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Archives For October 2014

How to File a Trademark Application Without an Attorney

October 28, 2014 — 1 Comment

We recently wrote about whether you need an attorney to file a trademark application and we said that, while there are many reasons to use an attorney, some businesses decide to go it alone. This week we want to offer a streamlined walkthrough of how to file your own application. We will cover the most important parts of an application here, but note that there are many more options that you might consider when filing out the application.

*And like in our other post, we want to emphasize that is is almost always a good practice to use an attorney to file your trademark application. You shouldn’t rely on this post as a replacement for an attorney!

Prep Work

Before even starting the application, you should conduct a trademark search to make sure you have the proper rights to obtain a registration in the first place. For this, we recommend our post “How to Perform a Trademark Search.”

You will also need to find in which International Class your goods or services will belong and also one or more suitable descriptions of your goods or services. The IC list is available here and the previously approved descriptions are available here. While you are not required to use a previously approved description, doing so can reduce the cost of your application and also increase the likelihood of an approval in the first attempt.

How to File

When you arrive at uspto.gov, navigate to the application labeled “Trademark/Servicemark Application, Principal Register.”

TEAS or TEAS Plus

If you are ok with digital communications, paying the fee up front, and using a pre-approved description, then you can save $50 by using the TEAS Plus application. If not, you must select the regular TEAS application. We will assume you choose the Plus application since that is most commonly used.

Mark Owner

The next substantial information you will enter is information on the owner of the mark. Note that if you have a business entity, odds are the entity should be the listed owner, not you as an individual. Also keep in mind that this information will be publicly available after you submit the application, which may impact the information you provide.

The Mark & Goods/Services

Next up is information about the mark itself and the goods/services you provide. You can insert an image if you are applying for a design mark, or you can just type in the mark if you are applying for a word mark. You can search for a pre-approved description at this step and once found, insert it into the application. If you choose a description with a fill-in-the-blank option, you need to complete the description at this step also.

Filing Basis & Specimens

If you are already using the mark in commerce, then you can now select Section 1(a) as your filing basis. If not, you can choose Section 1(b) to indicate that you intend to use the mark within 6 months of the application’s approval. Assuming you selected 1(a), you must now submit a specimen of use. If you need help finding the right specimen of use, see our post “How to Find a Good Trademark Specimen.” You will also need to describe the specimen and provide information on when the mark was first used “anywhere” and when it was first used “in commerce.”

Signature & Submission

After assigning the filing basis and clicking continue, you can then pay the fee and sign your application. Follow the signature instructions exactly, or it won’t let you proceed.

The Waiting Game

Next up is the waiting game. You will likely have to wait about three months before getting a response from the USPTO. In the meantime, you may receive some official communications from the USPTO further describing your mark or asking for clarifications. You will also likely receive unofficial communications from third parties seeking to help you along in the process. Remember to pay attention to the sender of these communications. If they are from the USPTO, then they are official. Anyone else, and they are likely advertisements from third parties.

If your application is denied, be sure to check out our post “What You Should Do If Your Trademark Application Is Denied.”

Need Help?

While some people prefer to file on their own, many more seek the advice and assistance of a licensed attorney to help them through the process. If you would like assistance, check out our application package which only costs $495 at mightymarks.com.

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Image: Thinkstock/LiudmylaSupynska
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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The Lanham Act and What it Means to Your Business

October 14, 2014 — Leave a comment

In 1946, Congress passed a trademark act called the Lanham Act (it was sponsored by representative Fritz G. Lanham). Initially it was put into place to simply eliminate a business’s intent to deceive under false pretenses. Today, however, it has grown further to not only cover false advertising and trademarks, but also “words, terms, names, symbols, or devices, and any false designation of origin, false or misleading description of fact, or false or misleading representation of fact.”

Once a business protects their mark using a federal registration (learn more about federal registration here), it can then seek to prohibit others from infringing on its rights and may even be able to seek financial remedies for financial losses. Generally, such rights and remedies will follow a third party’s use of the company’s trademark if such use causes consumer confusion or if the company attempts to establish a false affiliation with the business.

Since its original passing, it has been amended several times, especially in 1984 by the Trademark Counterfeiting Act. This act made the punishment of false advertising and trademark infringements even stronger, adding treble damages which would triple the amount of monies received if a court awarded an injured party the profits made by the party who deceived consumers or businesses.

How it affects your business

The two biggest affects of the Lanham Act on your business are (a) that it provides protection for your trademarks, and (b) that it prohibits your business from using the trademark of another.

As you may recall, you can register for federal trademark protection for your trademarks under the Lanham Act. Your mark cannot be descriptive of the goods or services that you provide and you must be the first person using the mark in interstate commerce to be eligible to receive a registration.

Once registered, you can then use the provisions of the Lanham Act to prohibit infringers from causing consumer confusion by using a similar mark.

On the other side, before creating the branding and name for your business, it would be wise to consider the Lanham Act, specifically what marks already exist.

First, you should search the trademark database at uspto.gov. Second, you may consider hiring a professional search firm to scour common law resources such as newspapers, the Internet, and other places where you might discover a prior user of a name you desire. You can learn more about trademark searches and how to perform one here.

The Lanham Act Continues to Evolve

The courts continue to balance the application of the Lanham Act with new technologies. For example, cybersquatting, or the act of using a domain name with the intent of selling it to a third party to thwart sales, is now a legal issue and considered to be false advertising.

Nearly seventy years later, the Lanham Act continues to protect businesses and their unique assets. Be sure to stay informed on how this important legislation continues to evolve by subscribing to Mighty Updates, the MightyMarks® email newsletter to keep up to date on trademark law.

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Image: Thinkstock/sborisov
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

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Up In Smoke – Why Medical Marijuana Names May Not Receive Federal Trademark Protection

October 1, 2014 — Leave a comment

Medical marijuana is now legal in 20 states and Washington D.C., making it an estimated $1.53 billion industry. In California alone, approximately $105 million is generated a year in sales tax revenue from medical marijuana dispensaries. While this industry has obvious unique characteristics, it shares a common need with almost all others – a need for trademark protection for its products.

Medical Marijuana Trademark Classification

In 2010, the U.S. Patent and Trademark Office created a new trademark classification: “Processed plant matter for medical purposes, namely medical marijuana.”

According to the Wall Street Journal, over 250 marijuana associated trademark applications were submitted within three months of the creation of this new class. However, the office later removed the classification and announced that it never actually granted a trademark for anything associated with marijuana. Further, the USPTO continues to deny registration for the sale of medical marijuana for various reasons.

“Lawful Use”

First, applicants are likely to run into problems with applications because their “use in commerce” is not lawful.

Although the Department of Justice (“DOJ”) allows states to enable the distribution of medical marijuana by not enforcing federal law, the White House continues to stress that “it is important to recognize that state marijuana laws do not change the fact that using marijuana continues to be an offense under Federal law.”

As a result, the USPTO has denied some applications by stating that the use in commerce is not a “lawful use” in commerce. Therefore, Federal protection is unavailable.

“Immoral” and “Scandalous”

Further, the US Trademark Act (the Lanham Act) prohibits the USPTO from granting trademark protection to marks that consist of “immoral” or “scandalous” matter. These terms are subject to debate, but illegal goods will fall under these definitions and therefore, a mark used for the sale of medical marijuana will likely be prohibited from registration (for more about limitations on registrations, you can read this post about the Washington Redskins trademark dilemma, which is similar to this situation).

How to Resolve The Conflict

Although Federal trademark protection remains unavailable, companies in the medical marijuana industry do have some options. First, they should always conduct a trademark search before creating and using a mark so they don’t infringe potential rights of others and also so they can create and use a unique mark for their product. Second, they can seek state protection through state registrations and common law protection. And third, they can seek Federal registration for goods that are related to their core product (marijuana) in an attempt to get some minimal protection over their marks.

In any case, you should subscribe to Mighty Updates, the MightyMarks® email newsletter to keep up to date on trademark law.

Image: Thinkstock/Gordon Swanson

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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