How to do an Effective Preliminary Trademark Search

Before filing for a trademark, comprehensive research is needed to ensure that the name you want to use is legally available. This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files.

However, before having comprehensive research conducted, it is advised that folks take advantage of as many free resources as possible. You can find a listing of sources to check out here. Now let's discuss how to conduct the most efficient preliminary search possible.

Let's say you have a clothing line geared towards women and you want to call it Heroine Next Door. Click on New User Form Search (we'll delve into the other 2 options next month).



Type in the name Heroine Next Door into the Search Term box. Be sure that Plural and Singular & Live and Dead are checked. Also ensure that you're searching for Combined Word Mark. Click Submit Query.



This will result in 0 hits but do not be fooled into thinking that your preliminary work is done. Once you've done the exact name search, it's time to expand your mind about your name. What are all of the possible variations to the name that could be seen as confusing? Here's a partial list:

HeroineNextDoor
Next Door Heroine
NextDoor Heroine
NextDoorHeroine
Heroine Neighbor
Hero Next Door
etc., etc.

And there we go – Hero Next Door, Serial Number 78776159 is a pending mark for, in part, a shirt line. While it's not the exact same name, it is strongly similar and likely similar enough that the average consumer would correlate the two. Now you know it's best to leave your heroine next door.

Let's just assume you weren't blocked at this stage. Now is the time to get into variations of spelling and synonyms. Here's another partial list:

Heroin Next Door
Heroyne NextDoor
Next Door Goddess
etc., etc.

What does a USPTO Search Look Like?

When an applicant submits a Federal trademark application, there is a timeline that's followed. Anywhere from 4-7 months after filing, the USPTO will conduct a search of their own records to look for any marks that may be conflicting to yours.

Let's look at ISHINE again, which was filed for floor finishing preparations. Here's what the USPTO Search Summary looks like:

*i$sh{"iy"}n*

*sh{"iy"}ne* or *sh{"iy"}ny* or *sh{"iy"}ni*

Okay, so that's confusing looking, right? Let's define the $ symbol & the * symbol before we dive into the search strategies:

• The $ symbol definition: Matches zero or more continuous characters. The $ truncation operator can be used in any search field to represent 0, 1, or more than one character other than a blank space character.
• The * symbol definition: Matches zero or more continuous characters. The * is a more efficient truncation operator for left and/or right truncation.

To understand the difference between the two:

*wonder* results in 1279 hits whereas $wonder results in 808 hits.

Now let's break down each search strategy:

*i$sh{"iy"}n*

The front and back asterisk symbols means any instance of those letters in that order will pop up, regardless if it's at the beginning of a word (e.g. ishine), the middle of a word (e.g. silvershine), the end of a word (e.g. finishing) or as separate words (e.g. ice shine, which blocked this mark).

One important note, you can see that the USPTO limited the vowel characters between the letters H and N to just find the letters I or Y. This means that the USPTO didn't look for marks like ishone. Since shone is an inflection of shine, that mark would be relevant.

*sh{"iy"}ne* or *sh{"iy"}ny* or *sh{"iy"}ni*

The concept is similar to the above. The main difference is that the USPTO added three different vowels to the end and dropped the letter I at the beginning. This results in marks such as shine, shyny, shining, etc. As you can well imagine, this resulted in a large number of hits – 2,595 to be exact. The USPTO then narrowed it by International Classification, which resulted in 926 hits.

Lastly, they narrowed it by the goods description. Interestingly enough, they only used two words to describe the goods – floor or floors. 46 hits were the result here. The limitation of the goods description is also troublesome. What about all the types of flooring that are out there? For instance, if there was a mark with a similar name who had filed as "hardwood finishing preparations" or "laminate finishing" it would not have come up during the USPTO's search.

The Problem with the USPTO: Flaw #3 – Meaning

The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Meaning mean? And how does the USPTO search engine fail in this respect?

"Similarity in meaning or connotation is another factor in determining whether there is a likelihood of confusion between marks. The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademark" Click here to read more.

The USPTO provides an example of CITY WOMAN (clothing) being refused because it's likely to be confused with CITY GIRL (also clothing), in terms of meaning. It's reasonable for the average consumer to believe these marks are related as woman and girl both describe a female person. Since it's for clothing, it's very easy to see how one could assume City Woman is a line of women's clothing whereas City Girl is a line geared towards young girls or teens.

Flaw #3, Meaning:

That being established, let's do a search using the USPTO search engine. A search for CITY WOMAN brings up 20 marks, one of them being the now abandoned CITY WOMAN in question.

But it does NOT bring up CITY GIRL.

So let's say CITY WOMAN was your mark & you conducted a search at the USPTO. You even searched variations, like City Women (no Girls here), Cities Women (no, not there) and City Lady (nope & now City Womanl doesn't even show up). You'd mistakenly think that the name was available.

Here's one example of why comprehensive research is important.

Click to read about the Sound flaw. Click to read about the Appearance flaw.

The Problem with the USPTO: Flaw #2 – Appearance

The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Appearance mean? And how does the USPTO search engine fail in this respect?

"Similarity in appearance is one factor in determining whether there is a likelihood of confusion between marks. Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words." Click here to read more.

The USPTO provides an example of TRUCOOL (a synthetic coolant) being refused because it's likely to be confused with TURCOOL (cutting oil), in terms of appearance. Now these marks are decidedly different but the fact that the goods are similar & the marks' APPEARANCE is very close, a refusal was issued.

Flaw #2, Appearance:

That being established, let's do a search using the USPTO search engine. A search for TRUCOOL brings up 3 marks, one of them being the now abandoned TRUCOOL in question.

But it does NOT bring up TURCOOL.

So let's say TRUCOOL was your mark & you conducted a search at the USPTO. You even searched variations, like TrueCool (no TURCOOL here), Tru Kool (no, not there) and Troo Cool (nope & now TruCool doesn't even show up). You'd mistakenly think that the name was available.

Here's one example of why comprehensive research is important.

Click to read about the Sound flaw. Click to read about the Meaning flaw.

The Problem with the USPTO: Flaw #1 – Sound

The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for. This month's newsletter will be about the 3 fatal flaws of the USPTO search engine.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Sound mean? And how does the USPTO search engine fail in this respect?

"Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks. There is no 'correct' pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark. Therefore, 'correct' pronunciation cannot be relied on to avoid a likelihood of confusion." Click here to read more.

The USPTO provides an example of ISHINE being refused because it's likely to be confused with ICE SHINE, in terms of sound. The sound similarity and the common goods description (floor finishing preparations) are the 2 main factors that warranted a refusal.

Flaw #1, Sound:

That being established, let's do a search using the USPTO search engine. A search for ISHINE brings up 3 marks, one of them being the now abandoned ISHINE in question.

But it does NOT bring up ICE SHINE.

So let's say ISHINE was your mark & you conducted a search at the USPTO. You even searched variations, like EyeShine (still no ICESHINE), I Shine (no ICE anywhere) and AyeShine (no dice on the ICE). You'd mistakenly think that the name was available.

Here's one example of why comprehensive research is important.

Click to read about the Appearance flaw. Click to read about the Meaning flaw.

What does it take to get a Filing Date?

There are a variety of different dates for any given Federal trademark application – filing date, status date, publication date, first use date, first use in commerce date and registration date. I'll devote a few posts to each one.

Let's start with the first date you'll receive once the application is filed – the filing date.

Here's what the USPTO says about this:

"In an application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, the filing date of an application is the date on which all the elements set forth in 37 C.F.R. §2.21(a) (see TMEP §202) are received in the United States Patent and Trademark Office (“USPTO”)."

What?

Let's simplify this paragraph. For any applicant claiming foreign priority or foreign registration, you'll be filing under §44. The rest will be §1, which is going to apply to most US-based applicants, especially small businesses and/or those just starting out.

Okay, so the application is filed but what does it take to receive that filing date? "All the elements [must be] set forth" – which means what? There are 5 areas that must be satisfied to receive a filing date from the USPTO:

(1) the name of the applicant;
Who is the owner of the trademark?

(2) a name and address for correspondence;
Who is the contact? What is the address?

(3) a clear drawing of the mark;
Okay, now it's getting a bit more complicated. When filing an application, the USPTO site generates this drawing. Whether or not it's going to be acceptable is dependent on what's submitted.
If you're filing just words, NO logo and NO stylized font, then a drawing of the mark will just be your name in plain text. Very simple. If you're filing words with a logo OR a logo alone, then a JPG image must be uploaded, which will then appear on the drawing. There are certain specifications, which I'll touch upon in a future post.

(4) a listing of the goods or services; and
What are you using the name for? What types of products or services? The USPTO is very picky about how this section is filled out.
They have a standard of acceptable identifications; the key is not only to fill out this section but fill it out correctly.

(5) the filing fee for at least one class of goods or services.
Last but not least, the money. We here at TradeMark Express always recommend filing the TEAS form, which is $325 per class. So the USPTO must receive at least $325. If you're filing in more than one class, it's $325 apiece.

And that's what it takes to get a filing date. This is NOT what it takes to become registered, that point should be made very clear.

Unsolicited Trademark Mailings: A Warning from INTA

When TradeMark Express started preparing and submitting Federal trademark applications for clients, we heard almost immediately about official-looking mailings they received requesting more money to either monitor their mark or to be listed in a "trademark registration directory." These unsolicited offers are in no way affiliated with the USPTO and therefore, do NOT require a response.

The appearance of these mailings is the first foot in the door of confusion. They often come on very official looking stationery; an invoice that looks very governmental in form and/or appears to be affiliated with a governmental entity.

Take a look at one of the examples INTA provides on their web site from the United States Trademark Protection Agency (USTPA – see what they did there?): PDF format - USTPA Example Mailing.

The only mailings any trademark owner should most definitely respond to are going to be those directly from the US Patent & Trademark Office. Also, any official USPTO email is going to come from addresses ending in uspto.gov

If you've received a mailing you're not sure about, please contact any of our offices for guidance.

Read the International Trademark Association's (INTA) full article here. A listing they identified of some of the companies who send out unsolicited mailings is also provided within the article.

Breaking Down the Code

Last month we took a quick look at how to conduct a logo search at the USPTO. This month let's look closer at the USPTO Design Code Manual.

All designs have a 6-digit code, which the USPTO assigns to each filed design. The design search code system is very Dewey Decimal-esque in that each 2-digit section denotes a specific category. Let's take a look at a couple of famous examples:

First two digits, the Category: 02 = human beings

Next two digits, the Division: 05 = children

Last two digits, the Section: 01 = heads, portraiture, busts of children not in profile

The Gerber baby logo is categorized as 02.05.01

Now let's look at a design that contains several codes. This will illustrate just how complex filing a trademark for a logo can be, in terms of researching a logo and providing the correct description on the application to the USPTO.

Mr. Peanut, the logo and mascot of Planters Nuts is categorized into SEVEN different design codes:

02.01.32 - Astronauts (men); Frogmen; Men, other, including frogmen, men wearing space suits and men wearing monocles; Monocles (men wearing)
02.01.34 - Monsters (not robots); Other grotesque including men formed by plants or objects
04.07.02 - Objects forming a person; Person formed by objects
05.07.05 - Nuts (edible), With shells
09.05.02 - Top hats
10.03.02 - Canes, walking; Shepherds crook (staff); Walking sticks and canes
16.03.08 - Contact lenses; Lenses, optical, and spectacle; Monocles

So you can see even a seemingly simple design, a peanut figure wearing a top hat, cane and monocle has a very complex design labeling assigned to it.

Please see here for further details about our Federal Design Trademark search services.

Starting a Business in Florida

Visit the Department of State's Starting a Business page. The Small Business Development Center is also a great resource.

1) Write a business plan

Here are a couple of posts I've devoted to this subject - Business Plans: A Quick Guide and Piecing Together the Business Plan.

The Small Business Administration has a handy page about writing a business plan.

2) Decide on a location

Sunbiz.org has a page devoted to selecting a location with handy links about demographics and economy.

3) Choose a business structure

First, read this great article on how to choose your business structure - click here to read PowerHomeBiz's Choosing Your Legal Structure.

Once you've done that go to the Division of Corporations site, which is where you can search and file corporations, LLCs, LLPs, fictitious names, etc.

4) Taxes

Read the Start-Up Kit for New Business Owners.

5) Licenses & Permits

Business license information can be found here.

Mention our blog & get $25 off of our Premium Package.

It's Graph Time Again!

As promised in this post, I'm revisiting the USPTO's Performance & Accountability Report.

I decided to take a look at the highest number of applications filed based on state residency. Here are the top 6 out of the 310,296 applications filed by residents of the US:

Now let's take a look at these same states to see how many made it to registration. This represents a portion of the 122,266 applications registered to residents of the US. Of course, there's going to be some rollover from those filed in 2006/registered in 2007 and those filed in 2007/registered in 2008 but this gives a pretty fair snapshot:

It still boggles my mind that such a large number of trademark applications are filed that NEVER make it to registration. This is why we always stress to our clients to stay on top of their trademark filings. The USPTO will not keep watch of your trademark; that's your responsibility. Also ensuring that the name is available in the first place will get you past the dreaded refusal Office Action.

Mention our blog & get $25 off of our Premium Package.

TradeMark Express Value Package

We've added a new option when it comes to getting your trademark. TradeMark Express will search your mark in the pending & registered Federal and State trademark files AND in the US National Common-Law files. Based on your approval, we will then prepare AND file your US Federal trademark application - all for one fee of $399. Order this package today!

HOW IT WORKS:

1) US Federal & State trademark research - TradeMark Express will search the pending AND registered Federal AND State trademark files in accordance with the USPTO's policy, namely looking for similarities in Sound, Appearance or Meaning. This involves searching synonyms, spelling variations, word placement, etc.

2) US National Common-Law research - TradeMark Express will search for commercial availability of the mark in numerous files. Businesses have "first use" or Common-Law rights to their trade names in whatever geographic trade area they serve. The US National Common-Law research will help you to determine if you face any trade restrictions.

Once both searches are completed, the entire report will be emailed to you. At this point, you'll need to read through the entire report to look for any conflicts or similarities.

Should any conflicts or similarities arise, you will need to discuss them with a trademark attorney. To upgrade this package, simply contact any of our offices and for an additional $101, TradeMark Express will analyze both searches and you'll be provided with a trademark attorney (nominal fee for West Coast attorney) to discuss the results.

TradeMark Express will also email you our Worksheet with the above research. Once you're ready for us to prepare & submit your Federal trademark application, complete the worksheet and send to our Arcata office. Once received, we will then prepare and submit your Federal trademark application.

The USPTO charges a fee of $325 per class, which is separate from TradeMark Express' fees.

Starting a Business in California

When starting a business in California, start your research at these two sites:

The California Business Portal & The Secretary of State's Starting a Business page.

On the SOS' page, you'll see the Secretary of State details 5 recommended steps:

1) Write a business plan

Here are a couple of posts I've devoted to this subject - Business Plans: A Quick Guide and Piecing Together the Business Plan.

The Small Business Administration has a handy page about writing a business plan.

2) Deciding on a location for your business

If you need assistance, check out the Labor & Workforce Development Agency's Business Investment Services page.

3) Choose a business structure

Entrepreneur has a great article on this subject, Choose Your Business Structure.

4) Taxes

Click here for those documents.

5) License & Permits

Check both of these sites: CalGOLD and the CA Department of Consumer Affairs.

The Secretary of State also has a listing of business resources - check here.

Fun With Graphs

Every year the USPTO publishes an online Performance and Accountability Report, which contains some pretty interesting statistics about patents & trademarks. I used this site to create a couple of graphs to provide a visual on these stats.

A 27% increase in 4 years is pretty significant. The increase every year goes to show how important folks are taking their trademarks & brand identity.

The above is a 5 year look at the number of registrations issued. As you can see, the number of applications filed versus those that move to registration differ greatly. This is going to be for a number of reasons -- refusals, abandonments, oppositions, etc.

Look at 2006 - 128,672 applications never made it to registration. Even if each one of those applications consisted of only 1 class filed, that's a total of $41,818,400. Let's even say that all 128,672 applications used TEAS Plus -- that's still a total of $35,384,800! That's staggering.

There's all sorts of statistics available so I'll be devoting a couple of more posts on the various findings.

Starting a Business in...

Being in the trademark biz, we get a lot of questions from folks about starting their own business in their state of residence. Admittedly, I don't know a lot of the ins & outs required for each state. I think it's high time I educated myself.

That being said, I'm going to dedicate a post a week to the various resources, steps & sites for each state. Once a week seems to be a good pace. I think anything more than that would make this blog a bit of a boring read.

Anyone have a state in mind they'd like to know more about? If so, leave a comment or email me at shannon@tmexpress.com

Logo Search: Trudging through the USPTO

Searching for designs on the USPTO site is a bit tricky. I'll explain it step by step.

First, go to this link. This is the searchable design search code manual. Type in simple keywords that describe your logo. For instance, typing in telephone brings up the 6-digit codes for telephones, telephone poles, answering machines, etc. Make note of all the 6-digit codes relevant to your logo.

Second, go to this link. This is the main trademark hub page. From here you'll see 2 columns. Look at the right hand side for a link that's titled Search. Click on that.

Now click on Structured Form Search (boolean). In the first search term box, type in the 6-digit code, no spaces & no dots. Change the field to Design Code. Stopping here will likely result in too many hits to look at so let's use the rest of the search boxes to narrow it a bit.

Change the operator to AND. In the next search term box, choose one keyword that describes your goods/services, e.g. clothing, software, etc. Change the field to Goods & Services. Now click Submit Query.

You should then see a listing of marks that you can view in more detail.

I've been in the trademark field for 14 years & I do not recommend that anyone conduct this logo search & consider themselves to be done. There are so many nuances within the USPTO as well as with trademarks in general that the likelihood of missing something is high. However, I feel the above provides a good snapshot of how involved searching logos can be & is a nice primer for those folks interested in protecting their logo.

You've got to keep the USPTO's guidelines in mind. Logos need not necessarily be exact to be considered a similarity. They take into consideration things such as similarities in Appearance or Meaning as well as similarity in industry. Your logo may look like one definite thing to you but you have to emotionally detach yourself from it & see all the inherent possibilities. It's those possibilities that will also have to be searched.

Copyrights & Trademarks: Do You Need Both?

Protecting the intellectual property aspects of your business is a worthwhile investment. However, it is difficult to know what form of intellectual property works for what facets of your business. Let's take the time to break all that down.

Copyrights:

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.

To protect text as it appears on advertising copy, speeches, pamphlets, brochures, online works, reports, etc. a Literary Works application would be filed.

To protect pictorial or graphic items such as technical drawings, posters, labels, games, etc. a Visual Art Works application would be filed.

Only a few items that could be protected by copyright are noted here so if you have other items in mind, please feel free to email me at Shannon@tmexpress.com and I can point you in the right direction.

Trademarks: A "registered trademark", or ®, refers to a name, slogan or logo that has been officially registered with the United States Patent and Trademark Office (USPTO). Registering a trademark is beneficial to a business because it publicly states that your trademark is registered with the USPTO and therefore, you have exclusive rights to that name within your industry.

Prior to investing your time, money & effort into a name, it is strongly advised that comprehensive research be conducted to ensure that the name you're interested in is truly available.

This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files. Then, if clear, you can decide if you would like to file for a Federal or a State trademark.

Mention our blog & get $25 off of our Research & Application Package.

Small Business Trademarks: Who Needs 'Em?

Anyone that's started a small business or is in the throes of starting a small business knows how overwhelming it can be just to get to opening day. You've got licenses & permits to think about, what sort of business entity structure is right, where the money is going to come from, and on and on. Phew! While it can almost be too overwhelming, your entrepreneurial drive and your passion for your business will get you through it.

Now when it comes to your business name, we can all agree that that's an important, if not the most important feature of your business. Your small business name is the face, if you will, of your products and/or services. It's how your customers will come to know you, how they'll get back to you and how they'll refer you to new customers.

Let's say you found the perfect name for your small business. What a lot of folks do at this point is usually a misstep – filing for a business entity under it, printing business cards, launching a web site, etc. There really is no point in investing in a business name until you know that the name is legally available.

If you had to change the business name AFTER you've done those things, you're losing on precious resources, such as time, money & effort.

So your first step after you've decided on your small business name is to research it to ensure that no one else had the same bright idea before you did. There's some preliminary research you should do; check this article for further details. Once it clears the preliminary stage, look into getting a comprehensive trademark search.

Now let's say your small business name has cleared the comprehensive search stage (yay!). Does your small business name need a trademark? Now being in the trademark business, you'd think our position would be why yes of course! However, filing for a trademark is not necessarily going to be the right fit for your business or plans. You'll have to decide that.

As long as no one has prior trademark or common-law rights to the name, you can operate with your common-law rights – thousands upon thousands of small businesses do this very thing.

One point to keep in mind is the importance of your name to your business identity. Let's look at some examples to illustrate further when a trademark is appropriate:

You're designing a clothing line and your logo/name combination is an integral part of your advertising campaign as well as appearing on all the tags and labels on the garments – your brand identity is important to your business so seriously consider filing for a Federal trademark.

You're opening a local tax preparation company and want to use a name that's somewhat generic, such as Tax Solutions -- since your use is local, a Federal trademark would not apply but a State trademark would. Also the name is pretty generic so trying to obtain exclusive rights to the name may not be possible.

Read more about the advantages to having a Federal trademark here.

Even if you decide that a trademark isn't for you, don't forget you still need a comprehensive search on the name.

US Patent & Trademark Office: Navigating the Web Site

Anyone that's had to slog through a governmental web site knows how confusing it can be at times. That being said, let's take a virtual walk together through the web site of the US Patent & Trademark Office.

Start at the home page.

You'll see a headline of sorts along with 3 columns of information. Left hand column are a series of links that drop down to show even more links – more about this to follow. The middle column is the site's top news with various headlines and blurbs. The right hand column are banner links that go to various pages/sites, such as the Department of Commerce, Kids' Pages, jobs at the USPTO, etc.

Left hand column – we're going to concentrate on 2 of the 13 available links.

Click on Patents – a drop down should open with a series of numbered links.

Let's take a look at a few a bit closer:

The very first link, not numbered, Patents main page takes you to the hub of the US patent universe. This is the main page where you can access all of the other related patent links.

Link #1 About Patents takes you right back to that main page, which is confusing. Ignore that. Instead from the main page, click on Basic Facts About Patents. This will give you a good idea of what a patent actually is.

Link #5 Search Patents takes you to the USPTO Patent Search page. From here you can search issued or published applications.

Link #6 File Online in EFS-Web takes you to the Patent Electronic Business Center. From here you can also search patents as well as file a patent application.

Back to the home page.

Link #1 Where Do I Start? is a great place to start. This page provides a pretty thorough road map of the trademark process.

Link #3 Search TM database takes you to the Trademark Electronic Search System. From here you can do a preliminary check of the Federal trademarks.

Link #4 File Online Forms goes to the Trademark Electronic Application System where you'd file a trademark application electronically.

Link #5 Check Status is the page every trademark owner should bookmark. This is where you can check your status using your Serial Number.

Link #6 View Full Files allows you to view all the associated documents with many of the Federal trademark filings. For instance, you can view your application or specimens. Also, if you receive an Office Action, a copy will be available here.

And there's a brief walk through of the most important patent and trademark links on the US Patent and Trademark Office web site. There are many more of course but the ones detailed above are those that will be most helpful to those starting the patent and trademark processes.

Viva Las Vegas

Photo Source

I've got Vegas on the brain as I'll be heading out that way tomorrow. As a result, the blog posts won't be happening again until next week when I come back, hopefully with a little more jingle jangle in my pockets.

So I thought I'd use Las Vegas as an inspiration point to check out some of the more interesting Vegas-tinged trademarks:

Dave's Fabulous Las Vegas Barbecue Sauce. The logo is a take off on the famous Las Vegas sign.

Erotic Suite Palms Las Vegas. The suite features a dancer's pole, a round bed & a $4000 per night cost.

What happens in VEGAS...Ends up on the Internet... is currently being opposed by the Las Vegas Convention and Visitors Authority based on their filing of What Happens Here, Stays Here, which is suspended pending the disposition of What Happens in Vegas Does Not Always Stay in Vegas & 2 marks for What Happens Here, Stays Here, which is the LV Convention & Visitors Authority mark.

Looking further into these marks is a bit like Alice falling into the rabbit hole:

What Happens in VEGAS...Ends up on the Internet is being opposed by What Happens Here, Stays Here, which is suspended pending the outcome of their other filing for What Happens Here, Stays Here, which is suspended pending the outcome of What Happens in Vegas Does Not Always Stay in Vegas AND their 2 other marks for What Happens Here, Stays Here, which is suspending pending the outcome of What Happens in Vegas Stays in Vegas, which is currently being opposed by...dun dun dun the owner of What Happens Here, Stays Here. PHEW, get all that?

Refusal on Basis of Ornamentation

I've devoted a few posts to the subject of trademarks and clothing lines but it wasn't until I was talking with a client yesterday that I realized I had answered the what but not the why.

I was explaining to the client that submitting a picture of a t-shirt with his clothing line name on the front would not suffice as proof of use for the USPTO. He then asked me why. After getting off the phone, I realized that while I had answered him I hadn't fully addressed it here.

The title of this post is the response you'd likely get from the USPTO if you submit a photo of a t-shirt with your name and/or logo displayed on the front.

What does refusal on basis of ornamentation mean exactly?

"Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans or other trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark"

Okay, let's explain that using non-legalese language. When an in use USPTO application is submitted, a specimen must also be filed.

For clothing, a lot of folks make the guess that submitting a picture of one of their t-shirts with the name on the front will work. And that does seem to make a lot of sense. But when it comes to trademarks, you've got to "identify and distinguish" your name to your clothing.

This means that your name must be on a tag or a label that'd be attached to a garment that identifies it as being the name of the line itself & not just part of the overall artwork applied to the front of the shirt.

If you've got a clothing line & aren't sure what would work as a specimen, feel free to email me at shannon@tmexpress.com & I'd be happy to go over your specific details with you.

How Slow Can the PTO Go?

I had intended the post for today to be a follow-up to these 2 posts:

O Romeo, Romeo & When Applications Go Wrong.

To sum up, these posts were about potential problems for the applications of Romeo & for La Bella Bella Maternity. And my intention had been to compare my predictions with how the USPTO interpreted the applications.

However, both of these applications have yet to be assigned to an examining attorney. Romeo filed on January 4th, which means it's been 72 days. La Bella Belly Maternity filed on January 17th, which means it's been 59 days.

Now, it's not news that the USPTO takes awhile to get things moving. But this lag in movement does go to show how vital it is to ensure that the name is legally available prior to filing.

Both of these marks have the potential of being refused for likelihood of confusion. Should that be the case, the USPTO will let the applicant know by way of an Office Action. Now, if either of these marks have to undergo a name change...well, that could've been avoided had research been completed first. Undergoing a name change months after time, effort & money has already been poured into a name is frustrating to say the least.

I'll devote another post to these 2 marks once their applications have moved to the next stage.

McCain Winning '08 Presidential Trademark Race

The presidential race is heating up and with any flurry of political activity comes an influx of trademarks hoping to capitalize on the nation's interest.

John McCain 2008 - The Exploratory Committee currently has two Federal trademarks, one registered & one pending, for "McCain Space" and "McCain." These applications were filed in January 2007 for, among other things, "promoting the public awareness of a candidate for election." A month later, Senator McCain announced on Late Show with David Letterman that he was seeking the nomination. It appears the trademarks were a harbinger of things to come.

Senator Clinton has been in the news recently about her use of "Solutions for America," which is a trademarked phrase owned by the University of Richmond. According to an article by Scott Jacshik of Inside Higher Ed, the university has "refused to answer any question about why the institution’s trademarked slogan was being used by the Clinton campaign and whether she had permission to do so."

Obama for America does have a pending Federal trademark for the logo associated with Senator Obama's campaign. The 9 different classes include such varied goods/services as golf balls, clothing, lapel pins, water bottles, fundraising, etc.

There are a number of sadly rejected trademark applications using some variation of a candidate's name. The refusals from the USPTO were "because the mark consists of or comprises matter which may falsely suggest a connection with the individual [candidate's name]."

Some examples of dead trademarks include "No Drama with Obama," "Hillary Clinton is Politically Incorrect" and "Bearack Obama."

Easily the most interesting, albeit confusing, is the filing for 08AMA for items like posters, campaign buttons, shirts, etc. What's puzzling is that the applicant does not seem to be affiliated with the Senator Obama campaign but rather is owned by FTK, a clothing store in Fresno, CA. The USPTO did question the applicant about the letters AMA, in particular if there was any significance as it pertained to the industry and/or goods listed on the application. The applicant responded that no significance existed, which the USPTO accepted. 08AMA is poised to become a Federally registered trademark.