(305) 362-8118 ------ ALCOBA LAW GROUP PA alcoba@miamipatents.com

Patent Lawyers and Miami Trademark Attorneys

Alcoba Law was first established in 1999 by Registered patent attorney Ruben Alcoba. Since our inception, our patent lawyers and trademark attorneys have helped our national and international clients with their intellectual property. We believe that a patent lawyers job is to educate our patent clients with what is patentable prior to filing for a patent. In the same manner, our trademark attorneys believe that it is our job to protect our clients from infringing others trademarks prior to filing for their trademark. For the above reasons, we always recommend to our clients to conduct a patent search or a trademark search prior to filing for a patent or a trademark.

Our patent lawyers help independent inventors as well as established companies obtain patent protection in the United States from our Florida Offices. Our trademark lawyers help our trademark clients procure their trademarks and protect their brands in interstate commerce. Our team comprises of experienced registered patent attorneys and trademark attorneys that are licensed to practice law in Florida. Our trademark attorneys prosecute trademarks and litigate matters before most courts, and our patent attorneys prosecute patent applications before the United States Patent and Trademark Office.

Our attorneys are versed in corporate law and can help your company grow and safeguard your intellectual property. We advise you to protect your intellectual property by having anyone involved with your patents or trademarks execute non-compete and non-disclosure agreements. Because we value our client’s confidential intellectual property, we conduct patent and trademark searches in-house and do not outsource.

We also provide the following services: draft trademark, copyright, patent, licensing, manufacturing and sales, distribution, and non-compete agreements; enforce and defend infringement matters; enforce and defend internet domain matters; contractual negotiations; import and export matters; and many other related business and entertainment law matters.

Patent Lawyers Helping Local Inventors

“As a patent lawyer, I understand the need to educate local inventors as to what is and what is not patentable.” Ruben Alcoba, Esq.

At our firm, often, independent inventors visit us with concepts that have not been fully developed, so it is my job to educate them that a concept has to be enabled in order to be granted a patent in the United States.

So, what does it mean for an invention to be enabled? The US Patent law states that for an invention to be enabled “the specification (the written description of a patent application) must describe how to make and how to use the invention. The invention that one skilled in the art must be enabled to make and use is that defined by the claim(s) of the particular application or patent.”

For example, a concept defines a problem and defines a solution to a problem, yet it may not define the manner in which the solution is reached. A concept could be that a room needs a light at night and that a solution to the problem would be to develop something that will provide the light to the room at night. If the concept does not instruct a user how to build and use the device that would provide light to the room, then the device would be deemed not enabled. If a device is not enabled, then the concept cannot be protected by US Patent Law. US Patent Law only protects conceptual devices that are enabled (defined as how to make and use to the ordinary person in the art of the device) to solve a specific problem in a novel and non-obvious manner.

What is Novel? A novel invention is one that comes from an original concept or idea. For, an invention cannot obtain a patent in the United States if the invention was known or used by others anywhere in the World prior to the filing of the invention in the US Patent and Trademark Office.

The Strength of a Trademark an Its Importance

“As a trademark attorney, I am often presented with clients whom do not understand why a mark cannot be a generic or descriptive mark. It is my job to educate them why they should always select a Suggestive, Arbitrary or Fanciful mark.” Juliet Alcoba.

A Generic mark can never be protected. What is a Generic brand? A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used. A two-part inquiry is used to determine whether a designation is generic: (1) What is the genus of goods or services at issue? (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? It is not necessary to show that the relevant public uses the term to refer to the genus. The correct inquiry is whether the relevant public would understand the term to be generic.

A Descriptive mark may be registered, yet it will bring very little trademark protection. So what is a Descriptive trademark? A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Similarly, a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. This requires consideration of the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. The mark need not describe all the goods and services identified, as long as it merely describes one of them.

A suggestive mark can be protected and it can suggest the products or services sold under the mark, yet often the USPTO will attempt to reject a suggestive mark as descriptive. So what is a suggestive mark? Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. Incongruity is a strong indication that a mark is suggestive rather than merely descriptive. The Board has described incongruity in a mark as “one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark,” and has noted that the concept of mere descriptiveness “should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and ‘mental pause.

An arbitrary mark is a strong mark that will receive protection from the USPTO and the State and Federal Courts. We recommend to our clients to select arbitrary or fanciful marks. So what is an arbitrary mark? Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.

A fanciful mark is an extremely strong mark, yet it will require work in building brand recognition, yet when brand recognition is acquired, the mark will be respected by the USPTO and the State and Federal Courts. So what is a fanciful mark? Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language.

We hope that the above explanation allows you to select the proper mark to represent your goods or services.



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Patent Lawyers

Patent Services: Let our experienced Florida patent attorneys help you file your patent applications before the USPTO.

Litigation Lawyers

Litigation Services: Our litigation attorneys help you enforce and defend your intellectual property before the State and Federal Courts.

 

Trademark Lawyer

Trademark Filing Services: Let our experienced Florida trademark attorneys help you file your trademarks before the USPTO

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