Copyright, trademark or patent?

Let me offer a personal experience with intelectual property (IP) issues as related to my patent for jump-shooting action figurines and the resulting table basketball game and other toys. I am not offering any legal advice here, as that would be illegal for a non-lawyer like me.


First decision involves the kind of protection you can get for your creation. Start at this excellent blog to decide if you need a copyright, trademark or even a patent protection. The U.S. Patent office offers legal, but unispiring definitions, and their home page points to extensive information on patents and trademarks or to the U.S. Copyright Office. Even better, go directly to NOLO, the publisher of excellent, reasonably priced books with advice on many legal subjects including copyright, trademarks, patents, and business startup to divorce-thyself manuals.

I used all of those sources to decide that

• my figurines were patentable,
• I wanted to create a logo and register a trademark for it, and
• the figurines and the table basketball game would carry copyright notices and their samples would have to be deposited with the Library of Congress. 

You may want to consult a lawyer even for that basic decision. Although English is my second language, I decided that I can decipher legal mumbo-jumbo well enough to decide what protection I wanted, and even to try the most difficult step, patenting the figurines by myself. It was not easy, and the patent process took a few weeks of my time. Fortunately, the excellent book from NOLO Patent It Yourself by David Pressman provided all the info including forms and letters anybody needs to write (and draw) their own patent - or decide to get that lawyer.

There is no point in trying to summarize his 500+ pages and forms. The book takes you through the process of deciding what protection you idea can get, and points you to more information or other NOLO books if your needs do not include patenting. Next, it shows you how to search for similar ideas already patented, and what the search results tell you about the patentability of your idea. It then leads you step by step creating a complete patent application. It even tells you where to mail it and how to pay the application fees. It describes the USPTO application process, tells you how to respond to their 'office actions' to get get the patent, and even how to go about licensing your eventual patent.

Creating a complete patent application is a long process. The decision to do it yourself or hire a lawyer comes to the usual choice: if you have the money to spare ($5000 or more, sometimes MUCH more), you may be better off hiring a lawyer. If you don't, and you like challenges like I do, you may find that it is not that hard.

Your final decision involves the 'prosecution' of your application. It is likely that the first USPTO 'office action' will reject it. Again, 'Patent It Yourself' tells you how to respond, and sometimes recommends to get a lawyer at this point. You may even enjoy convincing the USPTO to accept your reasoning as much as I have. Their MPEP (Manual of Patent Examining Procedure) tells you how the examiner makes the decisions - and how you can challenge them.

Getting the patent took several years. It is a slow process under the best circumstances. If you have to defend your application with appeals and reissues to regain ground lost in the 'fight' (to broaden your claims after the examiner chopped them down), it gets even longer. But I got my patent - and then had to find a way to 'monetize it.' But that will be another post.

So, would I get the next patent without a lawyer's help? By all means - perhaps I am just too cheap... :)

[from my WordPress blog.]

The birth of jumpSHOT™

When my son started playing our local basketball Little League, I wanted to give him for Christmas a table basketball game I used to play with as a boy. That game had a plastic spring with a hole for a ping-pong ball to shoot baskets. It seemed to have disappeared from the market except for a puny toddler version. I thought about making one for my son and then I forgot about it. Some time later I drove over a bump in the road, my body jumped – and a light came on: “put a little figurine of Kobe on that old ‘catapult’ and make him shoot baskets!”

Such a game with figurines of NBA and NCAA players would have to be really popular,  right? Since nobody was making my great idea, I decided to get a patent for it, and tried to license it to Hasbro, Mattel and other toymakers. Most of them would not even bother to reply – even companies that make boring, static “(no-)action” figurines of NBA players!

Next, I tried to find a US manufacturer, unsuccessfuly. I went to Southeast Asia and Europe, but they all are so afraid of the Chinese competition that some even “sold our best equipment to them” in the words of one Southeast Asian factory owner. Finally, one of the Europeans told me to see his Hong Kong suppliers and have the table basketball made in China… After 5+ years of effort, our new jumpSHOT™ line is finally getting close to introduction, starting with that table basketball game. The basic game will have two paintable action figurines performing jump shot.

We plan to get licenses of NBA and NCAA players for an annually updated line of basketball action figurines. To lower your cost, the figurines will be sold separately, but they can be used  with our table basketball, multi-sport tables or by themselves. You’ll be able to add just your favorite NBA players to your table basketball game: will you choose Kobe vs. Wade, or Pau vs. Kevin?

In this blog I’ll tell you what we are working on, ask for your opinion, and talk about our struggles. I hope that somebody starting a company can learn something useful from my experience with (1) patenting my basketball action figurines, (2) trying to license and (3) produce a game or other products….