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”
Continuing our discussion of Kelly Slater’s Four Year Rough Ride To A Patent…
When you are competing in surfing contests (something the author did during with 1980’s with considerably less success, to put it diplomatically, than the lead inventor in this case), you want to do everything possible to make sure that the judges are watching your rides as you compete. So, before you enter the water, all the contestants in that heat meet at a staging area, put on colored jerseys to identify themselves out in the water, and paddle out before the start of the heat. That way, once the horn sounds and the green flag goes up, everyone knows that the judges only have to focus on the contestants.
Imagine how difficult it would be to compete in a surfing competition if during your heat the judges were constantly worrying that some people who should be in the contest were missing. You’d be catching a great wave and pulling into a tube, and when you came out you’d see no one in the judge’s stand, as they were up on the street looking for missing competitors. In that case, you’d be better off finding all the competitors and notifying the judges of where they were, so that you could compete with the judges’ full attention.
When filing a patent application, you turn in an IDS, or Information Disclosure Statement, which lists all the “prior art” you know about at the time you submit the IDS. Indeed, patent applicants are under a duty to inform the USPTO of any patent, published patent application, book, magazine article, journal, newspaper article, etc. that they believe may be relevant to the patentability of their invention. Failure to disclose such information may later lead to any resulting patent being held to be unenforceable.
So, just like make sure that all the competitors that should be in a heat have been found before the heat, and IDS makes sure that the USPTO is focusing clearly on your ride and those of the other competitors in your heat (since you’ve already pointed them out to the USPTO judges), and not spending a lot of time worrying about whether they have all the contestants in the water at one time.
In Kelly’s case, their IDS contained a number of patents and published patent applications that they had found and believed were relevant to whether Kelly’s invention was patentable. They also went out of their way to make sure that the USPTO knew about two other applications, filed in Australia, by sending in complete copies of those published applications attached to the IDS.read 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.