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Showing posts from November, 2007
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 tradem…
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 empl…
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.&quo…
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 appl…
"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…
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.…
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…
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…
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



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