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Showing posts from January, 2009
The Change Message

President Barack Obama's message of change has been a constant since he announced his candidacy on the steps of the Old State Capitol building in Springfield, IL. And on January 20, 2009 a huge change in the face of politics happened.

The President's theme has inspired folks all around the world. It's even made it's way into the world of trademarks.

A mere 2 days after the inauguration, 562 Media Inc., a marketing and design firm, filed for, which will be "a website that gives users the ability to make donations for charity"

And just yesterday, 3 more applications were filed using change as a central word in their marks.

Erasoul Enterprise filed for Embrace Change in 3 different classes, namely, the jewelry, houseware and clothing classes.

Dreams for Kids Inc, a children's charity, filed for We Are the Change, which is a youth leadership program.

Hubbell Inc, the international manufacturer, filed for CreateChange for "ene…
Specimens of Use for Service Marks

I’ve detailed the concept of specimens before but it’s a good idea to get into details about specimens as they apply to service marks.

The simplest explanation is that the USPTO wants something that clearly shows the mark (i.e. the name, the name & logo, etc.) AND something that once read it is obvious what services are being offered.In regard to service marks, this is accomplished in one of two ways: advertising or performing. Okay, so advertising – that’s pretty easy to understand, right? Brochures, yellow page ads, flyers, billboards, etc. In terms of providing a specimen showing the mark “as used in the course of performing services,” examples are best to illustrate this concept.

1) provides online retail services for a large number of goods. They provided a screenshot of their home page. Check it out here.

2) Starbucks provides coffee shop services and provided a picture of one of their coffee shops as a specimen. You can see it here
What is NOT a Service Mark? Now that we’ve determined what a service mark is, let’s get into more detail about what a service mark is not.

There are 5 examples the USPTO provides and it’s my guess that these are often filed for accidentally. I know at TradeMark Express we’ve received questions about all 5 of these “services.”

1) Contests and Promotional Activities

Now you’d think that contests and promotions are obviously services, right? It is a real activity and is done for the benefit of others. But it fails the 3rd test in that it’s not necessarily distinct from the primary services. Contests and promotions are typically just tools of advertising. There is an exception which is that if the contest or promotion goes “above and beyond what is normally expected of a manufacturer in the relevant industry.”

For example, “clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing.…
What is a Service Mark? While the USPTO does use the term trademark to denote businesses offering goods or services, there is a distinction between a trademark and a service mark. To be clear, there is no difference between trademarks or service marks when it comes to needing comprehensive research or filing a Federal application. All of that remains the same.For the most part determining if you’re offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel is technically a trademark while tax preparation is a service there H&R Block is technically a service mark. There are plenty of companies that have both. Nike, for one, offers a line of branded goods as well as retail store services.Where folks get confused when it comes to service marks is mistaking ideas or concepts for services. Let’s take a look at the USPTO’s criteria for determining what is or isn’t a service mark.1) Service must be a real activity.The best way to explain this is t…
Guess the Logos, part 2

Okay, so I think I made Friday's test a bit too hard. Let's try this again. Guesses go in the comments section.

The first person to guess all 7 receives $50 off of our Premium Package.

Guess the Logos

Here's a fun to-do for Friday. The following image is an amalgamation of six famous logos. Can you guess them all? Answer in the comments.

The first person to guess all 6 receives $50 off of our Premium Package!

14:59 and counting...

While I hesitate to add fuel to the fire that is the Joe the Plumber phenomenon, I figured since he's been in the news (again) this week that it'd be interesting to check out what's going on in the trademark world in terms of the name.

Back in 1996, the name Big Joe the Plumberwas filed for plumbing services. The name has been in use since 1916 and is based out of Illinois.

Fast forward 12 years and we've got that phrase saturated into the 2008 political season. As with any pop culture/political phenom, there are folks looking to capitalize on it.

October 12th - Wurzelbacher asks Obama about his tax plan
October 15th - McCain uses the phrase "Joe the Plumber"

October 20th - the USPTO receives the first application for Meet Joe the Plumber
October 21st - two more applications come in, both for clothing
October 28th - three applications filed, 2 for plumbing services and 1 for chicken (I'm confused too). This is also the same day Wurzelbacher …
How many names should I trademark?

A common question we here at TradeMark Express get is should variations on a name also be filed for trademark registration. For example, if your business name is Fly RIght, should variations such as Flies Right, Fly Write, etc.* also be filed? Another example is the singular vs plural variations on a name.

Simply put, no, filing these variations are not necessary. Basically, you should file the name as you use it or as you intend to use it. One of the reasons behind registering a trademark is having exclusive rights to your mark within your industry.

Also, the USPTO requires that a specimen be filed in order to obtain trademark registration. The mark as displayed on the specimen must match exactly to the mark displayed on the application. Therefore, filing variations is pointless as you will not be able to prove to the USPTO that you are actively using those variations.

Now the 2nd part of that common question is - does that mean another party can file a…
Current Filing Fees at the USPTO

There's a number of forms and fees that must be filed in order to keep & maintain your trademark. It's advised that you keep yourself up to date on these fees during the life of your trademark. Prior to filing a necessary form, check this link to ensure that you'll have the necessary funds in time.

Application for registration, per international class (electronic filing, TEAS application) 325.00Filing an Amendment to Allege Use under §1(c), per class 100.00
Filing a Statement of Use under §1(d)(1), per class 100.00

Filing a Request for a Six-month Extension of Time for Filing a Statement of Use under §1(d)(1), per class 150.00
Application for renewal, per class 400.00

Filing §8 affidavit, per class 100.00

Filing §15 affidavit, per class 200.00