Copyrights & Trademarks: Do You Need Both?

Protecting the intellectual property aspects of your business is a worthwhile investment. However, it is difficult to know what form of intellectual property works for what facets of your business. Let's take the time to break all that down.

Copyrights:

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.

To protect text as it appears on advertising copy, speeches, pamphlets, brochures, online works, reports, etc. a Literary Works application would be filed.

To protect pictorial or graphic items such as technical drawings, posters, labels, games, etc. a Visual Art Works application would be filed.

Only a few items that could be protected by copyright are noted here so if you have other items in mind, please feel free to email me at Shannon@tmexpress.com and I can point you in the right direction.

Trademarks: A "registered trademark", or ®, refers to a name, slogan or logo that has been officially registered with the United States Patent and Trademark Office (USPTO). Registering a trademark is beneficial to a business because it publicly states that your trademark is registered with the USPTO and therefore, you have exclusive rights to that name within your industry.

Prior to investing your time, money & effort into a name, it is strongly advised that comprehensive research be conducted to ensure that the name you're interested in is truly available.

This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files. Then, if clear, you can decide if you would like to file for a Federal or a State trademark.

Mention our blog & get $25 off of our Research & Application Package.

Small Business Trademarks: Who Needs 'Em?

Anyone that's started a small business or is in the throes of starting a small business knows how overwhelming it can be just to get to opening day. You've got licenses & permits to think about, what sort of business entity structure is right, where the money is going to come from, and on and on. Phew! While it can almost be too overwhelming, your entrepreneurial drive and your passion for your business will get you through it.

Now when it comes to your business name, we can all agree that that's an important, if not the most important feature of your business. Your small business name is the face, if you will, of your products and/or services. It's how your customers will come to know you, how they'll get back to you and how they'll refer you to new customers.

Let's say you found the perfect name for your small business. What a lot of folks do at this point is usually a misstep – filing for a business entity under it, printing business cards, launching a web site, etc. There really is no point in investing in a business name until you know that the name is legally available.

If you had to change the business name AFTER you've done those things, you're losing on precious resources, such as time, money & effort.

So your first step after you've decided on your small business name is to research it to ensure that no one else had the same bright idea before you did. There's some preliminary research you should do; check this article for further details. Once it clears the preliminary stage, look into getting a comprehensive trademark search.

Now let's say your small business name has cleared the comprehensive search stage (yay!). Does your small business name need a trademark? Now being in the trademark business, you'd think our position would be why yes of course! However, filing for a trademark is not necessarily going to be the right fit for your business or plans. You'll have to decide that.

As long as no one has prior trademark or common-law rights to the name, you can operate with your common-law rights – thousands upon thousands of small businesses do this very thing.

One point to keep in mind is the importance of your name to your business identity. Let's look at some examples to illustrate further when a trademark is appropriate:

You're designing a clothing line and your logo/name combination is an integral part of your advertising campaign as well as appearing on all the tags and labels on the garments – your brand identity is important to your business so seriously consider filing for a Federal trademark.

You're opening a local tax preparation company and want to use a name that's somewhat generic, such as Tax Solutions -- since your use is local, a Federal trademark would not apply but a State trademark would. Also the name is pretty generic so trying to obtain exclusive rights to the name may not be possible.

Read more about the advantages to having a Federal trademark here.

Even if you decide that a trademark isn't for you, don't forget you still need a comprehensive search on the name.

US Patent & Trademark Office: Navigating the Web Site

Anyone that's had to slog through a governmental web site knows how confusing it can be at times. That being said, let's take a virtual walk together through the web site of the US Patent & Trademark Office.

Start at the home page.

You'll see a headline of sorts along with 3 columns of information. Left hand column are a series of links that drop down to show even more links – more about this to follow. The middle column is the site's top news with various headlines and blurbs. The right hand column are banner links that go to various pages/sites, such as the Department of Commerce, Kids' Pages, jobs at the USPTO, etc.

Left hand column – we're going to concentrate on 2 of the 13 available links.

Click on Patents – a drop down should open with a series of numbered links.

Let's take a look at a few a bit closer:

The very first link, not numbered, Patents main page takes you to the hub of the US patent universe. This is the main page where you can access all of the other related patent links.

Link #1 About Patents takes you right back to that main page, which is confusing. Ignore that. Instead from the main page, click on Basic Facts About Patents. This will give you a good idea of what a patent actually is.

Link #5 Search Patents takes you to the USPTO Patent Search page. From here you can search issued or published applications.

Link #6 File Online in EFS-Web takes you to the Patent Electronic Business Center. From here you can also search patents as well as file a patent application.

Back to the home page.

Link #1 Where Do I Start? is a great place to start. This page provides a pretty thorough road map of the trademark process.

Link #3 Search TM database takes you to the Trademark Electronic Search System. From here you can do a preliminary check of the Federal trademarks.

Link #4 File Online Forms goes to the Trademark Electronic Application System where you'd file a trademark application electronically.

Link #5 Check Status is the page every trademark owner should bookmark. This is where you can check your status using your Serial Number.

Link #6 View Full Files allows you to view all the associated documents with many of the Federal trademark filings. For instance, you can view your application or specimens. Also, if you receive an Office Action, a copy will be available here.

And there's a brief walk through of the most important patent and trademark links on the US Patent and Trademark Office web site. There are many more of course but the ones detailed above are those that will be most helpful to those starting the patent and trademark processes.

Viva Las Vegas

Photo Source

I've got Vegas on the brain as I'll be heading out that way tomorrow. As a result, the blog posts won't be happening again until next week when I come back, hopefully with a little more jingle jangle in my pockets.

So I thought I'd use Las Vegas as an inspiration point to check out some of the more interesting Vegas-tinged trademarks:

Dave's Fabulous Las Vegas Barbecue Sauce. The logo is a take off on the famous Las Vegas sign.

Erotic Suite Palms Las Vegas. The suite features a dancer's pole, a round bed & a $4000 per night cost.

What happens in VEGAS...Ends up on the Internet... is currently being opposed by the Las Vegas Convention and Visitors Authority based on their filing of What Happens Here, Stays Here, which is suspended pending the disposition of What Happens in Vegas Does Not Always Stay in Vegas & 2 marks for What Happens Here, Stays Here, which is the LV Convention & Visitors Authority mark.

Looking further into these marks is a bit like Alice falling into the rabbit hole:

What Happens in VEGAS...Ends up on the Internet is being opposed by What Happens Here, Stays Here, which is suspended pending the outcome of their other filing for What Happens Here, Stays Here, which is suspended pending the outcome of What Happens in Vegas Does Not Always Stay in Vegas AND their 2 other marks for What Happens Here, Stays Here, which is suspending pending the outcome of What Happens in Vegas Stays in Vegas, which is currently being opposed by...dun dun dun the owner of What Happens Here, Stays Here. PHEW, get all that?

Refusal on Basis of Ornamentation

I've devoted a few posts to the subject of trademarks and clothing lines but it wasn't until I was talking with a client yesterday that I realized I had answered the what but not the why.

I was explaining to the client that submitting a picture of a t-shirt with his clothing line name on the front would not suffice as proof of use for the USPTO. He then asked me why. After getting off the phone, I realized that while I had answered him I hadn't fully addressed it here.

The title of this post is the response you'd likely get from the USPTO if you submit a photo of a t-shirt with your name and/or logo displayed on the front.

What does refusal on basis of ornamentation mean exactly?

"Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans or other trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark"

Okay, let's explain that using non-legalese language. When an in use USPTO application is submitted, a specimen must also be filed.

For clothing, a lot of folks make the guess that submitting a picture of one of their t-shirts with the name on the front will work. And that does seem to make a lot of sense. But when it comes to trademarks, you've got to "identify and distinguish" your name to your clothing.

This means that your name must be on a tag or a label that'd be attached to a garment that identifies it as being the name of the line itself & not just part of the overall artwork applied to the front of the shirt.

If you've got a clothing line & aren't sure what would work as a specimen, feel free to email me at shannon@tmexpress.com & I'd be happy to go over your specific details with you.

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.

McCain Winning '08 Presidential Trademark Race

The presidential race is heating up and with any flurry of political activity comes an influx of trademarks hoping to capitalize on the nation's interest.

John McCain 2008 - The Exploratory Committee currently has two Federal trademarks, one registered & one pending, for "McCain Space" and "McCain." These applications were filed in January 2007 for, among other things, "promoting the public awareness of a candidate for election." A month later, Senator McCain announced on Late Show with David Letterman that he was seeking the nomination. It appears the trademarks were a harbinger of things to come.

Senator Clinton has been in the news recently about her use of "Solutions for America," which is a trademarked phrase owned by the University of Richmond. According to an article by Scott Jacshik of Inside Higher Ed, the university has "refused to answer any question about why the institution’s trademarked slogan was being used by the Clinton campaign and whether she had permission to do so."

Obama for America does have a pending Federal trademark for the logo associated with Senator Obama's campaign. The 9 different classes include such varied goods/services as golf balls, clothing, lapel pins, water bottles, fundraising, etc.

There are a number of sadly rejected trademark applications using some variation of a candidate's name. The refusals from the USPTO were "because the mark consists of or comprises matter which may falsely suggest a connection with the individual [candidate's name]."

Some examples of dead trademarks include "No Drama with Obama," "Hillary Clinton is Politically Incorrect" and "Bearack Obama."

Easily the most interesting, albeit confusing, is the filing for 08AMA for items like posters, campaign buttons, shirts, etc. What's puzzling is that the applicant does not seem to be affiliated with the Senator Obama campaign but rather is owned by FTK, a clothing store in Fresno, CA. The USPTO did question the applicant about the letters AMA, in particular if there was any significance as it pertained to the industry and/or goods listed on the application. The applicant responded that no significance existed, which the USPTO accepted. 08AMA is poised to become a Federally registered trademark.

®, Registered vs. TM, Trademark

The TM or SM symbol is to be used for marks that either have a pending trademark applicationclaiming the rights to the mark.

The ® symbol is to be used for marks that have a Federally registered trademark.

Trademarks can be names of products or services, logos, slogans, packaging and even sounds and smells. In essence, a trademark can be almost anything that is used to identify a particular product or service. Registering a trademark grants the owner exclusive rights to the mark within the specified industry. Of course, it's necessary to research the mark comprehensively

Proper Use of the Symbols:

You can freely use the TM or SM symbol while your application is pending OR if you're simply claiming the rights to the name. Sometimes these symbols are governed by local or state laws so it may be best to double check. But more often than not, you're free to use it.

The ® symbol should only be used once you've received your Federal trademark registration. The typical placement for these symbols is in the right-hand corner/to the right of your name and/or logo. For instance, TradeMark Express ® or as displayed on our home page:

Trademark vs. Service Mark

Simply put, trademarks are for goods while service marks are for services. When discussing either, it is common to use the term "trademark", even when discussing a service use, because the handling of either is interchangeable by both the USPTO and all 50 Secretary of State Offices.

The USPTO says that a "service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms 'trademark' and 'mark' are often used to refer to both trademarks and service marks."

Let's look at each term in more detail

Trademark:

The USPTO's definition: trademark "protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods."

If your name and/or logo appear on the tangible goods that you're selling, you'd be filing for a trademark. For instance, let's say you want to protect the name of your clothing line. As long as the name appears on the hang tag, label or the packaging the clothes come in, that would suffice as proof of you using the name in connection with a clothing line. And therefore, you'd file for a trademark.

If the name appears only on the front of the shirt, that's ornamental use and therefore not eligible for trademark protection.

Service Mark:

The USPTO's definition: service mark is "a word, name, symbol or device that is to indicate the source of the services and to distinguish them from the services of others."

If you're selling services in connection with a name and/or logo, you'd be filing for a service mark. TradeMark Express is our service mark that we use in connection with our trademark research & application services.

For example, you are opening a restaurant using a specific name. The name as it appears on any signage, menus, advertising, etc., would suffice as proof of your use in connection with your services.

Likelihood of Confusion: Meaning

When filing for a Federal trademark, it's important to keep the SAM rule in mind.

Who's SAM?

SAM's not a person but a concept employed by the USPTO during their review process of new Federal trademark applications.

The USPTO will refuse registration "if the marks are similar and the goods and or services related." So basically marks do not need to be exact conflicts to be considered for refusal. ""Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion," hence the SAM rule.

Let's take some time to dissect the third one – MEANING

Similarities in meaning takes into consideration that consumers could easily assume that marks that share a similar meaning are related, such as an offshoot product line or a new facet of a service. Because of that the USPTO will take into consideration marks that MEAN the same as one another.

Let's look at an example to illustrate this point.

You have a web site development service that you plan to name WebWorks & would like a Federal trademark. The comprehensive research you ordered showed a registered trademark for web site development for Internet Works. The words are different but for the average consumer the words web and internet are interchangeable and therefore are thought to MEAN the same thing.

*Comprehensive research will be on the lookout for SAM*

Likelihood of Confusion: Appearance

When filing for a Federal trademark, it's important to keep the SAM rule in mind.

Who's SAM?

SAM's not a person but a concept employed by the USPTO during their review process of new Federal trademark applications.

The USPTO will refuse registration "if the marks are similar and the goods and or services related." So basically marks do not need to be exact conflicts to be considered for refusal. ""Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion," hence the SAM rule.

Let's take some time to dissect the second one – APPEARANCE

Similarities in appearance takes into consideration that consumers often see trademarks be it on television, on the web, magazines, etc. Because of that the USPTO will take into consideration marks that APPEAR to be similar to one another.

Let's look at an example to illustrate this point.

You have a cosmetics line that you plan to name Facing East & would like a Federal trademark. The comprehensive research you ordered showed a registered trademark for cosmetics for Facin' East. The spelling is slightly different but both marks APPEAR to be nearly identical.

*Comprehensive research will be on the lookout for SAM*

Likelihood of Confusion: Sound

When filing for a Federal trademark, it's important to keep the SAM rule in mind.

Who's SAM?

SAM's not a person but a concept employed by the USPTO during their review process of new Federal trademark applications.

The USPTO will refuse registration "if the marks are similar and the goods and or services related." So basically marks do not need to be exact conflicts to be considered for refusal. ""Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion," hence the SAM rule.

Let's take some time to dissect the first one – SOUND

Similarities in sound takes into consideration that consumers often hear trademarks be it on television, radio, podcasts, etc. Because of that the USPTO will take into consideration marks that SOUND similar to one another.

Let's look at an example to illustrate this point.

You have a clothing line you want to trademark Federally called DestinyDesigns. The comprehensive research you ordered showed a registered trademark for clothing for Destiknee Dezines. The spelling is wildly different but when you say both, they SOUND identical.

*Comprehensive research will be on the lookout for SAM*

Likelihood of Confusion: The Rule of SAM

When filing for a Federal trademark keep the SAM rule in mind.

The USPTO will refuse registration "if the marks are similar and the goods and or services related." So basically marks do not need to be exact conflicts to be considered for refusal. "Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion," hence the SAM rule.

I'll devote a few more posts this week getting into the nitty gritty of what that means.

*Comprehensive research will be on the lookout for SAM*

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.

Hear Ye, Hear Ye - Come One, Come All!

As a big THANK YOU to our blog readers, TradeMark Express is offering a never-ending, no limit, discount off of our package deal.

Simply call any of our offices and when placing your order mention that you read the blog & we'll take $25 off of our package price. You're also welcome to use our online order form or our online instant chat feature. Again, be sure to mention you read the blog & that's $25 back in your pocket.

What's in a Comprehensive Common-Law Search?

As part of a comprehensive name research, Common-Law sources should be checked. What makes a Common-Law search comprehensive?

Here is a listing of SOME of the databases TradeMark Express checks in conducting a Common-Law search:

* Over 16 million trade names are searched - yellow pages, corporations, DBA fictitious name filings, company directories, newspapers, trade journals, court records, tax records, municipal records, credit records, product databases, industry sources, etc.

* Dun & Bradstreet -- Dun's Market Indicators consist of over 11 million Dun & Bradstreet Enhanced DMI records, plus over 16 million US records from D&B's vast data warehouse. With over 98% of the records being private companies, DMI is widely recognized as the premier source for hard to find, basic company information.

* Company and product information databases--including American Business Information, US Business Directory Company Intelligence, Database America All Business File and dozens of other company and product directories.

* Public Records--DBA - Doing Business As, or fictitious business names, filings for 47 states; corporation filings for 49 states. Prompt, MARS and other Full text News Sources--Hundreds of major newspapers, newsletters, business and industry-specific journals, periodicals, abstracts and reviews.

* Industry-Specific Sources--Specialized databases are researched for names in the following industries: entertainment, communications, computers, publishing, medicine, pharmaceuticals, electronics, technology and sports.

To see a complete listing, check out the PDF document here.

A search of the internet and domain names should also be conducted. TradeMark Express recommends that every client take advantage of the FREE resources out there to conduct this part of the search. In conducting our Common-Law search, we feel it important to spend our time and money on researching databases not freely available to the public.

Recommended sites:

Google
Yahoo
NameBoy
WHOIS

What's the Point of Getting a Federal Trademark?

After reading about Common-Law, you're probably wondering why you'd even be interested in getting a Federal Trademark for your name. Well, let's break down the key reasons as provided by the USPTO.

1) Constructive notice nationwide of the trademark owner's claim

Essentially, this means that no other party will have the right to use the same or confusingly similar name throughout the US. It also means you can use the ® symbol.

2) Evidence of ownership of the trademark

The records of the USPTO are public and therefore, it'll be obvious you own the Federal trademark.

3) Jurisdiction of federal courts may be invoked

Should another party infringe on your Federal trademark rights, you'll be able to use the Federal court system.

4) Registration can be used as a basis for obtaining registration in foreign countries

If you do want to extend outside of the US, you'll be able to use your US Federal trademark registration as a claim for priority.

5) Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods

You'll be able to record your Federal trademark with U.S. Customs & Border Protection to prevent the importation of goods that infringe upon your mark. Read more here.

All of the above advantages are yours once you obtain a Federal trademark. However, all of the above can only be yours once you know that the mark is truly available AND the application has been completed correctly.

What Is Common-Law?

Most often when one hears the term Common-Law, it's in reference to marriage. If that's what you're looking for, go here. Otherwise, keep on reading.

First, let's start with the USPTO's definition:

"Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration."

The above sentence really needs a caveat added to it: Yes, you can be 'first in line' if you file an Intent to Use trademark application PROVIDED that there are no other parties that can claim prior Trademark or Common-Law usage.

Also, Common-Law rights are restricted to the geographic area in which the mark is used.

Let's look at an example to illustrate this point:

In 2003, you started a web design company called Golden Fog Design & are based in the Bay Area of California. Your clientèle has been residents of the Bay Area strictly. This is where your Common-Law rights extend to, even if your web site that advertises your services is viewed worldwide.

Yesterday, a company called GoldenFog launched their web site advertising their web design services. They are based out of New York, NY and have been in business with that name since 2005. The company also filed for an Intent to Use trademark application with the US Patent & Trademark Office.

How does this work out? Now, of course, each situation varies from the next & I'm using rather crude examples to illustrate a point. So yadda yadda yadda, if this is happening to you, seek advice.

That being said, here's how it'd typically work out:

You'd still have your Common-Law rights to the Bay Area of California since you've been in business the longest. The NY company would have Common-Law rights to their city since they've been using it longest there. Now, the USPTO would also likely grant them the trademark since the USPTO will be blissfully unaware of your usage of the mark, UNLESS you contest the application.

However, even contesting it does not necessarily negate the Federal trademark. You may able to restrict the NY based company's Federal trademark registration from advertising & servicing the Bay Area of California.

Again, if you find yourself in this boat, contact a trademark specialist or a trademark attorney. Each situation is specific & the details will need to be hashed out.

Read more about Common-Law here.

"The Name Game"

Our pal, Phil Davis, of Tungsten Branding just announced his "informational naming/branding show" available on VoiceAmerica. Phil's been a colleague for a few years now & I'm always happy to endorse anything he does.

Here are the details:

"If you've ever had questions or concerns about your company's branding efforts, be sure to tune in each Tuesday, beginning January 8th on VoiceAmerica.com to hear "The Name Game," a one hour talk show dedicated to better branding. Your host, Phillip Davis, will provide tips, techniques and analysis into improving and revitalizing your company's brand image. In addition, the show will feature interviews with industry thought leaders..."

I strongly recommend that all of our readers check out Phil's show.

Breaking Records at the USPTO

For the 2nd year in a row, the USPTO has surpassed their trademark related goals:

"* USPTO's trademark examining attorneys examined a record 323,527 applications.
* Quality was 97.4 percent.
* The quality results exceeded fiscal year 2007 targets.
* The average time from filing an initial trademark application to a preliminary decision from an examining attorney (first action) was below 3 months."

That last fact is definitely a welcome one for trademark specialists & potential trademark owners. Having the application prepared correctly helps the process along.

Happy Holidays

We'll be back bigger & better than ever for the New Year.

Happy Holidays to you all!

These are not the Government Offices You're Looking For...
Move Along

The Trademark Blog has posted a pretty comprehensive list of private companies that send out official looking documents to new trademark applicants.

Every new trademark applicant should know that any & all correspondence to be paid attention to will be coming from the USPTO, the US Patent & Trademark Office and nowhere else.

Thanks to the folks at The Trademark Blog for such a great list!

Jackpot!
Gambling Themed Trademarks

The Masters are coming to a casino near you or so I assume based on the 3 newest filings from High 5 Games for gaming machines:

Matisse
Renoir
Van Gogh

Hasselhoff doesn't want to be hassled, as we all have heard, but he'll probably be fine with you feeding some quarters into the Don't Hassel the Hoff slot machine.

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.