IP Webinar Series: December 9-11th

"The Minority Business Development Agency (MBDA) and the U.S. Patent and Trademark Office (USPTO) will co-host a free webinar series to help business owners understand the intellectual property process, starting on Tuesday, December 9.

Register today!

This three-part webinar series will provide participants with insightful tips for success on getting a patent or registering a trademark or copyright."

The trademark webinar takes place on December 11th, 1pm-2pm EST. Register here.

I'll be there so "see" you on-line!

Trademark Question From a Reader

"If I have an agreement as an exclusive distributor of a product, and the product name was in use prior to my agreement, but not trademarked, can I apply for and receive a trademark for the product name."

Sincerely, Jerry

Thanks for your question Jerry!

Yes, a trademark does grant a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.

However, it sounds as if Common-Law rights are going to be at play here. So, even if the manufacturer does not have a trademark, they are still going to have Common-Law rights to the name.

Here's what the USPTO has to say: "Where the mark is used by a related company, the owner is the party who controls the nature and quality of the goods sold or services rendered under the mark. The owner is the only proper party to apply for registration."

Hope that helps Jerry!

Any other questions out there? Please email me at shannon at tmexpress dot com.

Read more about trademarks here

Trademark:
International Classes

Trademark offices around the world use an international classification system to categorize various products and services. When filing a trademark, a class number is assigned according to the goods/services description portion of the application. Many countries base their trademark filing fee on the number of classes filed, the US being one of them.

Over the next couple of weeks, I'm going to take the time to explore a number of these classes a bit further in hopes of providing further insight.

Let's start with the newest kids on the block, International Class numbers 43, 44 and 45. It all starts out very Nice (a little trademark humor for you…*sigh* ;) yeah, yeah I know).

The Nice Classification is based on a multilateral treaty administered by WIPO. This treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks

And that's the longwinded way of saying that most trademark offices around the world have agreed upon one classification system for products and services.

In 2002 the 8th edition of the Nice Agreement came out, which consisted of a restructuring of International Class 42, the class formerly known as "services that cannot be classified elsewhere." It now goes by the moniker "Scientific and technological services and research" – more about that at a later date.

Another effect of this Agreement was the creation of the 3 aforementioned classes.

International Class 43 aka Food and drink services

This class, obviously, contains your restaurants, bars, coffee shops, etc. But it's also the classification for hotels, day care centers, "providing a database in the field of recipes and cooking information" and the like.

044 aka Medical and veterinary services

Health care & veterinary services but also hair styling, garden care, massage and nail salons

045 aka Personal and Social services

Adoption services, foster care, guardianship, etc. are in this class. But there are also services such as house sitting, hotel concierge services (note how it's not in the same class as hotel services), pet sitting and real estate settlement services.

Just this past January a 9th edition of the Nice Agreement was put into force – no new classes but a shifting around of certain products & services happened. To read further, click here.

TradeMark Express Blog Schedule

Summary of all International Classifications
Trademark Information

How to Know When to Trademark Your Logo

I got a really great question from a reader in response to my first call for questions:

"I have a product that I want to market and have a name. I do not yet have a mark for this product but want to protect the name. Do I file intent to use and can I do that without having the actual mark?"

There's two distinct questions here – (1) the use of Intent-to-Use & (2) adding a logo after the fact.

(1) Intent-to-Use Trademark Applications: I will definitely dedicate a more detailed post to these two types of applications but to sum it up…

A mark, be it a name, logo or slogan, must be in use in at least 2 states OR between the US & any foreign country in order to obtain Federal trademark registration. However, an applicant can file the mark even if they're only doing business in one state OR not in business at all.

There is a hiccup in filing an Intent-to-Use application in that the USPTO is going to need to know that the mark is being sold across state lines or in another country. This requires another form, a $100 and a specimen.

(2) Adding a Logo to Your Trademark Application:

The USPTO is vague & clear about this matter in a way that really only the Federal government could be:

"The examining attorney will determine whether any proposed amendment of the mark is acceptable. A change is not acceptable if it materially alters the character of the mark. The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark."

Eh, what? Okay, so basically, if you intend to add anything at all to your trademark application AFTER it's been filed, it has to be something very, very slight. For instance, you may be able to delete generic or descriptive words from your filing.

But, of course, the USPTO has a caveat about that too: "For example, the deletion of the generic name of the goods or services would not generally constitute a material alteration, unless it was so integrated into the mark that the deletion would alter the commercial impression."

So, in a long winded way, it's probably not possible to add a logo to a pending application as the addition of the logo will more than likely "materially alter" the mark. But as with most trademark issues, it's recommended that you consult with a trademark company or attorney about your specifics.

TradeMark Express Blog Schedule

Trademark Application FAQ
What good is a logo anyhow?

Generic Names

Scott Allen posed a very interesting question in response to this post. Here's what Scott's wondering:

"How can you go about protesting a first use claim if you're not the one making the claim of prior use, but you simply have material knowledge of it (heck, so does Google) and don't want to see a generic word hijacked as a mark? Last August, it seems that Learn.com filed a trademark on the word "webinar" claiming first use in commerce June 6, 2000. Now I know for a fact that the word was used in commerce before that, because my company was using it, and we borrowed the term from WebEx. I did some searching on Google (webinar + 1999) and quickly found several more examples, including a couple from my employer at the time. I hate to see generic words hijacked like this (familiar with Entrepreneur Media?). What can be done about this?"

Great question, Scott. The USPTO is actually quite good at catching these marks at the gate. For instance, the example you bring up is a perfect case in point. On January 9th of this year, the USPTO issued a refusal based on that the mark is merely descriptive. It's now on the applicant to submit evidence & arguments supporting their rights to registration.

It's my understanding that only those who "believe that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board." As far as what the USPTO defines as "damage" – hmm, any ideas out there?

A great lesson here for anyone that coins a catchy name or term is to trademark that sucker right away. A good example of this is mobisodes ®,which is a registered trademark owned by Twentieth Century Fox.A Google ® search pops up 43,900 hits on this term. Now, of course, it's on Fox to protect their trademark

Hope that answers your question Scott! Let me know if I can answer anything else for you!

• What factors should be considered in choosing a strong trademark?
• What are some common causes that the USPTO would refuse a trademark?

trademark * trademark information * generic trademarks * trademark questions * webinar