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.

Free Calendar of Bizarre Patents

PATEX Research and Consulting Ltd., a patent research firm based in Canada, has published a free calendar for 2008 of bizarre patents. Click here for your very own PDF copy.

Some of my favorites from the calendar:

October's helmet mounted pistol - takes hands free to a whole new level.

February's anti-eating face mask - uhm, I have no words for this one.



December's snake collar - for all your snake walking needs!

PATEX did a fantastic job with this calendar...hmm, perhaps a bizarre trademark calendar would be just as neat?

Also, I wanted to be sure to mention the site where I got these patent images from - Pat2Pdf.org. This site's really easy to use & doesn't require any plug-ins.

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.

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...

Do Your Due Diligence

Once your Federal trademark application is filed, it's on you, the applicant, to keep an eye on your status, any emails & any requests from the USPTO. Failure to do so could result in your application becoming canceled, so this is important.

Here's what the USPTO says:

"Trademark applicants and registrants should monitor the status of their applications or registrations in cases where a notice or action from the USPTO is expected. Inquiries regarding the status of pending matters should be made during the following time periods:

(1) During the pendency of an application, an applicant should check the status of the application every six months between the filing date of the application and issuance of a registration; and
(2) After filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, a registrant should check the status of the registration every six months until the registrant receives notice that the affidavit or renewal application has been accepted."

I respectfully disagree with the USPTO's assertion to check your status every 6 months. While the entire registration process can be poky, it's better to stay more on top of your filing. At TradeMark Express we recommend to our clients that they check their status every two weeks to one month. This way if the USPTO had, for instance, sent you an Office Action that needed a response, you'll have plenty of time to deal with it.

To check your status, go here and enter your Serial Number. I'll devote tomorrow's post to defining common status descriptions.

What Will the USPTO do for You? (And What Won't They Do?)

YES YOU CAN!

Call them at (571) 272-9250 or (800) 786-9199 to request a status check of your Federal trademark application. Be sure to have your serial number handy.

You can also call either number to get general information about the trademark process.

NO YOU CANNOT!

USPTO employees are not able to:

"* conduct trademark searches for the public;
* comment on the validity of registered marks;
* answer questions as to whether a particular mark or type of mark is eligible for registration;
* offer legal advice or opinions about common law trademark rights, state registrations, or trademark infringement claims; or
* aid in the selection of a private trademark attorney or search firm."

How to Trademark Your Clothing Line

As promised in this post, I'll explore what's acceptable as a specimen as it pertains to clothing.

When it comes to clothing, the best thing to send to the USPTO is either a tag or a label. This makes it clear that the name and/or logo is being used for a clothing line. The USPTO will no longer accept a picture of a, for instance, t-shirt with the name appearing only on the front. Those days are over.

Let's look at a few examples to illustrate this.

1) Your specimen can be a tag all on its own as seen here



2) Your specimen can be a tag that's attached and/or sewed into a garment as seen here



* Material on this site is provided for informational purposes only. All rights reserved by the respective trademark owners

A lot of us here at TradeMark Express have loved ones in Southern California & with all that's going on down there, well, talking about trademarks doesn't feel too important this week.

However, I did want to take advantage of this forum & share some links offering further information.

I've been glued to the LA Times Google map - it seems to be updated rather frequently.

The Google blog has a great list of the different fire maps available.

National Interagency Fire Center

The American Red Cross Safe & Well List

American Red Cross Donation page

Many, many good thoughts & wishes to all affected. Also, many, many, many THANKS to those helping down there.

Specimens: Not Just for Guys in White Coats Anymore

Picking up where we left off on Tuesday, I think it'd be a good idea to start with, well, starting. I recommend anyone looking into starting a clothing line to check out PowerHomeBiz's article about that very subject.

Okay, let's assume that you're at the trademark stage for your clothing line: you've had comprehensive research conducted; the analysis on the research has been done; and (yay!) your name is clear. Now the next step is filing for the Federal trademark.

Part of the USPTO application process involves sending the Federal government proof of how the mark is used whether it's used for goods or for services. The USPTO calls this the specimen.

I'll devote the rest of the post explaining specimens as a whole. Next week, we'll get into specimens as they pertain to the clothing industry.

Okay, first, what is a specimen? While it sounds very laboratory-ish, it's really not too complicated. Basically, the USPTO needs to see a real-world example of how your mark is used for the goods and/or services.

If you're selling goods (aka products), the specimen must be "a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods."

If you're selling services, the specimen must be "a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services."

For either goods or services, it must have two important things: (1) the mark and (2) it's gotta be OBVIOUS what the goods and/or services are just by looking/reading the specimen.

Let's look at some examples to illustrate this:

1) You've got a name & a logo that you're using for your cosmetics line. To provide proof to the USPTO of your mark's use, you could submit a picture of a tag that's attached to a tangible product. Take a look at Sephora's specimen, which illustrates this perfectly.

2) You've got a name that you're using for your online retail store services. To provide proof to the USPTO of your mark's use, you could submit a screen shot of your web site. Take a look at Amazon.com's specimen.

Trademark Your Clothing Line

Easily one of the biggest industries we serve over at TradeMark Express is the clothing industry. Because of that, I thought it was high time to devote a few posts to the different facets of filing for a trademark for your clothing line.

The first subject should definitely be explaining what branches of intellectual property are available for the various items that typically make up a clothing line.

Copyrights, specifically a Visual Art Works filing:

Any artwork/images displayed on the garments themselves, e.g. front of a t-shirt
Fabric designs
Patterns for sewing
Weaving or lace designs

Trademarks:

The name of your clothing line
The logo for your clothing line

I'll get into further detail about these subjects as well as others that are particular to clothing in the coming days.

If you have a specific question you'd like answered about trademarks & the clothing industry, please feel free to contact me via email

Intellectual Property News

Trademarks

Gigantic Goes After MDC's We Are Gigantic For Trademark Infringement
Why Two Museums Are Now Going at It Hammer and Tongs

Copyrights

U.S. Appeals Court Hears Copyright Infringement Lawsuit Against Beyonce
RIAA Awarded $222,000 from First Individual Copyright Infringment Trial

Patents

Court seems to favor TiVo in patent battle
U.S. Patent Office Hopes 5-Year Plan Will Fix Application Backlog

Read more about trademarks here.

How to Protect Your Great Idea

It is not possible to protect ideas but rather the representation of that idea. To protect an original invention OR a significant improvement to an existing product, a patent would be filed. Click here for the USPTO's definition.

NOLO is a great, free informational site. Also, be sure to read what else the USPTO (United States Patent & Trademark Office) has to say about patents.

Associations may be a good avenue to explore. These organizations will address many of the thoughts, questions and concerns you'll inevitably have as well as many you haven't anticipated yet.

International Federation of Inventors' Associations
United Inventors Association
Directory of Local USA & Canada Groups

Research, research, research – this cannot be stressed enough. Read as much as you can. Check out the Amazon Widget to the right for recommended books. There are plenty of free informational resources out there.

Check out these articles:

Patent – How to Get One by Michael Russell
Invented Something? Get a Patent by Thomas Choo
How to Select a Patent Attorney by Lisa Parmley
How to Patent Your Invention by Neil Armand Can You Start Selling Your Invention Before Patenting It? by Xavier Pillai
Invention Help…Don't Get Scammed! by Emmet Press
Inventors: Make Sure Your Invention is a Success! by Lisa Parmley

Any Sims ® Fans Out There?

Looks like we'll have yet another expansion pack to look forward to - The Sims Carnival.

Electronic Arts ® has filed a Federal trademark application with the USPTO for what looks to be the seventh expansion pack in the popular series. The application was filed on September 14th, 10 days after the release of the latest expansion pack Bon Voyage.

Exciting Changes at TradeMark Express

There have been a number of changes at TradeMark Express lately that I wanted to take this opportunity to detail them here for our blog readers.

First, we dropped our fees $50 on August 14^th from $600 to $550. This is our first price reduction in 15 years! I want to reassure our clients & potential clients that a price drop does not mean a drop in services by any means. Our clients are getting the same great service they've been getting since 1992 – comprehensive research, analysis, referral to a trademark attorney and preparation & submission of their Federal trademark application. We were able to justify and absorb that price drop by streamlining some of our internal processes so who better to pass that on to than our clients!

Second, we implemented a payment plan program. TradeMark Express® understands the many expenses new business owners face; we also know how necessary comprehensive research and analysis is prior to filing. To help our clients, we have three different payment options:

$550 Our Best Deal!
$285 per month for two months = $570
$195 per month for three months = $585

Third, before TradeMark Express® conducts the comprehensive research, we will do a FREE check for the exact name at the USPTO. If there is a Conflict, we will call to inform you so you may provide us with your 2nd choice name.

That's the latest on what's going on with TradeMark Express. If you have any questions about anything outlined here, please feel free to contact me via email.

What is a Trademark Conflict?

What is a Trademark Similarity?

Comprehensive trademark research consists of several layers:

• Researching comprehensive databases, such as Lexis-Nexis or Dialog
• Looking for similarities, such as synonyms, word placement & spelling variations
• Consultation with a trademark attorney if Conflicts or Strong Similarities arise

The hardest matter to determine is what's going to be a potential problem for you and what isn't. Once that is ascertained, further research into the company or companies is needed.

First, let's discuss the difference between conflicts and strong similarities.

What is a Conflict?

Determining a conflict is very simple - it's any mark that is EXACTLY like yours. If the name AND the goods/services are EXACTLY the same, then it's a Conflict.

What is a Strong Similarity?

These are harder to determine and require analysis. A Strong Similarity is a name that is similar enough in Sound, Appearance or Meaning to be confusingly similar to the average consumer. Here are some examples to aid you:

Joe has a pending Federal trademark for his auto detailing service called It's in the Details. Becky wants to call her new auto detailing service, It is the Details. They are both offering the same service and their trade areas cross. This is a Strong Similarity, based on Sound & Appearance and Joe's pending Federal application.

Mary has a Federally registered trademark for her clothing line, Scary Mary's Apparel. Dan wants to use the name Mary Frightful Wear for his clothing line. This is a Strong Similarity, based on Meaning & Mary's Federal registration.

Sam has a California state registered trademark for his restaurant, Crabtastic Eats! and has no plans to expand outside of the state and primarily serves locals. Hannah's restaurant, Crabtastic, is located in Maine. She also has no plans to expand outside of the state and primarily serves locals. This is NOT a Strong Similarity based on their different trade areas.

Lorena's online payroll service, Pay Up, has been in use for 15 years and has clients across the country. Gene wants to start an online payroll service called Wage Wizard. Neither of them have trademarks. This is NOT a Strong Similarity based on the dissimilarity in the names.

Two important notes:

It's crucial that comprehensive research be conducted in order to decide if the name is truly available or not. Free preliminary sites found on the web are a great place to start but please be aware that this is merely scratching the surface of what's out there.

Determining what is a conflict or a strong similarity requires experience and it is very easy to over or under-react to marks you've found. If you're vacillating about any marks, contact a trademark research firm or an attorney for further consultation.

USPTO Putting on an Expo

"The United States Patent and Trademark Office (USPTO) will host a showcase for trademarks at its Alexandria, Virginia headquarters April 10-12, 2008. The three day event is designed to engage the public’s interest and educate consumers about the vital role trademarks play in the global economy. Any company with a registered trademark may apply to exhibit. The deadline for applications is December 15, 2007."

Want to sign up to be considered? Click here

Read more about the expo here

Read more about trademarks here

We'll Be Back Soon

Work has been very busy as of late so unfortunately, our blog's one of the first things to be shoved to the back burner. But we will be back soon!

Trademark News

Google Ad Trademark Suit Dismissed

Hanes Sues American Apparel

Lulu Hates Hulu

Read more about trademarks here.

Need Something to do While at Work?

Check out PC Magazine's Top 100 Undiscovered Web Sites. It's chock full of really handy sites, some you may even use FOR work.

How do I Trademark a Domain Name?

The process for filing for a trademark for a domain name is similar to any other name in terms of comprehensive research and analysis being a necessity.

Comprehensive research consists of looking at marks that are similar in Sound, Appearance or Meaning in the pending & registered Federal AND State trademark files as well as the US National Common-Law files.

There is one big caveat when it comes to trademarking domain names and it has to do with usage of the domain name.

"A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier," so says the USPTO. Okay, but what does that mean?

Basically, as long as your domain name is the name of your product and/or service, it's likely registrable. Let's look at some examples to illustrate this:

Example: Our primary domain name is www.tmexpress.com but the name in which we conduct business is TradeMark Express, therefore our Federal trademark registration is for TradeMark Express and not our domain name.

Example: The online seller, Amazon.com, has a Federal trademark registration for Amazon.com because it's the name under which they conduct business.

If you're not sure about your domain name, please email me and I'd be happy to assist you further.

Trademark News

Google Sued for Trademark Infringement by American Airlines Over Sponsored Ads

L’Oréal Cleared of Trademark Infringement

Read more about trademarks here

How do I Trademark a Slogan?

Here's another question from one of our readers:

Shannon ....

I'm a book author, and I came up with a very 'catchy' slogan to be used in future advertising campaign.

What steps do I need to take to trademark and/or copyright this slogan so that it is exclusively mine??

Alan Roger Currie Author, "Mode One: Let The Women Know What You're REALLY Thinking"

Thanks for your question Alan!

First, it's not possible to copyright a slogan.

Copyrights can be obtained for things of an artistic nature. This includes, of course, poetry, films, sculptures, music, fiction, etc. But can also include things that may not necessarily seem "artistic" in the general sense of the word. Copyrights can also be obtained for advertising copy, games, software programs and blueprints, to name just a few.

It may be possible to file for a trademark for the slogan as long as it's used to indicate & identify the source of goods/services.

If we're talking about a merely informational slogan or a slogan that conveys advertising information, it's not eligible for trademark registration.

Click these links to see what the USPTO has to say:

Slogans or Words Used on the Goods
Slogans, Refusal Based on Descriptiveness
Matter that Does Not Function as a Service Mark

Hope that helps Alan!

Any other questions, please email me: by clicking here OR comment below.

Read more about trademarks here

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 Video

I ran across this video on YouTube & thought I'd share it with my readers. Enjoy!

One More Democratic Candidate Trademark Filing

Picking up where we left off from , let's take a look at trademark filings that are using the names of the other Democratic candidates.

One problem...

The only other one I could find is for John Edwards & this mark IS connected with Senator Edwards:

John Edwards President, Serial Number 78291084.

On February 8th of this year, the USPTO sent an Office Action to the Attorney of Record. And, I've got to say, this is the first time I've ever seen something like this:

"The application had been misplaced; on behalf of the Office, the examining attorney apologizes for any inconvenience this delay may have caused."

On September 17th, CNN & YouTube will be hosting the Republican debates. I'll visit this topic again for those folks.

Read more about the trademark application process here.

Looking at the Democratic Candidates Through a Trademark Lens

I, like many others, watched The CNN YouTube Debates last night & I thought it'd be interesting to see what kind of registered/pending trademarks are out there using the names of the Democratic candidates.

Let's start with the two candidates that we seem to hear about the most.

Barack Obama:

These are, from what I can tell, NOT affiliated with Obama or his campaign.

I Back Barack, Serial Number 77035991 & applied for by James R McDonald.

Mr McDonald was sent a refusal citing "Registration is refused because the proposed mark consists of or comprises matter which may falsely suggest a connection with U.S. Senator Barack Obama. Although not connected with the services applicant intends to provide under the proposed mark, the name BARACK is so famous that consumers would presume a connection with Senator Obama."

No Drama with Obama, Serial Number 77153329 & applied for by Sylvia Quarles

On May 10th of this year, Quarles received "The examining attorney refuses registration because the mark consists of or comprises matter which may falsely suggest a connection with the individual Barack Obama."

Seeing a trend here?

Hillary Clinton

These mark is, from what I can tell, NOT affiliated with Clinton or her campaign.

Statue of Hillary, Serial Number 76163132 & applied for by DareCloud Development Inc. This mark was filed for the sale of "figurine statues of the Statue of Liberty with the likeness of Hillary Clinton."

This application is abandoned & while the materials are not available online since the mark is so old, I have a pretty good guess as to why this mark never made it to registration.

Interestingly enough, I also came across a trademark filing that Clinton filed for the Heifer Project International for Good Neighbor to the World when she was a partner at the Rose Law Firm.

Read more about the other types of refusals the USPTO can hand down.

The USPTO Got Served

Four lawyers and/or inventors are suing the US Government "over their appointment of an unqualified 2nd in command to the critically important Patent and Trademark Office."

Do you need a patent or a trademark?

Resources for Inventors

I was watching American Inventor last night and I realized I hadn't yet done a post for inventors. Has anyone seen this show? I'm consistently bowled over by these folks that have spent THOUSANDS of dollars on their inventions & then walk in with prototypes made of wood, PVC pipe, coat hooks, etc. & it got me wondering where did all that money go??

By the time the episode got to the middle-aged gentleman that had the cake cutter, I think I got my answer. One of the judges asked where he had spent the $30 some thousand dollars (of his retirement!) and he replied that he paid a company to conduct a patent search, file it & help him create it. ding ding ding - bells went off for me at that point.

I'm the first to admit that my knowledge of the entire scope of the patent process is minimal. I understand the concepts & some terms, basically bits and pieces. That being said, I cannot endorse or denounce any particular invention company but I thought it'd be a good idea to post some resources for all those inventors out there.

About.com has a great resource about how to avoid invention company scams.

They also have a very helpful checklist to use when speaking to an invention company.

Michael S. Neustel founded the National Inventor Fraud Center, Inc..

Check with the Federal Trade Commission to see if a company has been investigated or fined; enter the word INVENTION in the search box.

And, then the big patent daddy, the USPTO should definitely be visited.

Trademark News

Well, it's been quite awhile for an update - my apologies to my readers. Business has been good, obviously, so unfortunately my blog has been in the back of the back burner. I know I've got some questions to answer for folks & I promise to do so ASAP.

Here's what's going on in the world of trademark news:

Doc Wins Preliminary Injunction for Cookie Diet

Fifa Applies for 2010 Trademark Control

Dykes on Bikes is Inoffensive, says the USPTO

Small Business Owner Wins $15 Million from Land O'Lakes

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