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What to Expect During the USPTO Trademark Registration Process
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What to Expect During the USPTO Trademark Registration Process

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  • 1. eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    What to Expect During the USPTO Trademark Registration Application Process
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 2. eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    Disclaimer: This presentation is provided for informational purposes only, and does not constitute legal advice. There is a vast body of regulations, statutes, case law and knowledge applicable to federal trademark rights and USPTO trademark registration applications, and the information in these slides does not purport to be—nor is it—comprehensive. This presentation is intended only to provide a general overview of what most typical trademark registration applicants can expect with regard to the basic requirements of USPTO trademark registration applications.
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 3. Overview of Federal Trademark Registration
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Provides exclusive nationwide rights, subject only to any pre-existing common law rights holders.
    • 4. Filing is made with the USPTO, which evaluates new trademark registration applications and hears trademark appeals, oppositions and cancellation proceedings (TTAB).
    • 5. Federal rights and registration are available only for marks used in interstate commerce (covers most trademarks in use on the Internet).
    • 6. Federal law protects trademarks from “likelihood of confusion” in the relevant marketplace
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 7. Trademark Clearance Research
    A Critical First Step
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Before applying for registration with the USPTO, it is important to conduct clearance research to determine whether or not the trademark is available for adoption.
    • 8. Trademarks do not have to be identical or cover identical goods/services in order to create a “likelihood of confusion”—similarity is enough.
    • 9. Comprehensive trademark clearance research covers registered trademarks and pending applications (including a review of their status and any objections), as well as other federal, state, domain name and other Internet and common law resources.
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 10. Two Basic Types of Applications
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Section 1(a) – use in commerce
    • 11. Section 1(b) – “intent to use” in commerce
    • 12. Allows for protection of trademarks before they are revealed to the public (and to competitors)
    • 13. Requires bona fide intent, may seek extensions for time to file Specimen of Use
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 14. Application Must Identify Specific Goods/Services
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Trademark protection is tied to the specific goods/services to which the mark is applied.
    • 15. “International Classes” are divided between goods and services.
    • 16. Within each Class, must accurately describe the goods or services to be covered by the application.
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 17. Other Required Information
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Owner Name
    • 18. Owner Contact Information
    • 19. Date of First Use Anywhere
    • 20. Date of First Use in Commerce
    • 21. Appropriate Disclaimers
    • 22. Translation (if necessary)
    • 23. Accurate description of the trademark (for graphic marks)
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 24. Filing Fees
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Filing fees vary depending on:
    • 25. Section 1(a) or Section 1(b)
    • 26. Whether goods/services are adequately described by “Acceptable Identifications”
    • 27. Number of International Classes
    • 28. Filing fees must be submitted at time of filing (exception for additional fee for intent-to-use applications, which must be paid upon submission of the Specimen and Declaration of Use (or Amendment to Allege Use if use begins before application is approved)).
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 29. Words, Designs, Combinations
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Applications can cover words only, an image only, or a combination of the two.
    • 30. If seeking protection for a logo with words, consider filing two applications—one for the logo and one for the words—this will protect your design and also allow for expanded use of the words-only component of the trademark.
    • 31. Trademark protection is also available under appropriate circumstances for sounds, colors and other “indicia of origin”.
    • 32. The application must accurately depict the trademark as it is used (or intended to be used) in commerce.
    • 33. Does not apply to fonts for words-only trademarks.
    • 34. For graphic marks, coloration can be claimed or disclaimed
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 35. Bases for Denial
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Trademark registrations can be (and often are) denied.
    • 36. Common bases for denial (list is non-exclusive):
    • 37. Likelihood of confusion with pre-existing registered or applied-for trademark.
    • 38. “Trademark” is generic or merely descriptive and therefore not subject to protection (note: the Supplemental Register is available for seeking preliminary protection for descriptive marks).
    • 39. No or improper Specimen of Use.
    • 40. Specimen of Use does not depict the trademark as applied for.
    • 41. “Office Actions” are issued to flag issues with registration applications. Failure to timely and adequately respond can result in denial of the application.
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 42. Obtaining Registration
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • The registration process can take nine (9) months or more, depending on the quality and adequacy of the application, and the trademark examiners’ review process.
    • 43. All trademarks cleared for registration go through a 30-day “publication” process during which third parties have the opportunity to object to the proposed registration.
    • 44. Intent-to-use trademark applications will not obtain registration until an adequate specimen of is submitted in the form of a Declaration of Use or an Amendment to Allege Use.
    • 45. Most responsive and additional related filings (such as Declarations of Use) have a six (6) month deadline.
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 46. Renewal Filings
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Trademark registrations expire if not timely renewed.
    • 47. Renewal filings (Declarations of Continued Use) and preservation filings (Declarations of Excusable Non-Use) must be filed:
    • 48. Between the 5th and 6th anniversaries of the initial registration.
    • 49. Between the 9th and10th anniversaries of the initial registration.
    • 50. Every 10 years after the second renewal filing.
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 51. Trademark Monitoring
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • Federal law requires trademark owners to protect and enforce their trademark rights. Failure to do so can lead to abandonment.
    • 52. Trademark law is intended to protect both business owners and consumers. It is not intended to grant unconditional monopolies to trademark registration applicants. As a result, trademarks that are not used and appropriately protected are subject to forfeiture.
    • 53. A comprehensive trademark monitoring and enforcement strategy should be put in place to protect the rights afforded by federal trademark registrations.
    • 54. Learn more about trademark monitoring here: What is Brand Monitoring?
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 55. eTrademarkSolutions.com’sTrademark Services
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    • eTrademarkSolutions.com provides trademark clearance and trademark registration services.
    • 56. eTrademarkSolutions.com provides both standard and customized brand monitoring packages to brand owners and entrepreneurs. Packages are available for owners of 1, 100, or more trademarks.
    • 57. Monitoring results are provided in a comprehensive trademark portfolio which includes guidance and other tools for maximizing the value of your trademarks.
    • 58. Trademark clearance, registration and monitoring services are provided for flat, monthly and annual rates (discounts provided for annual payments).
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com
  • 59. Contact Information
    eTrademarkSolutions.com
    a service of Fabian, LLC
    phone: 866.545.7859
    web: www.fabianlegal.com
    twitter: @jsfabian
    in: in/jeffreyfabian
    thank you for reading.
    ©2011 Fabian, LLC | All Rights Reserved.
    eTrademarkSolutions.com