Trademark Application Timeline, Take One I spent a few posts detailing the various pieces of virtual paper it takes to get and keep a trademark this week. But I thought it'd be a good idea to detail a timeline of the trademark application process.
Federal Trademark Application Timeline, In Use Application
A trademark can be owned indefinitely as long as the applicant stays on top of all the various forms the USPTO requires.
First up is the Section 8 Declaration of Continued Use -
Here's the USPTO's definition:
"a sworn statement, filed by the owner of a registration that the mark is in use in commerce...It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 1) At the end of the 6th year after the date of registration...AND 2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration.&quo…
Statement of Use/Amendment to Allege Use for Intent-to-Use Application
Picking up from yesterday's post, let's get further into the additional forms attached to filing an Intent to Use application.
Once the Intent to Use application is filed, the USPTO will move ahead with the filing process as normal but once all the various red tape has been cut, they will need to hear from you that you're using the mark in commerce.
You let them know you're using the mark in commerce by either filing a Statement of Use or an Amendment to Allege Use. Now, it sounds confusing but this is essentially the same form - the only difference being as to the time when it's filed.
Amendment to Allege Use:
This is "a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With the AAU, the owner must submit one specimen showing use of the mark in commerce for each class of goods/services included in the appl…
Picking up from Friday's post, let's look at more definitions from the USPTO, specifically, the statuses you DON'T want to see on your application.
"An application that has been declared abandoned is 'dead' and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office Action letter from an applicant within 6 months from the date the Office action letter was mailed."
This is the Office Action discussed in Friday's post. The USPTO gives the applicant 6 months from the MAILING DATE (NOT the date you received it) to submit a response. You don't do that within 6 months...wave bye bye to your trademark filing. Unless...
"...Applications abandoned for failure to respond to an Office Action...can be revived or reinstated in certain circumstances. For more information, see Petition to Revive and Request for Reinstatement.…
Picking up from yesterday's post, I thought it'd be a good idea to devote some time explaining the different status descriptions for Federal trademark applications.
Any & all definitions can be found here but I thought it'd be nice for our readers to take it a step further and put these explanations in easy to understand language. The material in quotes is straight from the USPTO's mouth while the text underneath is straight from mine.
* Assigned to Examiner:
"a USPTO employee who examines (reviews and determines compliance with the legal and regulatory requirements of) an application for registration of a federally registered trademark"
The first step of the filing process is your application being assigned to an examining attorney at the USPTO. This is not an attorney that will litigate for you or will consult with you about infringements. This is an employee of the USPTO who you will correspond with directly about your…
Once your Federal trademark application is filed, it's on you, the applicant, to keep an eye on your status, any emails & any requests from the USPTO. Failure to do so could result in your application becoming canceled, so this is important.
"Trademark applicants and registrants should monitor the status of their applications or registrations in cases where a notice or action from the USPTO is expected. Inquiries regarding the status of pending matters should be made during the following time periods:
(1) During the pendency of an application, an applicant should check the status of the application every six months between the filing date of the application and issuance of a registration; and (2) After filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, a registrant should check the status of the registration every six months until the registrant…
"* conduct trademark searches for the public; * comment on the validity of registered marks; * answer questions as to whether a particular mark or type of mark is eligible for registration; * offer legal advice or opinions about common law trademark rights, state registrations, or trademark infringement claims; or * aid in the selection of a private trademark attorney or search firm."
As promised in this post, I'll explore what's acceptable as a specimen as it pertains to clothing.
When it comes to clothing, the best thing to send to the USPTO is either a tag or a label. This makes it clear that the name and/or logo is being used for a clothing line. The USPTO will no longer accept a picture of a, for instance, t-shirt with the name appearing only on the front. Those days are over.
Let's look at a few examples to illustrate this.
1) Your specimen can be a tag all on its own as seen here
2) Your specimen can be a tag that's attached and/or sewed into a garment as seen here
* Material on this site is provided for informational purposes only. All rights reserved by the respective trademark owners
Specimens: Not Just for Guys in White Coats Anymore
Picking up where we left off on Tuesday, I think it'd be a good idea to start with, well, starting. I recommend anyone looking into starting a clothing line to check out PowerHomeBiz's article about that very subject.
Trademark Your Clothing Line Easily one of the biggest industries we serve over at TradeMark Express is the clothing industry. Because of that, I thought it was high time to devote a few posts to the different facets of filing for a trademark for your clothing line.
The first subject should definitely be explaining what branches of intellectual property are available for the various items that typically make up a clothing line.
It is not possible to protect ideas but rather the representation of that idea.To protect an original invention OR a significant improvement to an existing product, a patent would be filed. Click here for the USPTO's definition.
NOLO is a great, free informational site. Also, be sure to read what else the USPTO (United States Patent & Trademark Office) has to say about patents.
Associations may be a good avenue to explore. These organizations will address many of the thoughts, questions and concerns you'll inevitably have as well as many you haven't anticipated yet.
Research, research, research – this cannot be stressed enough. Read as much as you can. Check out the Amazon Widget to the right for recommended books.There are plenty of free informational resources out there.
Electronic Arts ® has filed a Federal trademark application with the USPTO for what looks to be the seventh expansion pack in the popular series. The application was filed on September 14th, 10 days after the release of the latest expansion pack Bon Voyage.
There have been a number of changes at TradeMark Express lately that I wanted to take this opportunity to detail them here for our blog readers.First, we dropped our fees $50 on August 14th from $600 to $550. This is our first price reduction in 15 years! I want to reassure our clients & potential clients that a price drop does not mean a drop in services by any means. Our clients are getting the same great service they've been getting since 1992 – comprehensive research, analysis, referral to a trademark attorney and preparation & submission of their Federal trademark application. We were able to justify and absorb that price drop by streamlining some of our internal processes so who better to pass that on to than our clients!Second, we implemented a payment plan program. TradeMark Express® understands the many expenses new business owners face; we also know how necessary comprehensive research and analysis is prior to filing. To help …
What is a Trademark Conflict? What is a Trademark Similarity? Comprehensive trademark research consists of several layers: Researching comprehensive databases, such as Lexis-Nexis or Dialog Looking for similarities, such as synonyms, word placement & spelling variations Consultation with a trademark attorney if Conflicts or Strong Similarities ariseThe hardest matter to determine is what's going to be a potential problem for you and what isn't. Once that is ascertained, further research into the company or companies is needed.First, let's discuss the difference between conflicts and strong similarities.What is a Conflict?Determining a conflict is very simple - it's any mark that is EXACTLY like yours. If the name AND the goods/services are EXACTLY the same, then it's a Conflict.What is a Strong Similarity?These are harder to determine and require analysis. A Strong Similarity is a name that is similar enough in Sound, Appearance or Meaning…
"The United States Patent and Trademark Office (USPTO) will host a showcase for trademarks at its Alexandria, Virginia headquarters April 10-12, 2008. The three day event is designed to engage the public’s interest and educate consumers about the vital role trademarks play in the global economy. Any company with a registered trademark may apply to exhibit. The deadline for applications is December 15, 2007."
How do I Trademark a Domain Name? The process for filing for a trademark for a domain name is similar to any other name in terms of comprehensive research and analysis being a necessity. Comprehensive research consists of looking at marks that are similar in Sound, Appearance or Meaning in the pending & registered Federal AND State trademark files as well as the US National Common-Law files. There is one big caveat when it comes to trademarking domain names and it has to do with usage of the domain name. "A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier," so says the USPTO. Okay, but what does that mean?Basically, as long as your domain name is the name of your product and/or service, it's likely registrable. Let's look at some examples to illustrate this:Example: Our primary domain name is www.tmexpress.com but the name in which we conduct business is TradeMark Express, therefore our Feder…
How do I Trademark a Slogan? Here's another question from one of our readers:
I'm a book author, and I came up with a very 'catchy' slogan to be used in future advertising campaign.
What steps do I need to take to trademark and/or copyright this slogan so that it is exclusively mine??
Alan Roger Currie Author, "Mode One: Let The Women Know What You're REALLY Thinking"
Thanks for your question Alan!
First, it's not possible to copyright a slogan.
Copyrights can be obtained for things of an artistic nature. This includes, of course, poetry, films, sculptures, music, fiction, etc. But can also include things that may not necessarily seem "artistic" in the general sense of the word. Copyrights can also be obtained for advertising copy, games, software programs and blueprints, to name just a few.
It may be possible to file for a trademark for the slogan as long as it's used to indicate & identify the source of goods/services.
Trademark Question From a Reader "If I have an agreement as an exclusive distributor of a product, and the product name was in use prior to my agreement, but not trademarked, can I apply for and receive a trademark for the product name."