Can I still claim patent and trademark for a shoe invention that I had in 2003 if I was able to register a domain and put a website in 2005? 5 Answers as of March 07, 2013

In 2003, I had an idea for a lady's shoe with interchangeable heels (high, mid, flat, different colors to change look, etc.). I named my product with a very unique name. In 2005, I registered a domain name using that product name and put up a website that has been up continually seeking investors to fund a prototype, etc. Due to my limited resources, this is as far as I could go on my own. I just became aware of a few others who have applied for or been granted patents for a similar product but each with its own different mechanism for switching out the heels. I get it that it would probably be difficult to prevail on a patent claim at this time based on First to Invent which is over when First to File kicks in on March 17. However, what I'd like to know is if I have any hope of prevailing on a claim for trademark infringement on a patented variation of the product that received its trademark approval in January 2008. I understand about First Use in Commerce vs. Filing Date. In this case, the filer would be in a junior position as my common law trademark pre-dates their registered trademark by 5 years. HOWEVER, I mistakenly believed until doing research today that my Common Law Trademark was secure because of my website alone. From my research today, it seems that I am out of luck since I have not manufactured or sold any labeled shoes or any shoes at all. What gets to me in this case is that the trademark filer has registered a patent for an identical or near identical shoe AND has also registered a trademark that is exactly the same as mine except he has changed a couple of letters in the word. This is not a descriptive term like "delicious" or "music". It is suggestive of what makes this product unique. Without question, both marks would have a great likelihood of confusion. Taken in combination, patent and trademark, is there anything I can do to protect my rights regarding being first with the invention?

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Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
There are several confusing statements in this scenario. Best to contact me personally by phone if you want an answer. There are missing facts that i require to give you an opinion. But on a quick review, based on what you have said here (which i think in very incomplete) i don't see where anyone has wronged you. Keep in mind that they have only applied for a trademark they have not received it yet and you can oppose them in the publication period and let the Trademark Office straighten it out.
Answer Applies to: Oregon
Replied: 3/7/2013
Eminent IP, P.C.
Eminent IP, P.C. | Paul C. Oestreich
Assuming you have not publicly disclosed your invention via your website or otherwise, you might still be entitled to seek patent rights for your invention. Of course, patentability of your invention is subject to the usual utility, novelty and non obviousness requirements and other technical requirements. However, if you have publicly disclosed your invention or offered it for sale for more than a year, you are barred from seeking patent rights. Trademark rights arise from earliest continuous use in commerce of the mark in association with goods or services. From the facts you have provided, your use of your trademark does not appear to rise to the level of "use in commerce", because you are not yet manufacturing or selling any product and associating your trademark with that product in manufacturing or sales across state lines. There are some cost effective strategies you could have used to protect your intellectual property, *e.g.*, a provisional patent application and an intent-to-use trademark application that might have put you in a better position. But, it is almost always best to engage intellectual property counsel for a consultation on strategies that align with your business needs and to do so at the earliest possible time.
Answer Applies to: Utah
Replied: 3/7/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
For the trademark you can use the TM, but the (R) R with a circle around it is reserved for registered trademarks. If the mark is not registered then you can't use the R with a circle around it. You may be able to go after others under "trade dress" laws for confusion in the market place if you have any earlier date of use. For the patent application, If the application is currently pending then you can say "Patent Pending". If the application is abandoned then your rights are gone. If the application resulted in a patent and all of the fees are current then you can go after any infringes. If you re-file an abandoned application and have been selling the product for over a year, a patent examiner can reject your new application based upon your prior use. Because you did not provide the application numbers or the titles I can't give any specific answered to your applications or patents.
Answer Applies to: California
Replied: 3/7/2013
Banner & Witcoff, Ltd. | Ernie Linek
It is likely that most of your IP rights are gone due to the "abandonment" of your concept. US Patent rights are obtained only once a patent on your invention has been issued to you by the Patent Office. Federal Trademark rights are obtained by use of the mark on goods sold in interstate commerce. At best, you have copyright protection for the original content in your website. Your website may be adequate to be "prior art" that possibly could be used to invalidate a patent granted to a later inventor - but that does not give you any rights to that invention. PS - first to file starts on Saturday, March 16, 2013.
Answer Applies to: Massachusetts
Replied: 3/7/2013
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
You are out of luck because you did not use your trademark in commerce and you did not register your trademark. Further, under our first to file patent system it is far too late for you. The lesson here is that you should have worked with IP counsel very early in the process. I can tell by your question that you think you are smart enough to understand legal stuff without retaining counsel. You are wrong. It is possible that we could find a creative way to demand some kind of settlement. Perhaps we can allege that you have, in fact, been using the trademark for various purposes and develop a creative argument that might extract some settlement funds. But you would not do well if this matter went to court, and at most the other side would pay you some kind of nuisance amount to go away.
Answer Applies to: New York
Replied: 3/7/2013
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