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Showing posts from 2007
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 tradem…
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 empl…
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.&quo…
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 appl…
"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…
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.…
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…
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…
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,…
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
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…
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 14th 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 …
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 ariseThe 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…
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!
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 Feder…
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&#…
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 tha…
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.