Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

To our readers: This is the first day of our celebrity-free week, during which we will not be answering any questions about whether you can copy celebrity pictures, names, life stories, odors, hairstyles, or DNA. (And in our daily life, we will attempt to think celebrity-free thoughts.) We are not anti-celebrity, but in our continuing quest for personal authenticity, we urge you (and our fellow bloggers) to achieve some perspective on the issue by taking the one-week celebrity-celibacy vow. Okay, back to our regularly scheduled programming...

Dear Rich: I offer software development services through my website. I applied  for a federal trademark registration for my service mark and I uploaded a specimen which was an image of the trademark taken from my homepage that included the words "custom software design and support services." The trademark examiner said it wasn't acceptable because it "does not show the applied-for mark in actual use in commerce in the sale or advertising of the services." What did I do wrong and how can I fix this? I'm so glad you asked. A specimen for a service mark must identify the applicant's services -- which you did -- and it must indicate their source -- which you apparently failed to do. The Dear Rich staff reviewed your specimen (a screen capture) and noted that it lacked evidence that it was from your website.You should submit a substitute specimen showing the mark in the context of the webpage, preferably with the URL and a displayed method of contacting you -- for example, a "contact us" button.  In addition, you must file a declaration that states: "The substitute specimen was in use in commerce at least as early as the filing date of the application." By the way, as a service mark owner, you can submit a non-website specimen instead -- for example, you can submit letterhead, an invoice, or a business card -- provided it displays the mark, describes the services, and demonstrates a method of contacting you. The USPTO offers more information about service mark specimens. And speaking of services, Nolo now offers online assistance for those who wish to apply for federal trademark registration. 

Dear Rich: I have a question. I would like to create an online game that is similar to a popular board game. How I can do this without getting sued? I'm so glad you asked. Initially, I must remind you that there is no sue-free solution to anything. Anyone who can afford a few hours of a lawyer's time and some filing fees can sue you. However, what I think you're asking is: How do I lower the odds of being sued and reinforce the chances of victory in that lawsuit?

Start with the principle that the underlying ideas for games are usually not protected. For example, many companies have created online games based on hangman, but you'll run into a problem if your hangman game is expressed in the same way as Wheel of Fortune. To lower the odds of becoming a defendant in a lawsuit, do the following:

Don't use a name that's similar to a popular game. Stepping on the trademark of a game (particularly a famous one) is a surefire way to get dragged into court (although, occasionally the results are suprising).

Avoid copying the appearance of the packaging. Game companies feel the same way about their trade dress as they do about their trademarks (Just ask the makers of Sexual Pursuit).

Don't copy text or artwork from the game. In that case you'll be stepping on someone's copyright and unless your use is excusable under fair use or similar principles, judges may not be sympathetic. However, the copyright in some board games, such as Scrabble, may be 'thin' and harder to protect.

Check to see whether the game is patented. Yes, some games are protected under utility patent and design patent laws. Patent infringement lawsuits are a real drag, so check it out before your game goes live.

Move to a country where it's unlikely the game company will want to sue you. Unfortunately, in today's global village, that's becoming harder and harder to do.

Dear Rich: I have a question. I've tried filing a provisional patent application electronically at the patent office but the USPTO refuses to validate my application cover sheet (a PDF form). It's driving me nuts because I can't figure out the problem. I'm so glad you asked. Chances are you're using the wrong version of Adobe Acrobat. Although many people are using Acrobat 8.0 (and higher), the USPTO EFS system currently only accepts forms prepared with Acrobat 7.0.8 which you can obtain using the links on this USPTO page. (You can get all the EFS requirements here.) And of course, if you're interested in the other kind of acrobat...

Dear Rich: I have a question. Last week, you talked about trademark logos. How do you search the USPTO database to find conflicting design logos? I'm so glad you asked. You can search design logos as follows:

1. go to the USPTO website


2. under Trademarks (on the left), click "Search TM Database"


3. then click "Free Form Search (Advanced)"


4. enter a word or words in the search box that signify what you're looking for followed by [DE] (which stands for "design element").

For more on trademarks, check out Attorney Stephen Elias' book Trademark: Legal Care for Your Business & Product Name (Nolo), now in its 8th edition.