MyBrandMark.com is a law firm specializing in trademarks and patents.
Office Actions – My Brand Mark Blog. All applications filed with the USPTO undergo review by an attorney examiner.
The examiner’s job is to ensure that there are no procedural issues with your application and that the trademark you are seeking to obtain is eligible to register. If the examiner finds an issue with your application, they will issue an Office Action. Once issued you will have six months from that date it was issued to respond to all the issues it contains. If you do not respond to an Office Action within six months, then your application will be abandoned. Once abounded you have two months from the date of abandonment to file a petition of revival.
Filing your application online – My Brand Mark Blog. Can I obtain Federal registration for my foreign trademark? – My Brand Mark Blog. The answer is likely yes.
The US is one of the largest markets in the world and for an expanding business it is important to ensure your protections are in place. As long as the country you are from is part of a trademark convention with the United States or is reciprocal to US citizens, you can use your foreign registration or application as a basis to file with the Federal government. The foreign filing you are using as a basis for your new US application must have been filed in your country of origin. Foreign applicants are allowed to file as long as they have an intent to use their trademark and may use the date of filing on their foreign application or registration as their date of filing on the US application.
Do not forget to provide translations for all required foreign documents and it may also be a good idea to appoint a domestic representative, someone familiar with this process that will likely be foreign to you such as a licensed attorney. What is a drawing? – My Brand Mark Blog. A drawing is, in essence, your trademark.
It is the exact representation of your trademark as you are, or intend, to use it. Drawings can be “typed” or they can be “special form drawings. A drawing is typed when it only standard Latin characters (words, numbers, letters). Drawings that are special form are those which contain a specific design, style, or color. Making sure your specimen is correct – My Brand Mark Blog. When filing a trademark application, you will have to include a specimen at some point in the process.
A specimen is a sample that shows that you are using your trademark in commerce. What is exactly needed varies from application to application depending on your goods/services and what class they are in. Each international class included on your application will require a separate specimen. The sample should show your trademark being used on your goods/services or in connection with them. Describing and classifying your goods/services – My Brand Mark Blog. You know what your goods or services are, but describing them accurately and in way that will protect your trademark is not always easy.
For starters your description should only include the items which you are currently or intend to use your trademark on. Generally, the best descriptions are brief, using common commercial names, and not vague or broad. Goods/services also have to be classified. The USPTO categorizes applications by putting them into classes (or international classes). I missed my deadline, what can I do? – My Brand Mark Blog.
Did your deadline pass?
Do not panic, there may be a chance your trademark application can be revived. A petition for revival can be filed within 60 days (2 months) from the date of abandonment. If more than 2 months have passed, then your only option is to file a new application. A petition for revival requires additional government fees. Abandonment occurs when the USPTO has not received a response by the deadline specified. What is a Statement/Proof of Use? – My Brand Mark Blog.
If you received Notice of Allowance (NOA) from the USPTO that means you are close to registering your trademark.
The USPTO has decided your trademark is allowed and you now have to demonstrate to them that you are currently using your trademark in commerce. A Statement of Use (SOU) is what will demonstrate that you are doing so. You have 6 months from the NOA to file an SOU or an Extension. An Extension will grant you an additional 6 months to file an SOU. Up to six Extension may be filed for a total of all 3 years, although note that all applicable fees must be paid for each Extension. An Explanation of the Principal Register and the Supplemental Register – My Brand Mark Blog. The Principal Register offers the strongest federal protection for your trademark.
It affords you all of the benefits of Federal Registration. Marks allowed on the Principal Register are ones that are either arbitrary/fanciful marks or marks that have may be descriptive, but have obtained a secondary meaning. Sometime when denied the Principal Register a mark is given the option to be placed on the Supplemental Register. This occurs when a mark is descriptive, but has not yet acquired a secondary meaning. The Supplemental Register gives these marks time to acquire a secondary meaning while giving them certain benefits. Why Federal Registration is important – My Brand Mark Blog. Federal registration is one of the strongest forms of protection for your trademark and offers you many benefits.
In certain cases, State registration may be enough, but generally Federal registration is preferred. Those thinking about infringing on your rights will think twice knowing that you have gone through the proper steps to protect your trademark with the Federal government. Federal registration is evidence that you own your trademark and that you have the exclusive right to use the mark on your applied for goods or services in commerce. How to use a trademark – My Brand Mark Blog. Use it or lose it – My Brand Mark Blog. Merely thinking of a great trademark is not enough, you have to use it.
This does not mean that you have to be selling your goods, but you have to be using it publicly. Public use of your trademark will establish your priority and increase your protection. A few examples of public use other than actually selling your goods include presale announcements and soliciting/accepting orders. Searching existing trademarks – My Brand Mark Blog. Before filing a new trademark application, it is very important to search for existing or prior pending marks that may conflict with yours.
The importance of this cannot be overstated. For starters this search will give you a good idea on how strong of a protection your trademark will offer. If there are many similar trademarks for products related to yours, then you may want to consider other options. An overview of trade dress – My Brand Mark Blog. Trade dress is the entirety of your product and can be used as a trademark. Trade dress is what make your goods unique. It includes all of your products feature’s including shape, size, color, images, etc.
Trade dress usually comes in two forms, as a package/label or a product design. In order to protect your trade dress mark it is important that the trade dress be nonfunctional, indicate the source of your goods because it is distinctive, and that use by a competitor would cause confusion. Using color as a trademark – My Brand Mark Blog. What can be used as a trademark? – My Brand Mark Blog. It is possible to use many different things as a trademark. While not an exhaustive list these are some of the most common: slogans, letters, numbers, foreign language, and designs. Slogans can be registered if they can standalone when not on a label, are not explanatory/informational, are not a familiar expression, and are not just part of a phrase.
Numbers and letters can function as very good trademarks when their combinations have no recognizable meaning. If the combination is a recognizable abbreviation and descriptive of the goods, then a secondary meaning will have to be shown. Can I trademark a Name or Place? – My Brand Mark Blog. While it is possible to trademark a name or place, there are many limitations.
Full names and surnames can only be trademarked if there is a secondary meaning associated with them and as long as you are not infringing on the right of another person using their own name or a company with a similar name. Geographic terms can be trademarked as long as they are not descriptive of the origin of the goods. Selecting a trademark – My Brand Mark Blog. Not all trademarks are created equal. Some are better than others and easy to register and protect. Before filing your application there are things you should consider. The viability of a mark can be classified into four categories: generic, descriptive, suggestive, and arbitrary/fanciful. The last category, arbitrary/fanciful, is the most powerful and easiest to register. These are trademarks that have an ordinary meaning completely unrelated to the goods they are on or were entirely made-up specifically to identify your goods, services, or brand. Confused about what a trademark is? Here are the basics! – My Brand Mark Blog.
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