To Tebow Or Not To Tebow? - That is The Question
I recently wrote about the famous surfer Kelly Slater’s patent application, pointing out some of the major errors made by commentators who obviously didn’t understand patent law very well, when I read that Tim Tebow had been “granted” a trademark by the United States Patent & Trademark Office. I was amused, and quickly looked at the USPTO records, and found no issued trademark, so, I decided to go over Mr. Tebow’s application and its prosecution history to illustrate a few points about trademark law.
Let’s take the snap and drop back, looking to see how Tim appears to be very close to scoring a touchdown with his various trademarks.
The trademark issues, however, would never even appear on anyone’s radar except for the impact that Tim Tebow has had on college and pro football; on the 2007 Heisman Trophy playing quarterback for the University of Florida Gators. A devoutly religious man, Tim used to decorate his eye black with biblical references, leading to implementation of “The Tebow Rule” which prohibited players from wearing messages on their eye black.
He was then drafted in the first round by the Denver Broncos, who took advantage of a 250 pound quarterback built more like a linebacker or tight end, and used him for passing, running, and even on special teams. In addition to his ability to play multiple positions, Tim became well known for his, well, “Tebowing”, in which before, after, and even during games he would drop to one knee for a brief prayer. Indeed, after his trade to the New York jets and current position as a backup quarterback, it could be said that “Tebowing” is as well known as Tebow himself.
When you file a trademark application that may suggest a connection with a famous person, the trademark examiner can demand to know whether or not the application is connected with the famous person or not. So, the examiners who examined applications (filed by persons not apparently associated with Tim Tebow) for “Tebowmania”, “Tebow Nation”, “There is no I in Tebow”, “Winning is INeviTEBOW”, a stylized “Tebow” in a stylized fish, and others too numerous to name, the examiners had a fairly consistent response, and I quote from one.
“Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Tim Tebow. Although Tim Tebow does not appear to be connected with the goods and/or services provided by applicant under the applied-for mark, Tim Tebow is so famous that consumers would presume a connection. Registration is refused because the applied-for mark consists of or includes a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.”
Discussion will be continued…with the “Trademark Examination”
Kelly Slater’s Rough Ride: Part 1
Kelly Slater is best known for being an 11-time World Surfing Champion to date, but he is also the first listed inventor on a patent application, 12/274,321, SURFACE GRAVITY WAVE GENERATOR AND WAVE POOL, published on May 20, 2010, as publication number 20100124459, soon to become a patent, on a wave pool device that generates surfing waves. The application and patent prosecution process is an interesting one, and provides some common sense knowledge for the novice inventor. Everything in this article was obtained through a public record search of the United States Patent & Trademark search engine.
Why use this as an example? Well, first, surfing technology is interesting to me. Second, any invention relating to generating surfing waves in artificial environments is of particular interest to me, as my wife and I have small resort on an island in Thailand which is so blocked from the Indian Ocean that a big day of surf is 6 inches (don’t believe me? Just go to www.Thai-West.com and look at the pictures – trust me, we need any wave machine technology we could get).
So, let’s go through the patent application and prosecution process and see how Kelly ended up with a patent nearly four years after first taking off on the wave.
Step 1. Invent something, get patent application filed.
In November of 2008, Kelly’s application was filed. It included separate documents for the abstract (150-word or less summary of the invention), specification (written portion), drawings (black and white illustrations showing the key parts of the invention and how it works), and claims (the most important part of a patent, where his patent attorney set forth the key parts of the invention he hoped to protect). His application also included an oath, where Kelly and his co-inventor swore that they with the “first and true inventors” of this device. In it, Kelly and his co-inventor, Adam Fincham, also claimed “small entity status”, which allows them to pay half the usual fees for patent application filing.
Small Entity Status: The United States Patent & Trademark Office has a program under which small entity inventors, generally considered those with fewer than 500 employees, qualify for a 50% reduction in fees, as compared with large businesses with over 500 employees. So, Kelly and Adam are two guys – not Microsoft – so they filed as a small entity. Small entity status can actually get a bit tricky, as you can lose small entity status if you enter in a number of business transactions, including licensing, with a large entity.
….to be continuedread more
For most inventors, a utility patent that protects the function of an item is the most powerful patent protection they can get. Unfortunately, utility patent applications are also the most expensive type of patent application, take the longest to get examined, and have the lowest chance of success. How can you stack the odds of success in your favor? Pay attention to this video and also see the video in Prior Art Searches.
What are the odds of success for utility patent applications? Over the past decade the odds of success on a utility patent application have varied from a high around 70% to a low around 40%. Right now the odds appear to be pretty close to 50/50.
How much does a utility patent application cost?
At our firm, we do fixed prices, start to finish, for preparing and filing utility patent applications. These range from around $6,500 for simple mechanical to over $10,000 for more complex electrical and software.
Is there a more cost effective way to do it?
You can file a Provisional Patent Application (see our video on Provisional Patent Applications) for about half the cost of a utility patent application, which gives you patent pending status for one year. However, there are a few Achilles’ Heels with Provisional Applications that you need to avoid.
How long do Utility Patents last?
If you are fortunate enough to get your Utility Patent Application allowed by the USPTO as an issued patent, most Utility Patents are good from 20 years from the date of filing, so an average patent application (not a continuation application) has a useful life of around 17 years.
Only 17 years? My invention is way too valuable to protect for only 17 years!
Think again, 50% of all retail money generated is made from products two years old or less. If you are the proverbial average inventor, you have around 5 years to make money on your invention; beyond that it is likely that competitive products and technologies will surpass your invention and it will not make much money, so don’t worry so much about when your patent will expire, and instead focus your attention on how to make money off your invention during the first five years. (If, however, you were the inventor of the light bulb, hula hoop or internal combustion engine, you will be truly bummed out when your patent expires, but these were not “average” inventions).
Are Utility Patents renewable?
No. Once a patent expires anyone can use your patent as a blueprint to make your invention and sell it, without compensating you. Then again, hopefully you have used Trademarks (link to Trademark video) to build up a strong brand so that even if others can copy your invention, people will want to buy YOUR product over your competitors’ products.