Jackpot!
Gambling Themed Trademarks

The Masters are coming to a casino near you or so I assume based on the 3 newest filings from High 5 Games for gaming machines:

Matisse
Renoir
Van Gogh

Hasselhoff doesn't want to be hassled, as we all have heard, but he'll probably be fine with you feeding some quarters into the Don't Hassel the Hoff slot machine.

Trademark Application Timeline, Take Two

Federal Trademark Application Timeline, Intent to Use Application

For In Use applications, read this post.

Step 1: File

Assuming you've had all your comprehensive research completed & the name is clear, the first step is to file the application. The application is available online through the USPTO. TradeMark Express includes preparation & submission as part of our package.

Step 2: Receive a Filing Receipt

The day the application is filed, the USPTO will email you a confirmation that the application is received. This receipt includes your serial number, the filing date and a summary of the application.

How Long? Should be same day. If you do NOT receive a filing receipt the same day, contact the USPTO at TEAS@uspto.gov

Step 3: Assigned to Examiner

An examiner is "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." This will be the individual you'll correspond with about your application during the registration process. See this post for further details.

The time periods for the rest of this process are going to vary so the following are approximations...

How Long? About 3 months, though could be sooner or later.

Step 4: Examination Begins

Your examining attorney will review your application & should any issues arise that need to be dealt with will come via email in an Office Action. Office Actions can be comprised of a number of things. Some of the most common issues are a disclaimer is needed, a re-wording of the goods/services description is needed and the mark is refused based on likelihood of confusion, which is why you have comprehensive research done first to ensure that this doesn't happen. See this post for further details.

How Long? Anywhere from 1-3 months seems to be the average length of time it's taking the examining attorneys to send out Office Actions. This can be shorter if the application is filed correctly from the get go.

Step 5: Notice of Publication

Provided that there are no objections from the examining attorney and/or you've responded to their Office Actions satisfactorily, the application then moves to publication. Publication is in the Daily Gazette, a USPTO online publication and is for 30 days. "Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose."

After this, as long as no one files an objection to your application, you will move into a holding period, then receive your Notice of Allowance.

One important note: This is the BLACKOUT PERIOD - do not file your Amendment to Allege Use/Statement of Use. You'll have to wait until the publication period is over.
How Long? You should expect your Notice of Allowance approximately 8 weeks after publication.

Step 6: Notice of Allowance Issued

"Written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration."

This is when the clock starts ticking & applicants should be very diligent on keeping things up to date. You'll have 6 months from the date the NOA is MAILED to contact the USPTO with either a Statement of Use or a Request for an Extension of Time (gives you another 6 months to file the Statement of Use).

Step 7: Registration

Once the publication period is over, the mark becomes registered. You'll also be assigned a registration number.

All in all, it could take a year (if there are no issues) to a year & a half (if there are hiccups like Office Actions) to be granted registration for an in use application. However, be rest assured that the USPTO does take note of your pending application. If a filing comes in AFTER your application, they will know that you were first in line.

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

Step 1: File

Assuming you've had all your comprehensive research completed & the name is clear, the first step is to file the application. The application is available online through the USPTO. TradeMark Express includes preparation & submission as part of our package.Step 2: Receive a Filing Receipt

The day the application is filed, the USPTO will email you a confirmation that the application is received. This receipt includes your serial number, the filing date and a summary of the application.

How Long? Should be same day. If you do NOT receive a filing receipt the same day, contact the USPTO at TEAS@uspto.gov

Step 3: Assigned to Examiner

An examiner is "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." This will be the individual you'll correspond with about your application during the registration process. See this post for further details.

The time periods for the rest of this process are going to vary so the following are approximations...

How Long? About 3 months, though could be sooner or later.Step 4: Examination Begins

Your examining attorney will review your application & should any issues arise that need to be dealt with will come via email in an Office Action. Office Actions can be comprised of a number of things. Some of the most common issues are a disclaimer is needed, a re-wording of the goods/services description is needed and the mark is refused based on likelihood of confusion, which is why you have comprehensive research done first to ensure that this doesn't happen. See this post for further details.

How Long? Anywhere from 1-3 months seems to be the average length of time it's taking the examining attorneys to send out Office Actions. This can be shorter if the application is filed correctly from the get go.

Step 5: Notice of Publication

Provided that there are no objections from the examining attorney and/or you've responded to their Office Actions satisfactorily, the application then moves to publication. Publication is in the Daily Gazette, a USPTO online publication and is for 30 days. "Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose."

After this, as long as no one files an objection to your application, you will move into a holding period, then finalization for registration, then registration. 

How Long? This process should take approximately 12 weeks.

Step 6: Registration


Once the publication period is over, the mark becomes registered. You'll also be assigned a registration number.

All in all, it could take a year (if there are no issues) to a year & a half (if there are hiccups like Office Actions) to be granted registration for an in use application. However, be rest assured that the USPTO does take note of your pending application. If a filing comes in AFTER your application, they will know that you were first in line.

Hut 8, Hut 9, Hut 15!

I haven't a clue if I used the correct football reference but let's go with it because it fits with the subject of this post. :)

I've been talking about the various application forms it takes to get your trademark registered but what about when it is registered?

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."

This is a form letting the USPTO that you're still actively using the mark. Basically, this is a sort of weeding out process if you will. Trademarks MUST be used in order to keep their registration.

Two deadlines for this form: (1) between the 5th & 6th year from the date of registration, e.g. your mark became registered on October 31, 2002 so that means your Section 8 is due anytime between October 31, 2007 to October 31, 2008. (2) by the end of a 10 year period after the date of registration, which includes the FIRST 10 year anniversary, even though you'd have just filed it four years prior.

Section 9 Renewal Application -

Again, from the USPTO:

"a sworn document, filed by the owner of a registration, to avoid the expiration of a registration. Federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods...The §9 Renewal Application may be filed one year prior to the registration expiration date or during the 6-month grace period immediately after the date of expiration. If the §9 Renewal Application is not filed or is filed after the grace period ends, the registration will expire.

Because the due date of the 10-year §8 Declaration coincides with the due date of the §9 Renewal Application, the USPTO created a form entitled "Combined Declaration of Use in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9"

This one's easy to get. The Section 9 is the application to renew your mark for another 10 years. And since the due date coincides with the due date for the Section 8, you can file just one form for both.

Section 15 Declaration of Incontestability -

From the USPTO:

"a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming 'incontestable' rights in the mark for the goods/services specified. An 'incontestable' registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions...

Filing a Section 15 Declaration is optional. However, there are certain rules governing when one may be filed...The §15 Affidavit must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15."

Okay, a couple of things here - your mark has to be on the Principal register; you've got to wait until the 5 year mark from registration; and again, the due date coincides with the Section 8, so you can file one form for both.

TradeMark Express offers preparation & submission services for all of the above forms.

Free Calendar of Bizarre Patents

PATEX Research and Consulting Ltd., a patent research firm based in Canada, has published a free calendar for 2008 of bizarre patents. Click here for your very own PDF copy.

Some of my favorites from the calendar:

October's helmet mounted pistol - takes hands free to a whole new level.

February's anti-eating face mask - uhm, I have no words for this one.



December's snake collar - for all your snake walking needs!

PATEX did a fantastic job with this calendar...hmm, perhaps a bizarre trademark calendar would be just as neat?

Also, I wanted to be sure to mention the site where I got these patent images from - Pat2Pdf.org. This site's really easy to use & doesn't require any plug-ins.

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 application, and the required fee.

...must be filed before the date the examining attorney approves the mark for publication in the Official Gazette."

Statement of Use:

"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...must be filed within 6 months from the date the USPTO issues a notice of allowance. Failure to submit the statement of use in a timely manner results in abandonment of the application."

So the big difference here is that the Amendment to Allege Use is filed BEFORE publication and the Statement of Use is filed AFTER the Notice of Allowance is received.

Publication? Notice of Allowance? Huh? Here are the definitions for each but I'll be sure to devote another post to the application time line.

Publication:

"If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette.

The USPTO will send a Notice of Publication to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose."

Notice of Allowance:

"Written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration.

Notices of allowance are only issued for applications that have been filed based on 'intent to use'. The notice of allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a statement of use. After receiving the Notice of Allowance, the applicant must file a statement of use or a request for an extension of time to file a statement of use within 6 months from the issue date of the notice. If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use, the application will be abandoned."

"What the world really needs is more love and less paperwork."

True words, Pearl Bailey, but when it comes to trademarks, paperwork is the fuel that keeps the trademark machine running.

I'll devote a few posts to the different types of filings the USPTO requires. That being said, let's start at the beginning.

Trademark/Servicemark Application, Principal Register:

"Use this form to file an initial application for either a TRADEMARK for "goods" AND/OR a SERVICEMARK for "providing services" -- this form is appropriate for both."

As the USPTO does, we'll use the term trademark to denote both types of marks. When applying for registration for your trademark, this is the application you'll start with.

Provided within quotes is straight from the USPTO & my explanations are underneath. Within this application, there are two routes you can go:

1) Use in Commerce

"For the purpose of obtaining federal registration, 'commerce' means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. 'Use in commerce' must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark."

Basically, this means that if you're claiming the mark is in use in commerce, you're telling the USPTO that the mark is actually being used either across state lines or between the US & another country.

This is a point of confusion for many folks we talk to so let's break this down a bit. Getting your DBA, incorporation, LLC, etc. or obtaining a domain name DOES NOT qualify as use in commerce. Making a sale in at least 2 states DOES qualify as use in commerce.

"Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. If you have already started using the mark in commerce, you may file based on that use."

This was discussed in detail in my post about specimens - read further here.

2) Intent to Use

"Applicants who have not yet used (in commerce that can be regulated by Congress) the mark they wish to register may file a trademark application under this filing basis."

This one's easy to understand -- if you haven't used the mark at all OR if you've only made sales within one state, you'll file as an Intent to Use.

One important note: the USPTO will NOT register the mark until the applicant "begin(s) actual use of the mark in commerce and file an Allegation of Use."

More details to come...

What You Don't Want to See

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.

* Abandonment:

"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."

* Canceled:

"trademark registration is no longer viable. It may be due to the registrant's failure to file the required continued use affidavit under Section 8 of the Trademark Act, to a cancellation proceeding at the Trademark Trial and Appeal Board or to the outcome of a civil court action."

There's 3 main reasons a mark is canceled - (1) the applicant failed to file the necessary forms to keep the mark active; (2) the mark had been opposed lost to the 'other guy'; and (3) the applicant lost a civil court case and has to give up the name altogether.

* Expired:

No USPTO definition available.

If your status is expired, that means some necessary forms were never filed with the USPTO.

And Just What Does That Mean? Part One

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 application.

* Non-Final Action (E-)Mailed:

"an Office action letter that raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final Office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final Office action, the examining attorney will issue another non-final Office action that sets forth the new issue(s) and continues any that remain outstanding. Applicants must respond to non-final Office action letters within 6 months from the date they are issued to avoid abandonment of the application."

Once your application has been assigned to an examining attorney, the first step is for the examiner to review the application & should there be any issues with the application, an Office Action will be sent to the applicant. Since most folks now list an email address, your inbox is the place to look for it.

Segue: Once your application is filed, add the USPTO to your address book so as to avoid any messages getting trashed -- TEAS@uspto.gov is the email address you'll get your notice of filing from and then messages after that will be specific to your examiner's law office, so to be safe, accept any messages coming from uspto.gov

More definitions next week...

Do Your Due Diligence

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.

Here's what the USPTO says:

"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 receives notice that the affidavit or renewal application has been accepted."

I respectfully disagree with the USPTO's assertion to check your status every 6 months. While the entire registration process can be poky, it's better to stay more on top of your filing. At TradeMark Express we recommend to our clients that they check their status every two weeks to one month. This way if the USPTO had, for instance, sent you an Office Action that needed a response, you'll have plenty of time to deal with it.

To check your status, go here and enter your Serial Number. I'll devote tomorrow's post to defining common status descriptions.

What Will the USPTO do for You? (And What Won't They Do?)

YES YOU CAN!

Call them at (571) 272-9250 or (800) 786-9199 to request a status check of your Federal trademark application. Be sure to have your serial number handy.

You can also call either number to get general information about the trademark process.

NO YOU CANNOT!

USPTO employees are not able to:

"* 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."

How to Trademark Your Clothing Line

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