Navigating Trademarks! What Most Entrepreneurs Don’t Know will Kill their Business!

HOW TO AVOID ERRORS & COSTS

Trademarks
Common use
No registration
State Trademark
State protection only
Federal Trademark
US protection
Bases for international trademark

Trademark Symbols
TM – trademark when you claim rights in a mark for goods
SM – service mark when you claim rights in a mark for goods
® - Only when the USPTO actually registers the mark (after grant)

File a Trademark
Electronically using TEAS at http://www.uspto.gov/teas/index.html
24 hour available
Checks form for accuracy
Proof you filed
Must pay fee on-line

Need an Attorney?
No. But you must comply with all the requirements
Read all the Statute and Rules
Mistakes are costly
Principal register
Supplemental register
Responses
Appeals

What Needs to be Filed?
Applicant’s name
Usually an LLC
Owner of Mark
Name & address for correspondence
Email and surface mail
Depiction of the Mark
Word mark
Logo
Colors

Errors in Filing for these Items
Applicant’s named wrong, wrong entity, or not LLC at time of filing
Word mark with design elements
Word mark with color not needed
Logo - change mind later on logo not good as must be exactly as filed; clear drawing; if colored, must specify locations and colors correctly

What Needs to be Filed?
Goods or Services Classification
From Manual
Bases for filing
Intent to use [1(b)]
Actual Use [1(a)] – specimen for each class

Classifications are inaccurate – did not review list enough
Need to list more than 1 class for the goods or service for the activity
Filed actual use [1(a)] but did not ship outside the State (interstate) – proof and paid; mark on goods and container, sold and shipped; date first used
Intent to use [1(b)] and do not meet that requirement

Specimen
Cannot see word mark on the goods
Cannot see logo on the letterhead or goods
Submit wrong items for proof
Signature - wrong person signed
officer of LLC
owner of the mark
Attorney

Costs
Electronically using TEAS + = $275 per class
Attorney time
Prosecution
SOU if [1(b)]
Appeals
Global Mark

Prosecution of Mark
Legal and Procedural Review by Examiner for Principal Register
Looks for conflicting Marks; confusion of Marks
Mark may not be descriptive, geographic, surname or ornamental, etc.
Office Action then 6 months to reply
Only 2 Actions then appeal [TTAB]

Opposition
Published then can be opposed
30 days from publication to file the opposition or request extension of time
TTAB hears these cases

Certificate
If actual use [1(a)] and no opposition is filed, then USPTO registers the Mark ~12 weeks from publication
If intent to use [1(b)] then notice of allowance issues ~12 weeks from publication & 6 months later
Must submit SOU
Request 6 month extension for SOU $150/class
Maximum extension = 3 years total

Navigating Trademarks! What Most Entrepreneurs Don’t Know will Kill their Business!

by Incuba8 on Aug 26, 2009

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