TradeMark Express Blog: All Things Trademark: October 2006

Patent Your Invention -- Resources, Links & Books

Lawyers on the Loose!

The USPTO will be experimenting with telecommuting lawyers starting next year. Read more about that here.

trademark trademark news trademark info USPTO

A Veritable Voluminous Vat of Varying Varieties of Vagueness
aka The USPTO Glossary

The USPTO offers a great service to the public by having the glossary available for viewing. However, some of the language makes you want to say 'huh? what was that?'

So, let's take a look at some of the important words/terms that every person wanting a trademark should know.

First & foremost -- trademark. What is it? Do I need it? Why do I need it? The word trademark can have entire posts written about it; luckily, I've got several for you to check out:

What is a Trademark?
What is a Trademark Search?
Do You Need a Registered Trademark?

Okay, let's move on to some of the trickier definitions.

When an application is filed with the USPTO, there are four different filing bases: use of the mark in commerce, intent-to-use, pending foreign application & foreign registration. Having a pending foreign application or registration is a whole different ball of wax & probably won't apply to most folks reading this so let's stick with the first two.

* Use-based application: You can read the USPTO's definition here. Basically, this basis is chosen if the name, logo or slogan has been used in connection with the goods/services across state lines or between the US & any other country. Let's use some examples:

You live in Florida & you have a clothing line with a name & a logo. You've sold some pieces through your on-line web site to customers in Florida, New York and the Bahamas. Your mark is in use in commerce.

Your financial consulting company is based in Mesa, AZ and you have a small roster of clients, all of whom reside in Arizona. Your mark is not in use in commerce. Your mark, however, is in use for the state of Arizona.

* Intent-to-use application: After scrolling a bit, you can read the USPTO's definition here. Essentially, if you're only doing business in 1 state or not at all, you'll be filing as an intent-to-use. Here's a couple of examples:

You plan on starting an on-line retail site selling home decor items. You've got your DBA, the domain name secured & some business cards printed up; however, you have not yet made a sale. Your mark is an intent-to-use.

You live in California & you have a greeting card company. All of your cards are handmade and all carry your name & logo on the back. You've sold at holiday trade shows all across the country. Your mark is in use in commerce.

Now the intent-to-use filing has a bit of a hiccup in the trademark process. The USPTO will not actually grant registration of a mark until it is in use in commerce. Basically, this requires some money & the filing of another form to the USPTO.

Are there any terms or words that you've run across that I could explain for you? Let me know by way of commenting & I'll write up a post for you.

trademark trademarks trademark definitions trademark application trademark filing

Dead Apples

There's been a lot of hullabaloo about Apple's filing for iPhone in the trademark world.

That got me thinking about Apple's dead marks -- let's take a look at what could have been...

iSchool was filed for on September 21, 2001 for International Classes 9, 38, 41 & 42. This mark became abandoned in August 2002 for failure to respond to the USPTO. The mark, specifically IC 41, sounded particulary interesting to me:

"Educational services; educational services, namely, providing a web-based student information system, featuring student grades, attendance records, and homework assignments, that enables school districts, schools, administrators, teachers and parents to record, access, report, and manage their student information and performance data, and allows students and parents to access such information and data, in real time" sounds like a fantastic feature for all schools.

Offlinert became abandoned on July 30, 2004 for failure to respond to the USPTO's refusal for registration on the Principal Register due to the mark being merely descriptive.

Lastly, Cinema Tools became abandoned in March of 2006 again for failure to respond to the USPTO. One of the reasons for refusal was that good ole descriptive tag.

A quick check of the PTO shows 531 dead marks owned by Apple Computer Inc. Some of the more interesting names I came across:

Junkyard for "computer software for sharing, managing, viewing and editing files, documents, and electronic mail messages"
FlowerPower for "computers, computer hardware, computer peripherals, and user manuals sold as a unit therewith"
Internet Safari for "providing temporary use of on-line non-downloadable children's educational computer software"
Espresso for "computer software, namely, programming language software and manuals sold therewith"

Take a look for yourself by following these steps:

Go here and choose New User Form Search

Enter Apple Computer into the Search Term box and change the Field to Owner Name

Click Submit Query and voila!

Trademark Renewal & Maintenance – How Do I Keep My Trademark?

After you’ve applied for your trademark, there will be a waiting period of approximately 18 months before your name is actually registered with the United States Patent & Trademark Office (herein referred to as the USPTO). Until then, it will be listed as "Pending."

Sometimes there are hold-ups; the USPTO may not allow you to use the name you’ve chosen to apply for because there is a similar name already trademarked. In this case, you will receive an "office action", which is a notification from the USPTO. If you do receive an office action, it might be due to the USPTO simply needing more information in order to complete your trademark application.

However, it also may be because your name is blocked by another name, which is the worst case scenario, and another reason why it is incredibly important to purchase comprehensive research before you file for your name!

After your name is registered with the USPTO, between years 5-6 you will file a "Continuous Use Form." This form conveys to the USPTO that you have been using your trademarked name, and you intend to continue to stay in business or to sell your product under that name. After a 10 year period, you will be required to renew your trademark.

It is important to be aware that some maintenance is involved in keeping your trademarked name.

It is recommended that each year you commission research on your name. This is done to ensure that no one has begun using your name since doing initial research on its availability. By continuing to do annual research, you are adding a greater sense of protection for your name and business.

It is up to you to remain informed on what businesses are using what marks, and how this might affect your own personal business ventures.

Once trademarked, you may take legal recourse if another business has begun using your name. A "cease and desist" letter is a way of conveying to another business that they are infringing upon your trade-name. While you do not need a trademark in order to draw up a letter such as this, having a federally registered trademark gives you a greater ability to disallow the use of your name by another.

These documents should always be drawn up by an attorney, rather than an individual, as the action conveys that you are taking legal recourse against another business. Please communicate with the USPTO directly, a trademark attorney OR a trademark research company if you have more specific questions about maintaining your trademark!

Author: Marit Lee

trademark trademark renewal trademark renew trademark maintenance trademark application trademark registration

First, let's pinpoint what falls into the sound recordings category. Here's what the US Copyright Office has to say:

"Sound recordings are 'works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.' Common examples include recordings of music, drama, or lectures."

Here are some books about copyrights:

The Copyright Handbook
How to Register Your Own Copyright

Now to file an application:

The application is fairly simple & the cost is $45 per application.

Despite what others state, a "poor man's" copyright is NOT the same as registering it. Here's what the US Copyright Office has to say:

"The practice of sending a copy of your own work to yourself is sometimes called a 'poor man’s copyright.' There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration."

Lastly, here are two great resources:

NOLO's Copyright Resource Center
NOLO's Creative Arts & Music Resource Center

copyright


copyrights

copyrighting

sound recordings

music

I wanted to send out a THANK YOU to David Giacalone, 'the founding editor & host' of shlep for his kind words about our blog.

A Little Bit of This, A Little Bit of That

We'll be moving to a new home soon, which means time for posting has diminished a bit. However, I did want to be sure to share with you some news about trademarks & copyrights that I found interesting.

* Hormel loses bid for spam trademark by OUT-LAW.com

* Coach files trademark suit against Target over handbag by Chad Bray

* Google ducks a legal bullet by Eric J. Sinrod

* Judge tosses copyright suit against Beyonce by The AP

* Copyright owners bust Univ. students by Jessica Levine

trademark trademarks trademark news copyright copyrights copyright news

Trademark 101: What is a Trademark?