Searching for Trademarks: An Annotated Bibliography

A few people have asked recently about what they need to do to register a mark for a prospective business. Aside from shelling out a few hundred bucks, all a person needs to do is to make sure that nobody else is using the mark in the same way.

Here are websites to help you do that, particularly if you live or work in San Francisco:

TESS (Trademark Electronic Search System) comes from the USPTO and contains every trademark currently registered, applications, and many abandoned trademarks from the past. Keep in mind that not all trademarks have to be registered, and those that are registered don't necessarily have to be registered with the Federal government. Keeping that in mind, this will be the largest database of registered trademarks you'll find.

California Business Search If there's a Corporation, Limited Liability Company, or Limited Partnership in California, it's registered here. That means you can use this to see if a business name is in use.

Fictitious Business Search always has a funny ring to it to me, but it's a good resource. Anyone doing business in San Francisco under a name other than their own must register that name with the county. You can access that registry here. This link is for San Francisco, but most counties have a similar database which you can probably find by typing "fictitious business name" and "(your county here)" into Google.

Allmusic Guide If your business is a band, check here and see if anyone's using the name. You may think that you're the only Harmonica Lewinsky out there. And you may be wrong.

D&B Million Dollar Directory and Reference USA (library card required for both) I know, a business name isn't necessarily a trademark. But it's wise to know who else is using a name and what they're using it for before you decide on a business name. That way you're less likely to unknowingly infringe.

Finally, by all means do a Google search of your business or product name. Do several, and get clever with it. Almost everything that is sold is sold or advertised online, so that's actually a pretty useful way to find product names.

This is by no means a comprehensive list, but if you get through all of these steps, the chances of your mark begin unique are pretty good. To perform a very serious search, stop by the library and we'll take a look at state trademarks, business directories, and some product catalogs.

The Index to the USPC: Don't be Afraid

I usually tense up at the reference desk at when someone wants to know how you perform a preliminary patent search. Telling someone about the Index to the U.S. Patent Classification kind of feels like giving someone bad news.

Those who have never performed a patent search in earnest and those who regularly do this kind of research might wonder why I get this feeling. Is it really that bad?

Of course not. In fact, the Index to the USPC is a wonderful tool: it's well created, operates fairly smoothly, and users who are accustomed to indexes (like librarians and anyone who went to school in the pre-Google era) will probably find it to be very intuitive.

The problem is that keyword searching technology in other fields is so good that it makes people wary of indexes and what we librarians call controlled vocabulary. Often, librarians may scoff at keyword searching because of its obvious (to us, at least) shortcomings -- results are limited to the input of the user, relevancy may take a back seat to quick retrieval, searchers may forget synonyms; in general, we're worried that people are sacrificing accuracy for speed and convenience, perhaps without knowing it. Because index terms are assigned by a human being, not a computer, they are often going to be more comprehensive, more relevant, and more accurate. But they may be a pain to get to.

From the perspective of a non-librarian, however, I can understand that trading a little accuracy for the convenience and relatively flat learning curve of keyword searching might be just fine. I don't always go straight to subject headings when I search the library's catalog; though I greatly appreciate the work my colleagues have done creating a taxonomy for the mountains of information out there, sometimes I don't need to perform a comprehensive search. I just need something, and maybe something quick.

To get back to my point about the Index to the USPC and my unease when getting people started with it, it's that flat versus steep learning curve that tends to bum people out. Google, and, more specifically Google Patent Search, appear to work so well (and as a result create such confidence in users) because they get results. They get results for almost any search, even if you spell your terms wrong. If there isn't an exact match, Google will bring you a bunch of "close enough" matches. This type of research has virtually no learning curve.

Let me get off my soapbox and get back to patent searching. To properly do any kind of patent search beyond retrieving a known patent by number or an inventor's name, you have to rely on classes and subclasses, which you find through the Index. The Index, then, is scary because, unlike other research methods, there's a bit a slope to its learning curve. It's not much, mind you, but this type of searching is different than keyword searching.

There are a couple of reasons why this technique is necessary. Accuracy and comprehensiveness are crucial in patents: mistakes could mean that two people are granted the same patent for something. For the inventor, an incomplete search could mean missing a previous invention that disqualifies their invention from being granted a patent and wasting lots of money and time applying.

The reason keyword searching won't work is because a computer can only look for the words entered by its user. Since there's usually more than one way to describe any one thing, there has to be a way to link words and concepts that mean the same thing to the same patents. The Index is the way.

So don't be scared. It's just different, not much harder. Here's a quick rundown of the process:

1. Jot down some keywords that describe your invention or the invention you're looking for. Think of nouns and verbs, single words or phrases. Any of these can be included.
   
2. Words are listed alphabetically in the Index to the USPC. Click on a letter at the top, then either scroll down or use the "Find" function in your browser to seek out your word.
3. If you find your word, there will be two numbers next to it. The one on the left is the class, which is a broader category of technology. The one on the right is the subclass, which is a more narrow area. Click those numbers, and it will bring you to a listing of subclasses within a given class.
4. Click the "P" icon to the left of the subclasses, and you will find a list of patents that fall into that category.

As I mentioned before, the Index is actually quite an accomplishment. The creators knew that there are several different words for any given word or concept, and that they needed an accurate way to link these words to the appropriate group of patents.

For more information about patent searching using the Index, check out this tutorial from the University of Texas. And be free from fear!

We're Official

The Patent and Trademark Center blog has officially moved from pilot to production. What's the difference, you ask? The past month has been about developing the blog, deciding what sort of content we want to put out, and tightening nuts and bolts before we put a link to the blog on the official San Francisco Public Library website. You could say I've been sort of inventing this blog, and though I didn't really keep an inventor's notebook, the archives on the side (under the Meebo chat box) may be worth looking through. I've also used tags for each post so that you can just look at posts with, say, the patents tag if that's what you're interested in.

I'd also like to take this opportunity to encourage people to use this blog as a forum. I am a blogger, yes, but I'm also a librarian, so I jump at the opportunity to interact with people and help find information. Post a comment, send me a message via Meebo, or email me using the address in the "about me" section. I'm here to help!

Harry Potter and the Fair Use Litigation

There's a lawsuit brewing around Harry Potter intellectual property rights, and this time it's not a rock band suing Jarvis Cocker and members of Radiohead over band-naming rights.
This time the lawsuit centers on a vague but important clause of U.S. Copyright Code known as "fair use:"

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors. from 17 USC s.107

In question in the most recent Harry Potter case is a small publisher's attempt at publishing a book called A Harry Potter Lexicon. The book, adapted from a website that has operated since 2000 and was given an award by Potter creator J.K. Rowling in 2004, is a companion to the novels, with maps, essays, a glossary, and other companion materials for readers of the series. The New York Times printed an in-depth look at the lawsuit, available here.

Fair use is the reason why book reviewers can include quotes from sources they are critiquing, the reason teachers can hand out photocopies of sections of a published work to students, and why a student can use a chart from a published study in a research paper for school.

One of the historic problems with fair use is that it requires interpretation on the part of the person using a copyrighted work. Since copyright owners may not want to grant permissions, or may want to charge exorbitant fees, artists may take a gamble and use works without permission. If a suit is brought against the artist, the courts will determine if their use was fair or not; in the mean time, it's better than asking and being rejected.

The defense in the Harry Potter case are likely to argue that their use of Rowlings' ideas constitutes fair use as both work of literary criticism and as a transformative work, uses that are often considered fair.

Attorneys from Stanford Law School are defending this case. The outcome could have a major effect on the way copyright is interpreted in the future. I'll keep my eye on it.

In the mean time, for more information about copyright and fair use check out:

Fair Use, Free Use, and Use by Permission Lee Wilson. New York: Allworth Press, 2005. Available at SFPL.
Creative Commons
U.S. Copyright Office

USPTO Trademarks Expo Under Way

The United States Patent and Trademark Office is hosting a Trademark Expo in which they're celebrating the role trademarks play in American commerce and culture. You can read all about it here.
My interest is more in the picture. It's not every day that you see the Under Secretary for Intellectual Property and Director of the U.S. Patent and Trademark Office Jon Dudas sandwiched between Poppin' Fresh and an anthropomorphic Hershey's Kiss.

In Praise of: David Pressman's Patent it Yourself

I'll admit that I occasionally feel like I should get a commission from Nolo Press when I'm at work at the Government Information Center reference desk. I hate to favor a particular publisher or series in my work, but I can't help pushing the Nolo books because they deliver the goods.

My favorite, of course, is David Pressman's Patent it Yourself. It's pretty rare that someone asking about patents doesn't walk away without seeing this book.

The long and short of it is that this guy's answers to patent questions are going to be better than mine. (Plus he's a lawyer, so he can give advice in his book.)

In the spirit of John Coltrane and Oprah Winfrey, here are a few of my favorite things about this particular title:

1. Scope This book covers the mechanics of patenting: the preliminary search, the application, drawings, claims, the prosecution, amending, and the fundamentals of the law. We have plenty of books about inventing that have some of the above information mixed in with licensing, marketing, and other stuff that's not related to the patenting process. That this book sticks to the nuts and bolts of patents makes it appealing to a much wider audience.
2. Language Pressman writes well; he's technical but still understandable. He walks that fine line between too technical and patronizing successfully.
   
3. Illustrations The book has plenty of good images -- actual patents, screen shots of search tools, forms, flow-charts, graphs, sample documents. It does not use the tired imagery -- caveman cartoons, light bulb clip-art -- found in many other guides.
   
4. Authority Pressman has worked as an examiner for the UPSTO and as a university professor. He knows patents.
   

The several copies we have here circulate pretty widely, but there're usually a couple paper copies in stock, an electronic copy that you can use at home (library card required), and we always have a reference copy that you're welcome to use in the library.

IP and the Olympic Games

There was a pretty well-attended demonstration outside the Main Library yesterday marking the arrival of the Olympic Torch in San Francisco, the only U.S. stop on the torch relay route.

I won't touch the issues surrounding the protest in this space. But the local presence of such a recognizable emblem got me thinking intellectual property. Is the torch patented? Who owns the rights to the "Olympics" name? The ring insignia?

I decided to commit the time it takes to drink of a cup of coffee this morning to seeking the answers. I searched TESS, the U.S. trademark database. I search the USPTO patent database. I search for international patents through esp@cenet. I came up with nothing.

I eventually found an answer in the United States Code. It would appear that Congress extends special protection to marks associated with the Olympics. (You may have noticed that there is no picture accompanying this post. I'm not taking any chances with Congress!) Here's an excerpt from 36 USC 220506:

(a) Exclusive Right of Corporation.— Except as provided in subsection (d) of this section, the corporation has the exclusive right to use—

(1) the name “United States Olympic Committee”;

(2) the symbol of the International Olympic Committee, consisting of 5 interlocking rings, the symbol of the International Paralympic Committee, consisting of 3 TaiGeuks, or the symbol of the Pan-American Sports Organization, consisting of a torch surrounded by concentric rings;

(3) the emblem of the corporation, consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief; and

(4) the words “Olympic”, “Olympiad”, “Citius Altius Fortius”, “Paralympic”, “Paralympiad”, “Pan-American”, “America Espirito Sport Fraternite”, or any combination of those words.

The exemptions in subsection (d) allow use of the word "Olympic" by people who have used it since before 1950 and by people in western Washington (I'm not kidding).

The punishment for infringement is the same as that of a normal trademark (I assume that means it would be decided in court). I wonder, then, why the U.S. Olympic Committee gets special protection. Maybe they're too busy to remember to renew registration?

Recipes: Copyright or Patent?

There's usually only one reason people come to the Government Information Center to learn about recipes, and it's not to get cooking tips (although a I've heard good things about the Army's biscuit recipe).

Generally, people are interested to know what kind of intellectual property rights they have when they create a recipe. It's an interesting question -- can you copyright food? What about a patent?

It really depends. Since I'm a librarian and not a lawyer, I can't give affirmative advice, so I usually recommend that people do some reading about copyright and patents. That advice isn't a cop-out, though. The guidelines for patents and copyrights are generally short on concrete statements, as in "you can copyright this" or "you can't patent that." Do some research - if the intellectual property protection fits, then wear it.

There are some instances where companies choose to never seek IP protection. Why? Because registering either a patent or a copyright requires disclosure and only offers protection for a limited time. (Think Coca-Cola, the recipe for which is probably the most talked-about trade secret in the world.)

So what if you're a home cook and you've struck gold with your recipe but don't have the resources to bring it to market yourself? Can you pitch it to the big companies without fear of their stealing it?

For anything to qualify for copyright protection, it has to have some aspect of creativity. It doesn't have to be much...the Copyright Office isn't in a position to tell you that your poetry is derivative or that your painting is boring. There is, however, a minimum requirement that may exclude some recipes from qualifying for copyright. Stephan Fishman writes about this in The Copyright Handbook:

...[T]here are some types of works that are usually deemed to contain no creativity at all. For example, a mere listing of ingredients, or contents, such as in a recipe, is considered to be completely lacking in creativity and is not protectable (but explanatory material or other original expression in a recipe or other list is protectable). from Fishman, Stephan. "The Copyright Handbook." Berkeley: Nolo Press, 2006. pg. 124-125 (at SFPL)

So your potatoes, parsnips, persimmons, and whatever else you put together to make a dish probably can't be protected by copyright. But the way you write the recipe may. Which would mean that you couldn't stop people from making your recipe but you could stop them from copying it verbatim and distributing it the way you wrote it. That probably won't go too far in protecting a recipe.

A patent gives the owner rights to keep people from producing the patented item, which means a person holding a patented recipe could conceivably keep people from using the recipe to cook dinner. Patent Class 426 covers "Food or Edible Material: Processes, Compositions, and Products." So there's a class for food products, which means we know that you can patent a recipe.

There are a couple of things to consider before going to the expense of patenting a recipe, though. First, how will you enforce the patent? Remember that a patent is an offensive right, meaning that it's up to the owner to seek out infringers and seek damages in court. This would be easy enough if you could prove that McDonald's was marketing your potato salad recipe. But what about people in their home kitchens? It may not be practical to enforce a recipe patent.

Second, will the patent even be granted? An invention has to be original and produce a new or unexpected result to be granted a patent. Is the result of your combination of ingredients and the process of cooking a surprise? Take a look at David Pressman's example from Patent it Yourself:

Lou comes up with a way to make mustard-flavored hot dog buns -- admix powdered mustard with the flour. Even though Lou's recipe is novel, the PTO will almost certainly hold it to be obvious to a PHOSITA ["person having the ordinary skill in the art," a standard in patent examining] since the result of the new combination was entirely forseeable and expected. from Pressman, David. "Patent it Yourself." Berkeley: Nolo Press, 2006. pg. 106 (at SFPL)

It's tricky! That unobvious requirement can be hard to predict. I always start with a Google search to see if there's any evidence of someone else working on something similar. There often is, which means a dead end for any intellectual property protection.

There are lots of factors to consider before you try to protect a recipe, maybe more than there would be for a new widget or a new novel.

As always, anyone who is serious about pursuing intellectual property protect would do well to consult an attorney or agent. Or, at the very least, check out some of the resources at the Patent and Trademark Center.