Sharing this public post from the US PTO’s Facebook page
Here’s something to float your boat.
Today in Patent History: Proving that invention wasn’t just an old buoys club, on July 25, 1876, Emily Tassey received a patent for an apparatus for raising sunken vessels. In the same year, she received three other patents for a dredging machine, the improvement in siphon propeller-pumps, and for propulsion of vessels. The Civil War and the years after the war were a watershed for women inventors in the United States, with more women receiving patents between 1860 and 1865 than in the previous 70 years.
Do you think this was successful?
At first glance, the press begs the question of whether this is a defensible fair use or dilution/trademark infringement?
However, if I were the defendants, I would raise a completely different argument. Who actually owns the trademark rights in the Cubs logo and uniform?
I may be in a unique position to answer this question, as I have a client who wanted to use an image of the Wrigley Field sign and the players’ uniforms in a piece of artwork. I spoke to the Cubs’ general counsel and they actually referred me to Major League Baseball’s legal department to negotiate the licensing agreement, that the sign, uniform and logo are owned by MLB, not by the Cubs. And as such, do the Cubs actually have standing to sue?
This is the second client in a month coming to me after contacting an invention promotion company. This firm at least did a respectable patentability search, but they buried it in 200 pages of a slick, yearbook-looking Product Summary Digest. 180 pages of this book were boilerplate, marketing industry jargon, interspersed with an occasional mention of my client’s name or product. This client paid $800, of which probably $750 went to the patent agent who did the search. At least this was a reasonable amount for a patent search, signed by someone with a name and a legitimate license to do this type of work.
But at the end of the day, my client thought he was going to get help preparing a patent application. Instead, he got a request for more money, for additional marketing services. This company spends almost this entire book extolling the virtues of this product (and IMHO it was clever and elegant) and how marketable it is, but evaluates its patentability. In fact, there is no suggestion anywhere that my client consult with a patent attorney.
The client started becoming confused and skeptical of this outfit and gave me a call. I am glad he did. I read the search report and was able to tell him in an office visit his invention had been done before, 40 and 60 years ago, and not to spend time or money patenting it, at least not without more of an improvement. I was also able to tell him of some other options, such as manufacturing this product, or licensing it for others to make. If he were to go down this road, then I would recommend looking at an infringement search. Do you think this company would have offered this?
I wish more people would ask more questions before spending more money. The only people who get rich quick from inventions are invention promotion companies…
Are you beginning to see a theme here?
On a more personal note, thank you, Mom, for always carrying my business cards with you. They helped you reclaim your lost wallet in Paris 20 years ago, and they put me in touch with a prospective client at your trip to Costco. You just never know when you’ll need one.
Here’s how a little civlity, humility and professionalism averted what could have been a lengthy and expensive trademark dispute. We should all strive to follow their example; I wish they could all go this smoothly.
It wasn’t really a course, but yes, I did a one-day event in May called xxxx. It grew out of my business coach’s comment, “I know what you do … you xxx the xxxxxxx.” And it seemed perfect for the skills I teach. No, I didn’t check about trademarks, and I was not aware that it belonged to anybody. I didn’t even know it was possible for a phrase like that to belong to anybody!
I might have done a similar event in the future, but of course I respect your request and I’ll find a different name for future endeavors. And now I know that whatever I come up with, I should trademark it!
Sorry to have stepped on [your] toes. Please let me know if you need a hard copy of a letter from me, or if an emailed response to your email is enough of a written assurance.
Thank you for your prompt reply and assurance that you will refrain from using xxxxx in the future. It was with many strategical discussions and at a great legal expense that we decided on XXX and then to trademark the name in the US and Europe so we take steps to protect the name.
Best of luck to you in your search for a new name. We believe in your word that going forward that you will not use xxxxx, more than a paper letter or email chain could provide, we believe in your integrity and professionalism.