Archives For uspto

Spam Following Trademark Application

November 24, 2015 — 1 Comment

You’ve filed your trademark application with the United States Patent & Trademark Office (USPTO) and all of a sudden you start getting emails and physical mail regarding your trademark and you might start to wonder how you are supposed to keep up with all of the filings and fees.

Well, the good news is you don’t have to keep up with all of those mailings. The bad news is, it is mostly spam.

Here’s what you need to know.

Information in Your Application is NOT Confidential

Your application will be publicly available. Anyone can access the USPTO’s database and read your application and mine your application for your information. As a result, many companies in the U.S. and abroad have discovered they can automate the process and collect your contact information as soon as your application is filed. As a result, they know who you are, where you operate, and more importantly, they know information about the trademark you are seeking to register.

Mailings You Might Get

Pretty quickly after submitting an application, you may receive one or more of a number of different types of emails or physical mailings. These mailings will offer a wide range of services from legal services to trademark monitoring services, recording services with other agencies, and recording services with foreign offices. Some of these are valuable services you may want to purchase. But many of them are not valuable and you should not purchase them.

They Are Probably Not Official

Although the mailings may look like official USPTO documents, they are probably not. For instance, many will include names including “United States,” “Registration Office,” “Agency,” or the like and further, many will use formats that look like official USPTO documents. They will probably also have unique information about your application like the mark, the serial number, the application date, and your contact information. But remember, all of that is public so just because that information is on a mailing, it doesn’t make it official.

How To Spot Official Documents

Here’s the good news. Official documents and communications from the USPTO will always come from one of two places. First, if physical, the documents will come from the “United States Patent and Trademark Office” in Alexandria, Virginia. And second, if by email, the documents will come from an official “@uspto.gov” domain.

If the documents arrive from any other source, you can almost certainly conclude they are not official.

What If You Were Duped?

From time to time people make mistakes and send money to one of these third-parties by mistake. If this happens to you, you should seek a refund from the third party and, more importantly, notify the USPTO and also the Federal Trade Commission. You might also consider contacting a state official in your state regarding the misleading business practice.

The Best Course of Action

Without a doubt, we think the smartest thing you can do is seek help from a competent trademark attorney. He or she can help you with your application (which is a big deal itself) and also with determining what communications you should take seriously after you file your application.

And of course, if you want to file a federal trademark application with the USPTO, we recommend you check out MightyMarks.com where we can help you unleash the power of a federal trademark.

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Image: Adobe/d.c.photography
*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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Understanding the USPTO’s Trademark Application Options

October 1, 2015 — 1 Comment

When applying for a use-based federal trademark online with the United States Patent and Trademark Office, or USPTO for short, you basically have three options: the TEAS Regular application, the TEAS Reduced Fee application, and the TEAS Plus application. (TEAS stands for Trademark Electronic Application System.) Understanding which to file is an important decision.

TEAS Regular

A TEAS Regular application is the standard application. The filing fee is $325. Generally speaking, this is just a paper application process that starts online. When applying under this application, you don’t have to agree to use the internet for subsequent filings, you don’t have to supply an email address, and you can use custom information. For example, you can create your own unique goods/services description when applying.

TEAS Reduced Fee

As the name suggests, the TEAS Reduced Fee application is cheaper. It is only $275. Sometimes referred to as the TEAS RF, this application has additional requirements. Specifically, you must include an email address and you must agree to receive official application notices from the USPTO via email. Further, you must agree to file follow up filings using the TEAS platform also. However, like the TEAS Regular application, you don’t have to use a pre-approved goods/services description when submitting your application.

TEAS Plus

The TEAS Plus application is the cheapest option. It costs just $225. However, you must comply with additional requirements. Much like the TEAS RF application described above, you have to include an email address, agree to receive communications via email, and agree to use the TEAS system for subsequent filings. Additionally, you must use one of the USPTO’s pre-approved goods/services description when applying.

Of note, this application is somewhat new, appearing for the first time in early 2015.

$50 Processing Fee

You should note that if you elect to apply under one of the cheaper applications described above, you need to make sure you comply with that application’s rules. For example, if you apply under TEAS Plus but try to use a non-pre-approved goods/services description, or if you try to use a paper form, then you may be assessed additional fees. In particular, the USPTO will charge you $50 per class of goods/services for such a violation.

How do you pick?

If you are trying to decide how to apply for a federal trademark registration with the USPTO, your best bet is to speak to an attorney that has experience filing trademark applications. He or she can advise you on your ability to register your mark and if you decide to move forward, your trademark attorney can advise you on the best application to use.

In most situations the new TEAS Plus application is a great option to help you save money and to speed up the process. But sometimes you are better off using one of the other options.

Need help?

If you want help, Mighty Marks® can help you. We apply for trademarks all the time. Learn more at www.mightymarks.com.

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Image: Adobe/alexskopje
*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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Confusingly Similar Trademark Applications

April 28, 2015 — Leave a comment

As we have highlighted on this blog before, you should always perform a trademark search before applying for a trademark. There are many reasons for this, one of which is because you don’t want to waste time and money applying for a mark if someone else already registered your mark or another confusingly similar mark.

If your search reveals that someone else has such a registration, you have several options.

First, check the goods and services associated with the registration.

If the goods and services is for faucets and you want to operate an airline, you are probably ok. That is because consumers won’t be confused into thinking your airline is associated with the faucet manufacturer. Figured it out yet? We’re talking about Delta. Delta airlines is rarely confused with Delta faucets, therefore registrations for both would likely be allowed by the USPTO.

(There are some limits to that for famous marks. For example, you probably can’t use “McDonalds” for any reason, even to sell computers, simply because of how famous their mark is in the eyes of consumers.)

Second, you might be able to keep using your mark, even if the goods and services are the same.

As we’ve said before, trademark rights stem from use in commerce. If you’ve used your mark in your hometown for years and someone else obtains a USPTO registration of your mark because they use it too (on the other side of the country), that doesn’t necessarily mean you have to stop because you used it first.

However, it probably means you can’t expand too far. You might be able to expand to a neighboring city, but your rights to expand nationwide would be much more limited. This is why you should always seek registration when you can!

Third, pick a new mark.

This is sometime easy (for new companies) and sometimes really hard (for old established companies).

If this is an option for you, it is often a simple way to fix the potential confusion that may result from two similar names.

Lastly, get permission!

Although this is not always an option, it might work in your case. We’ve seen it work before.

Look up the owner of the registration in the USPTO database. Do your research. And if you find that confusion is unlikely, you can contact them and ask them to write you a letter (which you might write for them to sign) that says they consent to your registration of your application. You can then submit that electronically along with your application and the USPTO will accept that and allow your mark to be registered (pending other reviews of course).

What Next?

Talk to an attorney!

While an attorney isn’t always necessary in the trademark world, these are tricky issues and you should seek the advice of a trademark attorney before proceeding with these matters. They can help you in many ways.

If you have questions, you can learn more on our website, www.mightymarks.com, and you can contact us if you have specific questions!

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Image: Thinkstock/RomoloTavani
*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.

In Trademark Disputes, Trademark Law , , ,
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Trademark Roundup: Trademark Basics by Mighty Marks

March 31, 2015 — 1 Comment

We’ve been writing about trademark law for a full year now and we’ve covered a lot. To help you better understand the ins and outs of trademark law we want to roundup some of our most practical posts to help you find the information you need to know about how trademarks impact you and your business.

In this post, we’ll cover trademark basics.

Trademark 101

In our post What Everybody Ought to Know About Trademark Law we covered the three things you need to understand first.

First, the purpose of trademark law is to protect consumers. That is, trademarks serve as source identifiers for goods and services and help consumers find the specific goods or services they are seeking.

Second, that trademark rights stem from use in commerce. Technically, a registration is not even required, but a registration does have a number of significant benefits.

And third, a trademark protects names, slogans, and the like. Copyrights and Patents are different. Copyrights usually protect creative works, while Patents usually protect inventions.

Protecting your mark

In our post 5 Keys to Protect Your Trademark we discussed topics you need to learn to fully understand how you can protect your mark. Specifically: (a) that registration is not required, (b) common law protection only extends to the area in which you are using your mark and to your natural zone of expansion, (c) that rights are limited to the goods and services you sell, (d) that you cannot protect a descriptive mark, and (e) registration is strongly encouraged for maximum protection.

Trademark Applications

Speaking of registrations, we’ve covered a lot about how to obtain a registration.

To begin, we’ve covered Why Your Startup Should Apply for a Federal Trademark, and What To Do First: Company Name or Trademark. The benefits to registration include nationwide notice of your claim and ownership of your mark, and also a stronger ability to force infringers to cease their infringement. In the second post mentioned just above we provided guidance on how to reserve your business name with both your state and the USPTO.

What’s the USPTO? Glad you asked. We wrote all about the United States Patent and Trademark Office in this post: What is the USPTO and How Does it Affect My Business?

Trademark Infringement

And lastly, we’ve covered trademark infringement many times on this blog. The starting point to understanding infringement is this post, Justice Explained: Trademark Infringement & Defenses. In that post, we discussed how infringement is judged based on likelihood of consumer confusion. If consumers are confused, then infringement is likely to have occurred.

As we move into our second year of blogging about trademark law and trademark applications, we hope you continue to find our blog useful for your business.

If you have any topics you’d like covered, feel free to contact us to tell us what you’d like us to talk about!

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*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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What is the USPTO and How Does it Affect My Business?

November 11, 2014 — 1 Comment

We refer to the USPTO a lot on this blog. Technically it is known as the United Stated Patent and Trademark Office but it is often shortened to the Trademark Office or just USPTO. In this week’s post we want to provide more information on the office, what it does (and doesn’t do), and how it plays an important part for your business.

What is the USPTO and What Does it Do?

The USPTO is a federal agency under the U.S. Department of Commerce with more than 10,000 employees. Unlike most federal agencies, the USPTO is self-funded, paying for its expenses through the fees it collects on applications. Although the agency serves many functions including advising the President and other departments on intellectual property matters, its two primary functions are the registration of patents and trademarks.

What it Doesn’t Do

The USPTO will not give you legal advice on the ability to trademark your business name or logo and it also does not have any involvement with obtaining copyright protection for your creative works (the Copyright Office is tasked with managing our country’s copyright database and it is a part of the Library of Congress).

How It Affects Businesses

If you are an inventor or have some other patentable technology or business methods then the office may grant you the exclusive right to make use of and license those items for a limited time (normally 20 years). But as this is a trademark blog, we will focus on the trademark division of the USPTO.

The USPTO maintains a searchable database that contains trademark applications and registered marks (including denied applications and expired registrations). This database can be immensely valuable to your business because it can shed light on other businesses that might be using a name prior to your use. It can also offer information on what marks have been denied protection (for example, because they were descriptive) which can help you in picking the right, protectable, name for your business.

The USPTO also provides registration certificates for approved applications. If your application is approved and makes its way through the opposition process, you will obtain a certificate of registration that you can use to prevent trademark infringement. Although it doesn’t always work, providing proof of your registration with the USPTO will often help you reach a settlement with infringers prior to filing a lawsuit.

The USPTO also handles certain disputes such as opposition proceedings to oppose the registration of a mark. Once an application is approved, it is published for opposition for any individual or company to oppose registration. If you object to the registration, a trial-like proceeding is started during which you can submit your arguments.

Working With the USPTO

With respect to trademarks, anyone (including non-lawyers) can work directly with the USPTO to apply for a trademark and file various renewal documents. However, trademark law itself is often confusing, even to many lawyers!

For that reason, it is often a best practice to use the services of a trademark lawyer to assist you with your application. If you want to learn more about how we help clients obtain trademark registrations, read more about Mighty Marks® here.

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Image: uspto.gov
*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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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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Why the Washington Redskins Still Have Trademark Rights

July 1, 2014 — 1 Comment

The Washington Redskins’ loss of its federal trademark registration was widely reported recently in major news outlets. Unfortunately, many headlines and reporters blurred some legal technicalities and it is interesting to note that the Redskins still have trademark rights. Those rights are just a bit limited now.

Trademark Rights Stem From Use

As we have said many times here, a business acquires trademark rights through actual use of a mark in commerce. A federal registration, while immensely beneficial, is not required to secure such rights.

In fact, once you begin using your mark in commerce you can claim common law trademark rights in that mark and you can use state courts to enforce your rights. Practically, it can be difficult to bring lawsuits in multiple states all at once, but it is possible.

Federal Registration

The purpose of federal registration is to secure your rights nationwide and to obtain a few extra rights (listed in this post). What happened recently is the USPTO decided that the team’s registration (not its trademark) was not eligible for registration because it disparaged Native Americans. Thus, the USPTO did not say the team doesn’t own the trademark, it just said it can’t obtain a federal registration.

You Can’t Register Certain Marks

The Redskins registration was canceled because it disparaged Native Americans. Marks that disparage a significant population or which are otherwise scandalous may not be registered. But that’s not the only limitations.

The USPTO is also not allowed to register any marks that (a) are deceptive and might mislead consumers, (b) consist mostly of the US flag, (c) make use of a living individual’s name without his or her consent, (d) would likely cause consumer confusion, (e) use a geographic description that is false or misleading, or (f) make use of a surname.

What the Redskins Can Do Now

The Redskins are going to appeal the cancelation and may be able to reverse the cancelation. Regardless, even if they ultimately lose, they will likely continuing fighting and seeking individual court victories in which they can stop infringers. They can do this state by state by enforcing their common law trademark rights.

In the long run, however, those difficulties and the litigation expenses may prove too expensive and the team may end up changing its name if it can’t protect it using a federal registration.

If you have questions about whether your mark qualifies for federal trademark protection, be sure to contact Mighty Marks®!

Image: Thinkstock/neilkendall

*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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Why the USPTO Supplemental Register Matters to You

June 24, 2014 — 2 Comments

If you’ve explored the trademark database maintained by the U.S. Patent and Trademark Office you might have seen some marks filed on the “Supplemental Register” rather than the “Principal Register.” While the differences may not seem too great on their face, the rights associated with each registry are quite different.

The Principal Registry

The Principal Registry is a registry of federally protected trademarks. Once registered, a mark owner may:

  1. Begin using (R) on the registered mark;
  2. Obtain greater damages in an infringement action;
  3. Use the registration to seek protection in foreign countries;
  4. Use the registration to prove constructive notice of ownership; and
  5. File for incontestable status after five years.

The Supplemental Registry, on the other hand, doesn’t offer all of those benefits.

The Supplemental Registry

The most common reason a mark ends up on the Supplemental Registry is because it was rejected for the Principal Registry due to a number of reasons such as descriptiveness or use of a surname or geographical term.

Unfortunately, the owners of marks on the Supplemental Registry only receive benefits 1, 2, and 3. Those owners can’t use the registration to show constructive notice and they can’t seek incontestable status. Further, their acceptance of the Supplement Registry implies they know their mark is week due to descriptiveness or another registration hurdle. Thus, the registration might scare away some potential infringers, but it won’t help too much in any infringement litigation.

The key requirements to obtain a Supplemental Registry registration are quite simple: the owner must be using the mark in commerce and it cannot be generic because generic terms don’t have the effect of serving as a source identifier.

What You Should Consider

If your mark isn’t suitable for the Principal Registry, you should consider seeking protection on the Supplemental Registry because even a Supplemental Registry registration can be used to scare off potential infringers. However, it should be remembered that if you are trying to build a brand based on your mark, the Supplemental Registry isn’t a good long-term tool to achieve that goal. Rather, you should begin using a brand/mark that is protectable on the Principal Registry to better protect your rights and the real value of your brand.

If you want to learn more about trademark law, be sure to sign up for Mighty Updates, our monthly email newsletter!

Image: Thinkstock/Vladimirs

*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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Why You Can’t Trademark a Descriptive Term – The “Hot Yoga” Example

May 13, 2014 — Leave a comment

We’ve mentioned previously that names and slogans may not be protected unless they are distinctive and capable of identifying a particular source of the good or service.

The reasoning behind this section of the Trademark Act is simple: if businesses were able to obtain exclusive rights to descriptive or generic terms, then competitors would be unable to describe their goods and services to the market. For instance, if a restaurateur obtained a trademark for “Restaurant” his competitors (the rest of the restaurant business) would be unable to call their restaurants by that name.

A great example found in the United States Patent and Trademark files is the Hot Yoga application.

The “Hot Yoga” Trademark Application

California based Bikram’s Yoga College of India attempted to register the phrase “Hot Yoga” in connection with education services for yoga. Of course, it is obvious that the phrase simply describes the service itself – that is, yoga in a hot room.

Not surprisingly, the USPTO issued an Office Action (an official document issued by the USPTO to explain problems with a trademark application) denying the application because it was descriptive. In quoting from case law, the trademark examiner said that a mark is merely descriptive “if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.”

The examiner explained the reasoning above in the Office Action and concluded that descriptive marks may not be registered because “businesses and competitors [must] have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.”

Arbitrary is Better

As a result of this limitation, many attorneys advise clients to be as arbitrary as possible when naming products and services. The more arbitrary and unconnected a phrase is from a particular good or service, the more likely the USPTO is to grant protection. One problem with this tactic, however, is that arbitrary marks are sometimes not very marketable because they do not describe the product or service and thus are more difficult to attract customers.

In practice, many business owners simply go somewhere in the middle and use a term that is partially arbitrary, but also partially descriptive. These trademarks suggest the good or service to the customer without being overly descriptive. Businesses then take their chances with a trademark application.

Secondary Meaning

One last tip: in some cases a company can obtain trademark protection for descriptive terms. For example, “Sharp” in connection to the sale of televisions. While that mark is descriptive of televisions, the name has obtained enough recognition in the market (a secondary meaning) to overcome the descriptive limitation. But we’ll cover this more in a future post.

If you enjoy these blog posts, you should Sign Up for the Mighty Marks® monthly email newsletter!

Image Credit: Thinkstock/Anna Berkut

*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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