Occupy Trademark

The Occupy Wall Street movement has moved into the trademark arena with a number of new trademark application filings.

There are currently two filings for Occupy Wall Street both of which were filed on the same day:

* Occupy Wall Street, which appears to be owned by those directly involved with the movement.
* Occupy Wall Street, which is owned by Fer-Eng Investments, LLC. "Fer-Eng Investments appears to be a shell corporation with the only officer named as “The Ferraro-Eng Family Trust.” The names provided on the address refer to Vincent Ferraro and Wee Nah Eng. Interestingly enough, Ferraro, a Stanford Business School grad, is the former Vice-President of Worldwide Marketing for Hewlett-Packard"

Now, those affiliated with the movement filed as in-use so Fer-Eng's intent-to-use filing will likely not end well.

The two latest to jump into the trademark pool are:

OCCUPY Las Vegas
Occupy Los Angeles

The LA mark filed for "political action committee services, namely, promoting the interests of Occupy Los Angeles in the field of politics" whereas the Las Vegas mark filed for clothing.

In a Las Vegas Review Journal interview, Mary Underwood (the protester who filed the application) stated ""This way we can make the argument that they are harming our brand...This is just a bulwark against people using the term in sketchy ways."

Underwood said she doesn't intend to restrict use of the term by people from the Occupy Las Vegas site and has plans to turn over the trademark to whatever entity develops to represent Occupy LV."

I'm sure this won't be the last of the Occupy trademarks. My bet is on parody marks next.

What do you think of these filings? Is it hypocrisy, as some have opined? Or is the movement coalescing in order to protect their voice?

Ch-Ch-Changes Coming to the USPTO Filing System

Starting November 19th, the USPTO is instituting several changes to their TEAS or Trademark Electronic Application System. Nothing too major really. Here are some highlights:

1) "Applicants will have the opportunity to list multiple email addresses" -- there can only be one primary email and any others are to be considered "courtesy emails."

2) "Sound/motion/multimedia files (.wav, .wmv, .wma, .mp3, .mpg, or .avi formats, not exceeding 5 MB in size for audio files and 30 MB for video files) may be filed directly as part of the form" -- this is going to apply for new applications only.

3) There will be a new voluntary amendment form available for "dba" applicants to ensure that section is filled out correctly.

4) "Links for Trademark Information Network “how-to” videos incorporated into appropriate sections of the forms (e.g., at applicant section, drawing section, goods/services section)."

The last point, actually, makes me a bit concerned in that this may provide people a false sense of security when it comes to filing trademarks. There are just so many variables for each and every application that generalized instructions may lull folks into a false sense of complacency. I'll take a look at these videos once they launch and write up reviews for our TradeMark Express blog readers.

Here's the entire press release. Any other changes stand out to you?

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What a Tweeting Mess!

Back in August, I posted about Twitter filing for the mark Retweet. The USPTO has since sent Twitter's legal counsel an Office Action suspending Retweet's application based on prior filings. However, let's take a closer look at these filings & perhaps we can figure out where Retweet is going to end up - abandoned or a real, live Federal trademark.

Here's what the USPTO is telling Twitter:

"Although the examining attorney has searched the Office records and has found no similar registered marks which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 77724346, 77802071, 77797006, 77697186, 77749897, 77746004, 77725866, 77701645, 77695071...

Action on this application will be suspended pending the disposition of these application upon the applicant’s response to the office action."

Wooo, that's a whole lot of sevens! Okay, let's look at each one, in order...

TweetLaw is currently suspended pending the outcome of Tweet, which is owned by Twitter.

tweetdealz is currently suspended pending the outcome of a whole lot of filings, which includes Tweet.

TweetTV is currently suspended pending the outcome of quite a few filings. And yup, Tweet is one of them.

Cotweet is being published for opposition. This filing went to publication on the 3rd of this month. So far, no oppositions have been filed. If no oppositions are filed, this filing will move to registration.

TweetNetworking is currently suspended pending the outcome of 7 filings, which include Tweet.

tweetworking is also suspended because of other filings. And guess what? Tweet is in the mix.

TweetDeck is suspended because of Tweet.

tweetPhoto has filed using Twitter's pretty distinctive looking bubbly blue font but their refusal has to do with descriptiveness: "The relevant definition of ‘tweet’ is “[a]n entry posted on the microblogging service Twitter.” See attached. The relevant definition of ‘photo’ is “photograph.” See attached. Thus, the term ‘tweetphoto’ means an entry posted on Twitter to which a photograph is attached."

TweetMarks looks pretty to good to go except the USPTO is waiting for clarification on a specimen from them. They have until December 9th of this year to respond or the mark becomes abandoned.

Wowza. Okay, let's take a step back & look at these filings. A good chunk of them are suspended based on Twitter's filing for Tweet so let's look at that filing:

"Action on this application will be suspended pending the disposition of Application Serial Nos. 77695071, 77697186, and 77701645 upon receipt of the applicant’s response resolving the following."

TweetMarks, CoTweet, and tweetPhoto are the marks mentioned. Look familiar?

So what do you think the outcome of Retweet or Tweet will be?

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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 variation on my name and receive registration? This question is a bit trickier to answer so let's go over a couple of scenarios to make things a bit clearer.

Example One:

You have a name for your clothing line called Love Letters* and you're not yet in business. You've done your due diligence and had comprehensive research conducted. After learning the name is clear, a trademark application is filed. A couple of weeks later, another company files for LuvLetterz* for clothing & they are also not yet in business. This would likely not go through for a couple of reasons - (1) the similarity in Sound, Appearance and Meaning is very strong between the two names, (2) the industry is common and (3) you filed first.

Example Two:

Let's use the same scenario as above in terms of your company name. Now let's say another company files for Letters of Love* for a line of stationery goods. As long as there are no pending or registered trademarks, the USPTO would likely allow this mark. The main reasoning is that the clothing and paper goods industry are dissimilar enough as not to cause customer confusion. In other words, someone looking for a t-shirt is not going to go to a stationery store and vice versa.

If you have an example you'd like me to analyze, please post a comment here.

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* No claim is made to the ownership, knowledge or liability of the above company names. The above examples are merely for informational purposes and should only be seen as such.

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.

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.

When Applications Go Wrong

Elaborating further from this post, let's take a look at an incorrectly filed application, which will show why correct application preparations are so advantageous to applicants.

On January 17th, The TNG Group submitted an application for La Bella Belly Maternity. You can view the record here.

Mistake #1

Comprehensive Research Appears to Have Been Skipped

A quick search for La Bella for clothing wielded no results - that's good. However, a quick search for Bella for clothing did show two registered marks, both Bella & both owned by Color Image Apparel, Inc. The records can be viewed here and here.

Now La Bella Belly Maternity and the logo may be distinctive enough to bypass a refusal from the USPTO. Only time will tell...

Mistake #2

Goods Description

The application is filed for International Class (IC thereafter) 25, namely, "Maternity Apparel, Accessories and Spa Services" & there are a couple of mistakes going on here:

a) There are 2, if not 3, different classes listed here.

Clothing or apparel is in IC 25, so that's correct.

The word accessories is vague & the applicant could mean anything from belts or scarves(IC 25) to purses or diaper bags(IC 18) to, given the customer, baby bottles or pacifiers (IC 10).

Spa services could either be in IC 43 (Spa services, namely, providing temporary accommodations and meals to clients of a health or beauty spa) OR in IC 44 (Day spa services, namely, nail care, manicures, pedicures and nail enhancements -- to name one).

La Bella Belly has only paid for 1 classification, which means if they want to pursue those other classes, an additional $325 per class must be paid to the USPTO.

b) The actual descriptions are incorrect:

"Maternity apparel" should be written as, for example, "maternity clothing, namely, shirts, shorts, pants, [and on & on with ALL of the items within the line]..."

The USPTO does not like words like accessories, products, etc. The applicant will have to be specific.

Since spa services can fit into 2 different classes (see above), further information will be needed.

Mistake #3

Description of Mark

While the description on the application ("The mark consists of La Bella Belly is green. Maternity is also green. Logo (pregnant lady) is also green. Green used for all words and Logo is R 138 Hue 90 G 219 Sat 127 B 158 Lum 168") makes sense to the applicant, it's not what the USPTO is looking for for that section.

A more appropriate description would be: "Stylized lettering of La Bella Belly Maternity displayed in green and appearing to the left of a shadow/silhouette of a pregnant woman, which is also displayed in green."

That description provides a visual image of what the mark looks like, which is what the USPTO requires.

Mistake #4

The specimen provided by the applicant is appropriate for the spa services but not for the other classifications, which means if the clothing & whatever the accessories end up being are pursued, new specimens will have to be submitted.

Now the last 3 mistakes can easily be corrected & it's my guess that the USPTO will be sending out an office action to the applicant in the next coming months requesting these changes. What this means is adding on even more time to the year it already takes the USPTO to grant registration. The similar marks, for clothing, may present more of a hiccup to the applicant.

I hope this post & Friday's post have really shown how important comprehensive research & correct application preparation is to each & every applicant. Given that about 1000 applications are filed every day, please be sure to have your work done right the first time.

O Romeo, Romeo

Picking up from yesterday's post, I thought it'd be a good idea to show how truly important comprehensive research is BEFORE filing for a trademark.

On January 17th, Mr. Percy Miller filed an intent to use application for ROMEO for clothing. You can view that record here.

On January 4th, Koehler Companies Inc. filed an intent to use application for ROMEO for clothing. You can view that record here.

Going by just the filing date, it certainly appears that Koehler's mark will have precedence and the USPTO may just rule that way.

However, looking further at Miller's record shows that the applicant has two other registered marks: Registration Number 2971373 for P. Miller Romeo AND Registration Number 3068538 for Lil Romeo. Both of these marks are registered for the clothing class.

Also, Percy Miller is known by his stage name, Romeo (formerly Lil Romeo) and is fairly well known.

Only time will tell how the USPTO handles the two Romeos but my bets are on Percy for 2 main reasons:

1) He has 2 prior registrations for close variations of Romeo for clothing.
AND
2) He's well known by his artist name and may be able to show that as a result his marks are 'famous.'

Now, when Koehler filed on the 4th, there was no possible way they'd be aware of the January 17th filing for ROMEO. However, had comprehensive research been conducted, P. Miller Romeo and Lil Romeo, surely would have popped right up. Which is not to say that Koehler didn't have comprehensive research conducted.

Had any client come to us looking to trademark ROMEO for clothing we'd have easily found those other 2 filings & noted them as a possible problem.

What Happened at the USPTO on...

Christmas?


58 new filings on Xmas

New Year's Eve?


562 -- seems folks were staying in

and on New Year's Day?


55 -- and were taking it easy

These 3 snapshots make a great point: trademarks don't take a day off. Even on holidays, folks out there are filing for trademarks.

Now, let's take a look at any old average day at the USPTO. Last Wednesday, the 16th:


1100! That's quite the jump.

Hundreds even thousands of marks are being filed every day and I hate to speculate but I'm almost positive that most of those marks that are owned by smaller businesses or by individuals are not doing their due diligence in researching their marks or having the application completed properly. I'll devote a couple of more posts elaborating on these points.

Side note: The most interesting sounding mark out of the bunch, in my little opinion, is Serial Number 77-359209 for the Unsinkable Betsy Ross.

Trademark Application Timeline, Take Two

Federal Trademark Application Timeline, Intent to Use Application

For In Use applications, read this post.

Step 1: File

Assuming you've had all your comprehensive research completed & the name is clear, the first step is to file the application. The application is available online through the USPTO. TradeMark Express includes preparation & submission as part of our package.

Step 2: Receive a Filing Receipt

The day the application is filed, the USPTO will email you a confirmation that the application is received. This receipt includes your serial number, the filing date and a summary of the application.

How Long? Should be same day. If you do NOT receive a filing receipt the same day, contact the USPTO at TEAS@uspto.gov

Step 3: Assigned to Examiner

An examiner is "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." This will be the individual you'll correspond with about your application during the registration process. See this post for further details.

The time periods for the rest of this process are going to vary so the following are approximations...

How Long? About 3 months, though could be sooner or later.

Step 4: Examination Begins

Your examining attorney will review your application & should any issues arise that need to be dealt with will come via email in an Office Action. Office Actions can be comprised of a number of things. Some of the most common issues are a disclaimer is needed, a re-wording of the goods/services description is needed and the mark is refused based on likelihood of confusion, which is why you have comprehensive research done first to ensure that this doesn't happen. See this post for further details.

How Long? Anywhere from 1-3 months seems to be the average length of time it's taking the examining attorneys to send out Office Actions. This can be shorter if the application is filed correctly from the get go.

Step 5: Notice of Publication

Provided that there are no objections from the examining attorney and/or you've responded to their Office Actions satisfactorily, the application then moves to publication. Publication is in the Daily Gazette, a USPTO online publication and is for 30 days. "Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose."

After this, as long as no one files an objection to your application, you will move into a holding period, then receive your Notice of Allowance.

One important note: This is the BLACKOUT PERIOD - do not file your Amendment to Allege Use/Statement of Use. You'll have to wait until the publication period is over.
How Long? You should expect your Notice of Allowance approximately 8 weeks after publication.

Step 6: Notice of Allowance Issued

"Written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration."

This is when the clock starts ticking & applicants should be very diligent on keeping things up to date. You'll have 6 months from the date the NOA is MAILED to contact the USPTO with either a Statement of Use or a Request for an Extension of Time (gives you another 6 months to file the Statement of Use).

Step 7: Registration

Once the publication period is over, the mark becomes registered. You'll also be assigned a registration number.

All in all, it could take a year (if there are no issues) to a year & a half (if there are hiccups like Office Actions) to be granted registration for an in use application. However, be rest assured that the USPTO does take note of your pending application. If a filing comes in AFTER your application, they will know that you were first in line.

Trademark Application Timeline, Take One

I spent a few posts detailing the various pieces of virtual paper it takes to get and keep a trademark this week. But I thought it'd be a good idea to detail a timeline of the trademark application process.

Federal Trademark Application Timeline, In Use Application

Step 1: File

Assuming you've had all your comprehensive research completed & the name is clear, the first step is to file the application. The application is available online through the USPTO. TradeMark Express includes preparation & submission as part of our package.Step 2: Receive a Filing Receipt

The day the application is filed, the USPTO will email you a confirmation that the application is received. This receipt includes your serial number, the filing date and a summary of the application.

How Long? Should be same day. If you do NOT receive a filing receipt the same day, contact the USPTO at TEAS@uspto.gov

Step 3: Assigned to Examiner

An examiner is "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." This will be the individual you'll correspond with about your application during the registration process. See this post for further details.

The time periods for the rest of this process are going to vary so the following are approximations...

How Long? About 3 months, though could be sooner or later.Step 4: Examination Begins

Your examining attorney will review your application & should any issues arise that need to be dealt with will come via email in an Office Action. Office Actions can be comprised of a number of things. Some of the most common issues are a disclaimer is needed, a re-wording of the goods/services description is needed and the mark is refused based on likelihood of confusion, which is why you have comprehensive research done first to ensure that this doesn't happen. See this post for further details.

How Long? Anywhere from 1-3 months seems to be the average length of time it's taking the examining attorneys to send out Office Actions. This can be shorter if the application is filed correctly from the get go.

Step 5: Notice of Publication

Provided that there are no objections from the examining attorney and/or you've responded to their Office Actions satisfactorily, the application then moves to publication. Publication is in the Daily Gazette, a USPTO online publication and is for 30 days. "Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose."

After this, as long as no one files an objection to your application, you will move into a holding period, then finalization for registration, then registration. 

How Long? This process should take approximately 12 weeks.

Step 6: Registration


Once the publication period is over, the mark becomes registered. You'll also be assigned a registration number.

All in all, it could take a year (if there are no issues) to a year & a half (if there are hiccups like Office Actions) to be granted registration for an in use application. However, be rest assured that the USPTO does take note of your pending application. If a filing comes in AFTER your application, they will know that you were first in line.

Hut 8, Hut 9, Hut 15!

I haven't a clue if I used the correct football reference but let's go with it because it fits with the subject of this post. :)

I've been talking about the various application forms it takes to get your trademark registered but what about when it is registered?

A trademark can be owned indefinitely as long as the applicant stays on top of all the various forms the USPTO requires.

First up is the Section 8 Declaration of Continued Use -

Here's the USPTO's definition:

"a sworn statement, filed by the owner of a registration that the mark is in use in commerce...It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 1) At the end of the 6th year after the date of registration...AND 2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration."

This is a form letting the USPTO that you're still actively using the mark. Basically, this is a sort of weeding out process if you will. Trademarks MUST be used in order to keep their registration.

Two deadlines for this form: (1) between the 5th & 6th year from the date of registration, e.g. your mark became registered on October 31, 2002 so that means your Section 8 is due anytime between October 31, 2007 to October 31, 2008. (2) by the end of a 10 year period after the date of registration, which includes the FIRST 10 year anniversary, even though you'd have just filed it four years prior.

Section 9 Renewal Application -

Again, from the USPTO:

"a sworn document, filed by the owner of a registration, to avoid the expiration of a registration. Federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods...The §9 Renewal Application may be filed one year prior to the registration expiration date or during the 6-month grace period immediately after the date of expiration. If the §9 Renewal Application is not filed or is filed after the grace period ends, the registration will expire.

Because the due date of the 10-year §8 Declaration coincides with the due date of the §9 Renewal Application, the USPTO created a form entitled "Combined Declaration of Use in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9"

This one's easy to get. The Section 9 is the application to renew your mark for another 10 years. And since the due date coincides with the due date for the Section 8, you can file just one form for both.

Section 15 Declaration of Incontestability -

From the USPTO:

"a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming 'incontestable' rights in the mark for the goods/services specified. An 'incontestable' registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions...

Filing a Section 15 Declaration is optional. However, there are certain rules governing when one may be filed...The §15 Affidavit must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15."

Okay, a couple of things here - your mark has to be on the Principal register; you've got to wait until the 5 year mark from registration; and again, the due date coincides with the Section 8, so you can file one form for both.

TradeMark Express offers preparation & submission services for all of the above forms.

Statement of Use/Amendment to Allege Use for Intent-to-Use Application

Picking up from yesterday's post, let's get further into the additional forms attached to filing an Intent to Use application.

Once the Intent to Use application is filed, the USPTO will move ahead with the filing process as normal but once all the various red tape has been cut, they will need to hear from you that you're using the mark in commerce.

You let them know you're using the mark in commerce by either filing a Statement of Use or an Amendment to Allege Use. Now, it sounds confusing but this is essentially the same form - the only difference being as to the time when it's filed.

Amendment to Allege Use:

This is "a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With the AAU, the owner must submit one specimen showing use of the mark in commerce for each class of goods/services included in the application, and the required fee.

...must be filed before the date the examining attorney approves the mark for publication in the Official Gazette."

Statement of Use:

"sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce...must be filed within 6 months from the date the USPTO issues a notice of allowance. Failure to submit the statement of use in a timely manner results in abandonment of the application."

So the big difference here is that the Amendment to Allege Use is filed BEFORE publication and the Statement of Use is filed AFTER the Notice of Allowance is received.

Publication? Notice of Allowance? Huh? Here are the definitions for each but I'll be sure to devote another post to the application time line.

Publication:

"If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette.

The USPTO will send a Notice of Publication to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose."

Notice of Allowance:

"Written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration.

Notices of allowance are only issued for applications that have been filed based on 'intent to use'. The notice of allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a statement of use. After receiving the Notice of Allowance, the applicant must file a statement of use or a request for an extension of time to file a statement of use within 6 months from the issue date of the notice. If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use, the application will be abandoned."

"What the world really needs is more love and less paperwork."

True words, Pearl Bailey, but when it comes to trademarks, paperwork is the fuel that keeps the trademark machine running.

I'll devote a few posts to the different types of filings the USPTO requires. That being said, let's start at the beginning.

Trademark/Servicemark Application, Principal Register:

"Use this form to file an initial application for either a TRADEMARK for "goods" AND/OR a SERVICEMARK for "providing services" -- this form is appropriate for both."

As the USPTO does, we'll use the term trademark to denote both types of marks. When applying for registration for your trademark, this is the application you'll start with.

Provided within quotes is straight from the USPTO & my explanations are underneath. Within this application, there are two routes you can go:

1) Use in Commerce

"For the purpose of obtaining federal registration, 'commerce' means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. 'Use in commerce' must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark."

Basically, this means that if you're claiming the mark is in use in commerce, you're telling the USPTO that the mark is actually being used either across state lines or between the US & another country.

This is a point of confusion for many folks we talk to so let's break this down a bit. Getting your DBA, incorporation, LLC, etc. or obtaining a domain name DOES NOT qualify as use in commerce. Making a sale in at least 2 states DOES qualify as use in commerce.

"Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. If you have already started using the mark in commerce, you may file based on that use."

This was discussed in detail in my post about specimens - read further here.

2) Intent to Use

"Applicants who have not yet used (in commerce that can be regulated by Congress) the mark they wish to register may file a trademark application under this filing basis."

This one's easy to understand -- if you haven't used the mark at all OR if you've only made sales within one state, you'll file as an Intent to Use.

One important note: the USPTO will NOT register the mark until the applicant "begin(s) actual use of the mark in commerce and file an Allegation of Use."

More details to come...

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.