Maybe – I decided on both
I am NOT a lawyer and this post is not legal advice. It includes my experiences and considerations in developing a product. Please do your own research and consult a lawyer for legal advice. I have used an online legal service and two lawyers in the process of developing the Chair CaneTM
This post is the second in the “From Idea to Product Launch Series“
I will start with something for those who want to sell a new product on Amazon. Seller Central has a brand registry for new brands. If you are selling something that does not exist, and the brand does not exist on Amazon, you need to register a trademarked brand. Trademarks can take several months to a year to be officially registered. The option that I took, was to use the Amazon Accelerator program that connects new brands with intellectual property (IP) lawyers. These firms have negotiated a rate with Amazon for filing a trademark application. If you use one of these lawyers, Amazon lets you register that exact brand within days of filing for a TM. You are then able to list your brand and product. The service is quick and you can be listed in days. If the TM is rejected 6 months later, your product may be removed but, I believe, they do not remove the brand if your are in process of responding to the USPTO office action. The lawyer you chose is still your lawyer, and (at least mine) offered to handle any office actions or any other IP needs at an hourly rate. The Amazon “negotiated” TM package rate is high compared to DIY but seemed within reason for experienced, professional help. I also needed to have a professional seller account to have access to this program. Professional sellers pay a monthly fee. If you end up selling only a few items a month, a professional account will cost you more than the basic account. It feels a little pay to play but I believe that it ended up helping me obtain better protection for my product.
I have filed for TMs myself through Trademark Engine twice. The first time, it was for a two word phrase that I was using in a clothing design. I filled out the application how -someone who doesn’t know what they are doing – would fill out a TM application. I also failed to do anything more than a Google search to research existing TMs. There is a chance that I could have started over and refiled with better information but the cost was adding up and I was already losing passion for that project. The second time I filed, it was rejected before they even needed to research it because I included words that were not supposed to be in a particular section. This one was filed before the one through Amazon and was related to the Chair Cane project. I am considering re-filing. Responding to the action is not really an option for a couple of reasons. The main is, I wrote the initial application so poorly. It is also for something that is not essential to the success of my business. Using the IP lawyer for a trademark resulted in a much stronger application. He asked a few questions and offered advice on information to include. I provided information about the product to help him construct the application. The form is clearly written by a professional and not me. I imagine the person who reviews applications can recognize when someone with experience writes the application. I have a few months to wait to find out if it will sail through or require a response.
The Provisional Patent Warm Blanket
A provisional patent holds your place in line. It gives an official date marker saying you got there first. You can also flex a little with “patent pending” to let people know that you are serious and they should not take you as an easy mark to steal from. You can move forward without one. There are some situations where it may not be needed, especially if you have a relationship with someone at the company you are pitching. I pursued two provisional patents through two different paths. They were for two products that I wanted to pitch to companies right away. I wanted to have some comfort and protection when disclosing the idea to potential corporate buyers and to manufacturers. I tried to avoid filing too soon because they are only good for a year. That year goes fast. My plan A was to have a provisional and sell the idea prior to its expiration. The buyer would then be responsible for obtaining a nonprovisional, or they would be paying for it through their offer.
Technically, you can fill out the USPTO form with no help. I used LegalZoom for the simple, art product I was working because I needed some guidance. I researched wording on patents and what type of information should be included. LZ does help but I liked looking at examples on the internet.
For the Chair Cane, I researched law firms and various IP options near me. I live close enough to a few big cities that I figured finding one I could drive to, if needed, would be a bonus. My first phone call with them seemed like a screening interview. Could they help me and how? Was I a nut? What type of nut? I had to agree to a consulting fee to have my assigned lawyer set up an appointment for a phone consult. When an agreement was made to move forward with the patent application, the fee was applied to that work. The fee was not too high but it was enough to scare off people who were just fishing around for information and not serious about a project (my take on it anyway.) I had chosen a law firm with a good reputation but also one that works with large corporations. I didn’t even have an LLC at that time and made clear that my budget was limited. The initial consultation involved me describing my situation and him offering options and estimated price ranges for the options. One benefit of using a lawyer when drawing up a provisional patent is that when you use them later for a utility patent, it is less costly and takes less time. If you do the provisional yourself, you run the risk of a lawyer not wanting to or not being able to file a utility patent based on your provisional. Once you file a provisional patent, any subsequent non-provisional patent applications for that product must have similar information. If you tweak your idea outside the bounds of the original provisional patent, then you cannot use the date from the provisional on the non-provisional (consult a lawyer to make sure you have the correct information for any IP issue; this is not legal advise, I am not a lawyer). If you did not include the right information in the original provisional patent, the lawyer may need to start from scratch. You would lose your place in line.
Utility and Design Non-Provisional Patents
Generally, utility patents cover the function of an invention and design patents cover the appearance. From the USPTO: “In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.” In my experience, design patents are less costly but that could be because my design was simple. I preferred to have a utility patent as my device is more about function than appearance.
Like the provisional patents, you are able to DIY. There are very particular guidelines that need to be followed and that includes illustrations and how you use them. I did enough research to provide my attorney with much of the needed information he needed in a format that did not require too much editing. You may be able to save money if you fill out a patent application and then hand it to a lawyer to review, perfect, and file.
When I would consider not getting any IP patent/trademark protection:
- The biggest reason that stands out to me is timeliness. Is the product idea something that will be irrelevant in a few months or year? Is it part of a trend? I would want to get that to those markets as fast as possible. I could still get a DIY provisional or non-provisional through the internet but I am not sure it would be worth the filing fees and effort. By the time someone stole it and got it to market, the trend might be over. It could be a risk to go without any IP protection, but if you need to push your product out as fast as possible, it could very well be worth the risk.
- The next reason would be if I had no way of funding it but I was determined to develop the product. If I had to chose between a product and a patent, I might chose the product. It would depend on the product, the landscape of the product sector, and the particular situation I was in. If my goal was to license/sell the idea, then the patent might be more important. Would I need a functioning sample for the pitch? In tech and other worlds, this all may be different. I have no specific knowledge about programming and coding.
Possible mistakes I made, or as HR Sally would say: Opportunities to consider
I did not file for a trademark early enough. If I had filed earlier for a TM, it may have been registered by the time I was ready to list on Amazon. I could have saved time and money going to Amazon with a registered TM ready to go.
The trademark and provisional patents I filed for myself, through online sites, ended up wastes of time and money. It was too early to really need them. They were also likely filled out in such a way as to be virtually meaningless.
I hired a lawyer, and from a large firm. This may have made it more expensive than it needed to be. There are people you can hire to help that are not IP lawyers, but I really wanted someone that I did not have to stress over being part of a scam or incompetent. What my attorney charged, was in line with what various price estimates on blogs and IP websites quote. Everyone I spoke to, from the initial screen, through final filing of the utility patent, all seemed honest and up front with the process and the cost. I never felt like they padded hours or came up with reasons to charge me more than necessary. If anything, I felt that they went out of their way to be efficient with the filing to avoid having to send me a huge bill. As a new, small client, they knew I wasn’t going to make it rain, but they treated me right. The lawyer I used through Amazon was upfront and transparent. Tip for cost control and to be a good client: Do NOT pepper your attorney with emails and phone calls. Good communication is important but over communication is costly. They get paid by the hour. They make a living by having “billable hours”. If they told you that something was going to be done, trust them and be patient. If they have a question/need more information/something came up, they will contact you. If you were expecting something and did not receive it, by all means call. If something changed on your end and they need to know, of course, call them. Just don’t nag simply because you are restless.
With patents/trademarks, and state filings for forming my business, I hired a lot of it out. Some of it went through online help like Legal Zoom and Trademark Engine. Some of it went through lawyers or other live humans. I know my strengths fairly well. Detailed, legal forms I have no experience with are not it. I never quite understand what they are asking for and get stressed out. It also takes me a really long time to finish complex forms. Other people may have the time, desire, and ability to just pop over to USPTO and fill out the forms, but that is not me. I researched the form and requirements and took it as far as I could go before having a certainty that I would mess it up if I did not have help. Know your strengths. Know when to ask for help.
Next in the “Idea to Launch” series: should I quit my job?