Before you begin selling your products on a U.S. online marketplace like Amazon, Etsy or Rakuten, there are three intellectual property considerations to make: clearance, acquisition and enforcement. This article provides a summary of all three considerations and includes steps to take to help mitigate risk, decrease instances of infringers and position your product for success from a U.S. perspective.
First, you want to ensure the product (including product design) and the brand name under which you wish to sell your product do not infringe the IP rights of others. To do this, you will need to do a patent search to confirm there are no infringement issues with your product and a trademark search to confirm there are no potential issues with the brand name you selected.
Searching the internet without finding a similar product is not going to provide any assurances there are no infringement issues. It is also important to note that even if you have done a trademark or patent search in your home country or have been selling without issue in your home country, there is still the potential for an issue to arise in the U.S. A significant percentage of patents in the U.S. patent system do not cover products sold in commerce. There is no substitute for a comprehensive patent search. You will want to ensure that there are no infringement issues for both utility and design patents. Design patents can be particularly challenging to search and seeking professional assistance is the best way to proceed.
Similarly, you will want to do a comprehensive search of your brand name. If you are going to use a logo, you may also consider conducting a search to ensure no issues arise with that logo. It can be very expensive and time consuming to deal with logo issues that arise after you have begun selling your product.
Once you have cleared the product from potential patent issues and the brand from trademark concerns, consideration should be given to ways you can secure IP protection on your brand and the design of your product.
It is worth noting that in the U.S. (as well as many other countries) certain brand names are easier to get a trademark registration on than others. Specifically, brand names with fanciful (made up) words, arbitrary words (words that exist but in no way relate to the actual product) and suggestive words (actual words that have some indirect relationship to the product) are often easier to trademark. Descriptive names are difficult to obtain registration on in the U.S. and often require years of use before being able to go on the Principal Register. Generic names are not eligible for trademark protection at all – you can’t get protection for the brand “Pencil” for pencils.
Filing for trademark protection in the U.S. is relatively inexpensive. The costs will vary depending on the number of products you intend to sell under the brand. The more diverse the product lines, the more classes you will likely have to file and the more expensive it will be. The file filing for each class of goods and services is between $275 and $325 depending on certain factors. It is, however, a bit time consuming to get the actual registration. You can expect it to take between 9-18 months.
If your product or features of your product are new and not obvious, you may consider filing for a utility patent application. Portions of the clearance search may be utilized to help determine this in advance. A U.S. patent professional can help with this.
Similarly, if the aesthetics of the design are new and not obvious, you may be able seek design protection for your product. Design patents can be a more cost-effective tool to help enforce against direct knock-offs. Costs to obtain and keep a design are often 10 times less expensive than a utility patent. While it may not afford the breadth of the utility patent, a design patent being so much cheaper to obtain and maintain may actually make it more cost effective. One important distinction between a design and utility patent in the U.S. is that at 3.5 years, 7.5 years and 11.5 years after the utility patent issues you need to pay an escalating maintenance fee to keep it alive. Failure to pay the fee results in the patent becoming abandoned. For a design patent, once it issues there are no further fees due for the life of the design. Moreover, design patents last for 15 years from the date of issue meaning that the time it took to prosecute the design is not related to its life. That is not true for utility patents. Therefore, strong consideration should be given to filing design patents in the US on your products.
In fact, a recent ruling from the U.S. Federal Circuit (Curver Luxembourg, SARL v. Home Expressions Inc. (No. 2018-2214, Fed. Cir. Sept. 12, 2019)), provided guidance on obtaining broad protection for a surface finish in a design patent. In the original patent at issue, only a rattan design as a panel was shown. The design patent purported to cover a chair, but there were no drawings of a chair – see the drawing below. In the U.S., surface finish alone is not considered to be patentable subject matter under 35 U.S.C. §171. The court in this case could have found the patent invalid. The fact that it did not provides guidance for how one could attempt to show only a generic surface ornamentation in the drawings of a patent application but include a broad or generic term for an article of manufacture to avoid having the patent application rejected by the United States Patent and Trademark Office.
In applying the foregoing, you could potentially show a surface ornamentation of an article of manufacture (similar to the panel Curver used in their patent application) but claim a generic article of manufacture. This may help reduce overall costs in seeking design protection for multiple products that can be generically described that each contains the same surface ornamentation.
A final consideration for filing for patent protection in the U.S. is that you have one year from a public disclosure or offer for sale to file the application. This applies to both utility and design patents. This is a potential distinction from other countries that have an absolute novelty requirement. Therefore, while your product may not yet be eligible in your home country for patent protection, it could potentially be eligible in the U.S.
Once you secure your trademark registration and patents you will want to monitor the marketplaces to determine if anyone is selling a potentially infringing product. One mechanism you can use with some of these marketplaces, especially with Amazon, is a brand registry. A brand registry allows you to register your brand in advance to help with enforcement against infringers. One important consideration is that to add your brand to a brand registry, your brand must be on the Principal Register. It can’t be on the Supplemental Register. To avoid having your mark on the Supplemental Register, it is best to stick with names that are fanciful, arbitrary or suggestive and to avoid names that are descriptive.
Further, some of the marketplaces have dispute resolution mechanisms in place to help with patent enforcement. It is best to check the marketplace’s rules and procedures on IP enforcement to determine what tools are available to you.
Of course, if you do find an infringer, you may also want to consider contacting an IP attorney in the U.S. to assist.
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