprises A, B, and a pulley which is mounted on… In the spec section: In an embodiment, the device has A, B, and 1 pulley, however, in another embodiment, the device has A, B, and more than 1 pulley. Is it ok use “comprises a pulley” in the claim or should I use “comprises at least one pulley”? If someone make a device with A, B, and multiple pulleys, does “comprises a pulley” protect my patent?

ANSWER: Yes, “comprises a pulley” would include multiple pulleys. The word “comprises” in a patent means the minimum existence of something. For example, “comprises a pulley” means there is at least one pulley, but there can be more.


Should You Wait to Complete Research on Your Invention?


QUESTION: With a new proven biotech device, would you patent with the limited bio understanding now or wait until research reveals details?

ANSWER: There is always a trade-off. Generally, you want to file your patent application as early as possible to get the earliest filing date. This is because a patent goes to the “first to file”. On the other hand, you want your patent application to be as complete as possible, including experimental data that shows your invention works.

For many inventions, research will always continue, such as to make improvements. However, one cannot wait for the research to be complete, as the research may never be complete.



What is a Patent Office 103 Rejection of My Patent Application?


QUESTION: The examiner had issued a 103 rejection based on a single prior art reference. After my counter-arguments, he now issued another 103 rejection again based on a single reference, but different from the first one. He wrote the following: In the event the determination of the status of the application as subject to AIA 35 USC102 and 103 (or as subject to pre-AIA 35 USC 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. What does that mean in plain English?

ANSWER: Depending on when your patent application was filed will dictate what laws apply – pre-AIA or AIA. The 103 rejection means that the patent office has found your patent application (specifically, your patent claims) to be obvious in view of the prior art.

Protect Your Idea When Working with Manufacturing Company



QUESTION: I have an idea for a new invention, in order to begin to prototype, I would have to hire a company to have it be made. Being that there are multiple manufacturers out there, I know that I may have to discuss my idea during each consultation I have. Is there something I can do to ensure they won’t run off with my idea if I decide to not work with them?

ANSWER: At least use a non-disclosure agreement with the companies. And better yet, also file a provisional patent application before starting your discussions.


Does a Provisional Patent Need Patent Claims?


QUESTION: Should an inexperienced person filing a provisional patent application just leave out the claims (as allowed), or is it better to add at least one claim that is very broad in scope? What is the benefit of putting a claim in a provisional patent since claims can be totally amended later during the non-provisional application? For example: I want my eventual claim to be as broad and powerful as possible, and I’m pretty sure my claim can cover all sorts of variations of what I want to make, but I’m not positive if any of these many possible variations have been made before. If I attempt to make my claim to cover every variation am I shooting myself in the foot by not being specific enough, or can I totally change the claim to be more specific later if needed when I working with an actual patent lawyer for the non-provisional? Care will be taken to make a very detailed description of different embodiments in the provisional application.

ANSWER: It can be beneficial to add one or a few independent claims, particularly if you want to use the provisional application to claim “priority” in a PCT application.