What is NOT a Trademark?

Now that we’ve determined what a trademark is, let’s get into more detail about what a trademark is not.

Here are just a couple of examples. If there's something that you're not sure can be protected by a trademark, shoot me a line: Shannon@tmexpress.com

1) Trade Name

It can be easy to confuse trademarks and trade names so let's get into some detail here. "The terms 'trade name' and 'commercial name' mean any name used by a person to identify his or her business or vocation," is the USPTO provided definition.

Now, a name can be both a trade name AND a trademark. The USPTO determines this based on the specimen.

Here are a couple of examples to illustrate this:

a) "It is our opinion that the foregoing material reflects use by applicant of the notation 'UNCLAIMED SALVAGE & FREIGHT CO.' merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof."

This means that Unclaimed Salvage & Freight Co. did not or could not show how that name was creating an impression outside of being just the name used to conduct their services.

b) "'LYTLE' is applied to the container for applicant’s goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression."

This means that Lytle Engineering & Mfg. Co. provided a specimen that clearly showed Lytle, alone, as being unique and distinctive from their trade name, Lytle Engineering & Mfg. Co.

2) Ideas

When folks call asking how to protect their ideas, they're talking about this definition: "any conception existing in the mind as a result of mental understanding, awareness, or activity." This is worth noting because many people express confusion over the concept of ideas when it comes to intellectual property.

Let me provide a couple examples I've heard over the years.

a) "I've got this idea for a clothing line and want to protect it." Now clothing is clothing; there's really nothing new there. Yes, patterns can be unique from one designer to another. If that's the case, look into copyrights.

However, 9 times out of 10, what the person is really saying is that they have an idea based around a brand. This typically means they have a name & logo, which falls into the trademark category.

b) "I've got an idea for a new product." This as well as ideas to significantly improve an existing product is more than likely going to fall into the patent category.

Intangibilities cannot be protected but the various representations of your ideas may be protected be it with a patent, a trademark, a copyright or a combination of two or more.

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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...