Questions and Answers about Patents and Trademarks

Q: What is a patent?

A: A U.S. patent is a grant of rights from the federal government regarding an invention. These rights include the right to exclude others from making, using, or selling the patented invention in the United States during the term of the patent.

Q: What is the value of a patent?

A: A patent, with the exclusionary right that it provides, maximizes profits from the invention. The ability to prevent others from making, using, or selling the patented device can provide a competitive advantage over rival manufacturers and block competitors from using the patent owner's patented technology. The patent owner may also exact a fee in return for granting permission to another business to make, use, or sell the invention.

Q: What types of things are patentable?

A: Utility patents are granted for processes, machines, articles of manufacture, and compositions of matter that are useful, novel, and nonobvious improvements over the prior art. Design patents are granted for novel and nonobvious ornamental designs for articles of manufacture. Plant patents are granted for certain asexually reproduced plants.

Q: How is a patent obtained?

A: A U.S. patent may only be obtained by filing a patent application with the United States Patent and Trademark Office. Although the inventor may assign his or her rights to an invention, the patent application generally must be in the name of the inventor. Usually a patentability search is conducted prior to filing a patent application to attempt to determine whether the invention is novel and nonobvious.

Q: How can the right to a patent be lost?

A: An inventor will be barred from obtaining a United States patent for an otherwise patentable invention if, more than one year prior to the date of the United States patent application, the invention was on sale or in commercial use in the United States, in public use in the United States, or patented or described in a patent application in the United States or a foreign country. Also, the availability of patent rights in foreign countries may be lost if the invention is made public or used publicly prior to the effective filing date in these countries.

Q: What is a trademark?

A: A trademark is any symbol, including a word, a design, or a slogan, that is used to identify and distinguish one company's goods from the goods of others. A symbol used to identify and distinguish a company's services is a service mark. A trademark or a service mark gives its owner the right to exclusive use of the mark to identify and distinguish its goods or services throughout the area in which the trademark owner has developed trademark rights. The trademark owner can preclude others from using a mark in a manner likely to cause confusion among consumers.

Q: How can a trademark be valuable?

A: Trademarks and service marks allow consumers to pick out particular goods or services from among many competing goods or services in the marketplace. Trademark identification is often the primary factor in motivating a purchaser to choose one product over another. Additionally, the exclusionary rights that a mark provides enables a trademark owner to protect the market that it has developed for its particular goods or services.

Q: What types of things can be trademarks?

A: Trademarks, or services marks, can consist of words or slogans, designs, a number or other symbols, a shape, or a combination of any of these things. Virtually anything that can identify and distinguish the particular goods or services with which it is used from competing goods or services can be a trademark or service mark.

Q: How are trademarks obtained?

A: All trademark rights arise from use of the mark. Proper use of an available trademark to identify and distinguish one's goods or services from competing goods or services can create common law trademark rights. The symbol may be used with the mark to indicate the claim of trademark rights. Trademarks may be registered on the state and federal level and such registration provides significant advantages and generally maximizes the value of the trademark. Although all trademarks revolve around use, the first step in developing trademark rights should be to conduct a trademark search to ensure that the mark is available and is not already being used. Trademark searching, or clearing, is particularly important before funds are expended for advertising, packaging, or labeling. All of these funds could be wasted if a prior owner of the mark exists and has a right to exclude your use.

Q: What types of things cannot serve as trademarks?

A: Generic terms for a good or service can never be trademarks for the goods or services to which they apply because such terms cannot identify and distinguish the particular goods or service from competing goods or services. Descriptive terms, primarily geographical terms, merely ornamental designs or features, and personal names also cannot immediately function as a trademark or service mark.

J. Nevin Shaffer, Jr. is a partner in Shaffer & Culbertson Attorneys at Law, an Austin-based firm specializing in patents, trademarks, copyrights and trade secrets