The short answer: It depends on whether the abandonment will work for you or against you. Since even your decision to abandon your trademark application has its legal and practical implications, you should seriously considering hiring an experienced trademark attorney.
With or without an attorney, here are a few things that you must consider when deciding whether to abandon or not your application.
Consider the Grounds for Rejection
The action letter, or the rejection letter issued by the USPTO after the examining attorney’s initial examination of you application has been completed, contains the valid grounds for rejection. These grounds can range from technical grounds (e.g., procedural mistake) to substantive grounds (e.g. likelihood of confusion), and each ground should be answered satisfactorily by the patent applicant for the application process to proceed.
From the careful consideration of the grounds stated in the action letter, you can make a decision of abandonment or continuance. You may, for example, abandon the application in case of a rejection based on descriptiveness – if your mark is descriptive according to the standards set by the USPTO, then getting it registered doesn’t give you extra protection in case of an infringement. You can’t sue everybody who uses the descriptive words used in your mark since these are generic by nature.
If the rejection was based on the likelihood of confusion, you have to consider whether the costs in time, energy and money will be worth the benefits in name recognition and recall. You must consider, too, the possibility of a trademark infringement lawsuit if you continue using the mark.
Let’s say that you decide to abandon your application. You should ideally make an express statement of abandonment by filing a Request for Express Abandonment (Withdrawal) of Application through the Trademark Electronic Application System (TEAS), an online system at the USPTO official website.
Beware the Consequences of Abandonment
Lest you think that abandonment of your trademark application is easy – look, Ma, no consequences – it isn’t. Keep in mind that there are several ways of abandoning your mark and with these ways come consequences that you should be prepared to deal with.
Let’s assume that for one reason or another, you stopped using the mark for a prolonged period or you failed to maintain quality control over its use. Under the trademark laws, you are considered as having abandoned the trademark and, thus, you will lose the exclusive right to its use.
What can you do if the USPTO sends an action letter expressing final rejection of your mark as non-registrable? You can appeal to the Trademark Trial and Appeal Board in case the reason for rejection was substantive; file a petition to the director if the reason for rejection was technical or procedural; request the examining attorney to make another examination; or amend the application and seek for registration on the Supplemental Register in case of a descriptive mark-based rejection.
And, of course, you can abandon the application and give up the exclusive right to your mark.
The U.S. Patent and Trademark Office (USPTO) can reject trademark applications on several grounds. The trademark applicant must know the best way to respond to the rejection – and it’s definitely not writing a scathing letter disparaging the USPTO examiner’s qualifications – to get a favorable outcome in the end. Here are things that you need to know about it.
The USPTO examiners write three types of action letters, the term used for trademark application rejections.
If you receive either a technical or a substantive rejection in the mail or by telephone, you shouldn’t lose hope as the examining attorney will give you at least one chance to answer. You will find that these action letters are common so you’re not being singled out, discriminated against, or targeted for exclusion by the USPTO.
The action letter always specifies the number of months that you should respond to the issues being raised as the reasons for rejection. In general, the USPTO gives applicants six months to make the appropriate response to an action letter.
If you don’t respond within the prescribed period, you run the risk of having your application considered as abandoned by the USPTO. In case of abandonment, you have to return to square one of the application process if you still want the trademark registration.
The bottom line: Always send your response to an action letter as soon as possible. But avoid rushing your response since you don’t want to run the risk of yet another rejection call or letter for a minor matter. You have to double check that, indeed, your response corresponds to the grounds for rejection.
Choices to Make
You can choose from these three choices when responding to the action letter:
If you respond to the action letter yourself, you have to make sure that you can actually handle it well – and it’s usually the case for technical rejections. But if you can’t handle the complexity of the grounds for rejection, you shouldn’t try to do so unless you’re willing to risk final rejection. Your trademark lawyer’s services may seem expensive at first but when you consider the benefits, you will likely be willing to pay for these services in the future.
The provisional patent application (PPA) is an interim document designed to preserve the patent owner’s rights to the invention while in the process of determining whether to file a regular patent or not. Many inventors file it since it’s a relatively straightforward, simple and affordable way of protecting their rights over and interests in their inventions.
Reduction to Practice Defined
It’s the equivalent of the concept of “reduction to practice” typically manifested in two ways:
The actual physical construction for a product or the performance of the steps for a process is meant to show others that, indeed, the subject matter being patented can do what it’s supposed to do. The concept of reduction to practice then encompasses actual demonstration, operation and testing for the invention’s actual use.
Importance of Reduction to Practice
Every savvy inventor knows that reduction to practice is a crucial element in establishing novelty and non-obviousness in a patent application. You, the inventor, has to provide proof that indeed you are the original inventor of the subject matter and the PPA is a strong proof.
The PPA is also important in establishing patent priority and, thus, rightful and legal ownership over the invention. Under U.S. patent laws, the inventor owns the patent registration rights at the time he/she reduced the invention to practice, thus, it’s important for inventors to be the first to apply the reduction to practice doctrine.
In contrast, most countries grant patent registration rights to the first person who files for the applicable patent.
The reduction to practice concept prevents other persons from stealing, borrowing, and selling prior inventions created by the original inventor even if the latter haven’t filed for a regular patent. The PPA can establish both actual and constructive reduction to practice since it must contain a description and drawings of the invention. The inventor can also include other documents to establish ownership over the invention, such as formal drawings and methods of operation.
If the invention’s practical utility isn’t evident, the USPTO examiner may request for a testing and demonstration. You should take it into account when filing for a PPA to establish reduction to practice on your part.
A good rule of thumb to remember: The less theoretical, the less abstract and the simpler the invention, the less need for showing practical utility. Brand-new technologies, for example, usually require more proof of utility while there’s little to no demonstration of utility required for improvements on existing technology.
Who is the rightful and legal owner of an invention: The employee who invented it or his employer? The answer depends on the agreement between these parties although other factors are also considered.
For the inventors, the answer can mean the difference between being recognized – and possibly getting rich – for their inventions and being consigned as a mere cog in the machine. For the employers, it can also mean being recognized as a pioneer and leader in the field on one hand and being left behind by the competition on the other hand.
With such high stakes, which side does the law favor? Take note that patents are articulated under the U.S. Constitution (Article I, Section 8, Clause 8) and governed by the Patent Act.
Inventors Typically Have Patent Ownership
The general rule in the tug-of-war between inventors and employers: You, if you’re the inventor, own the patent rights to your invention created during the course of your employment. You can apply for a patent with the U.S. Patent and Trademark Office (USPTO); only a natural person, by the way, can apply for it and, thus, organizations cannot.
But there are exceptions to the general rule. You don’t own the patent rights under either of the following circumstances:
In practice, either of these two exceptions to the rule nearly always applies. This means that the employers hold patent ownership to their employees’ inventions, a fact reinforced by the signed and notarized pre-invention assignment agreements at the time of the hiring. The assignment agreement typically comes as a bundle, so to speak, with other employment documents like confidentiality agreements.
Employers Can Have Shop Rights
Let’s assume that you retained patent ownership over your invention. Keep in mind that it isn’t an ironclad ownership either because your employer can still have shop rights. The term refers to the limited right of the employer to use your patent without paying you, either in cash or in kind.
Shop rights occur when you, the employee and inventor, uses your employer’s resources including the machinery, facility and network in creating your invention. The doctrine itself is flexible in its application in the real world but it typically allows your employee the use of your invention internally. Your employer can neither assign nor sell your invention to third parties; otherwise, it can be considered as infringement of patent.
If you’re an inventor seeking employment or already in employment, you are well-advised to consult with a patent lawyer about your employment contracts including the assignment agreement. You have to protect your inventions from infringement, even by your employers, if that’s what you want.
What would you do if your original idea was stolen by another person or group? But before you answer the question, you have to answer another question, “Do you legally own the patent rights over the product, device or item?”
Granted by the USPTO
Everybody has the right to create things. But keep in mind that merely creating a thing doesn’t confer legal rights including ownership over it, even when others have profited from it. You must actually have a valid patent over the subject matter, whether it’s a process or a product.
Patents are rights of ownership granted by the United States government, specifically the U.S. Patent and Trademark Office (USPTO) to inventors. The patents are intended to exclude others from making, using, and selling, even importing, the particular inventions without the inventors’ express permission. In case of infringement, the aggrieved inventor can file an infringement lawsuit.
If you haven’t submitted your patent application or you haven’t been granted a full patent for the subject matter, then you will likely not be considered as its legal and rightful owner. You can, however, apply for a provisional patent but even it has its limitations so we suggest getting a full patent over your invention.
Inventorship and Ownership Are Different
There are also instances that the inventor and original holder of the patent isn’t considered as the owner of the patent. This is because the concepts of inventorship and ownership are different under patent law.
You, the inventor, may be listed on the patent application filed with the USPTO but you may not be considered as its current valid owner. You may have relinquished your rights over it, a case that can happen when you work for a company and you created the invention while you were its employee at the time. In this case, you cannot sue for patent infringement since the patent is usually owned by the company.
If you were directly paid by another person or group to create an original invention, you may or may not own the resulting patent. You have to double check the agreement before signing it, especially if you want to own the patent while the other party has certain legal rights over the resulting product.
And then there’s the matter of being a solo inventor or a joint inventor of a patented idea or thing. If you came up with the idea or created the product completely on your own, then you are considered as a solo inventor. You shouldn’t be anybody’s employee, too.
If the idea or thing was created by two or more people, then they are joint owners of the patent. The names of all the inventors can be listed on the patent application and, in the absence of an agreement to the contrary, every inventor own a pro-rated and undivided interest in the invention.