Friday, June 13, 2008

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.
I
f 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.

Tuesday, June 10, 2008

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.

Monday, June 09, 2008

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

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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.

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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.