STEPS TO A STRONG TRADEMARK
Trademarks are any word, term, name, symbol, or device, or any combination thereof that are used in commerce as brand names, tag lines, slogans, non-
WHY TAKE THE TIME AND MONEY TO GET HELP ON MY TRADEMARK REGISTRATION?
Purchasing decisions are continually influenced by trademarks by distinguishing products from one another and indicating a level of authenticity and quality about products and services. The International Trademark Association calls a trademark the most efficient commercial tool ever devised.
Creating and protecting an earned legal right should be a very important goal for all businesses. Being able to associate a product or service with ® to designate a federally registered trademark is a strong marketing tool. Not Just Patents® Legal Services incorporates strategies for success into trademark registrations. The answers to these questions should be considered before applying for a trademark registration if a strong trademark is desired as a result of the registration.
The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, 189,687 applications were abandoned in 2009 (about 44% of disposals). All of the above questions involve fact-
Not Just Patents® is a registered trademark of Not Just Patents LLC, R/N 3556868 on the Principal Register.
STEP 1 CREATE A VALID MARK
(we suggest a strong mark) to indicate the source of goods (trademark) and/or services (service mark).
There are several different Types of Trademark Registrations
* Trademarks associated with goods or products;
* Service marks associated with the delivery of services;
* Certification marks associated by the characteristics of someone’s goods or services; and
* Collective marks indicated by membership in an organization.
There are usual types of trademarks: Word Marks (standard character format), Design Marks (stylized format, 2-
There are also unusual types of trademarks including:
* Shape (example: Bottle shape for wine, cola);
* Color (example: Pink color for insulation);
* Sound (example: TiVo-
* Scent (example: Medicated transdermal patches where the mark is a scent mark having a minty scent by mixture of highly concentrated methyl salicylate and menthol.); and
* Motion (example: Flying pegasus for movie studios).
Note: The general terms ‘trademark’ or ‘mark’ are often used to represent all categories of trademarks. BUT when applying for USPTO or state trademark registration, the applicant should know which category (trademark, service mark, certification mark, collective membership mark, collective mark) is being claimed so that the right type of specimen can be submitted.
What is a Strong Trademark? Distinctiveness is the measure of the inherent strength of a mark. A distinctive mark is one that does not describe the product or service directly, is not used by competitors to describe their product, and is unique. Words/terms that are created rather than pulled from dictionary use or words/terms that are used outside of their normal meaning can be the most distinctive. See inherentlydistinctive.com for more information.
The stronger the trademark the greater protection received from the USPTO and courts.
STEP 2 VERIFY THE ‘RIGHT TO USE’ The right to use a a mark is determined by verifying no prior owner has acquired the superior rights by use or by registration in federal, state or common law markets (registered and unregistered). Common law rights for unregistered marks are geographic in nature and belong to the first user of a non-
STEP 3 THE RIGHT TO REGISTER a mark with the USPTO is determined by the Trademark Act and USPTO rules and guidelines. Verifying that you have the right to register before you apply may avoid or reduce refusals & office actions, and can avoid investing time and good will in a name or use of a name that cannot be federally registered on the Principal Register. One example of a potential trademark that will cause problems at the USPTO because of the right to register is geographically descriptive or geographically misdescriptive trademarks. Other examples of marks that are difficult or impossible to register are descriptive trademarks or words or designs that do not function as a trademark.
STEP 4 USE THE MARK IN COMMERCE to gain common law rights and as a precursor to registration. State registrations require bona fide use in commerce before registration (an extension of common law rights). The USPTO’s most common filing basis-
STEP 5 SPECIMEN SELECTION & REVIEW
Specimens must show the mark as it is seen by the purchasing public; show the mark functioning as a mark; and provide evidence for registration. Many applications are refused because the specimens do not show a trademark used correctly, do not show the same mark that was submitted in the drawing or show an ® on the label before the trademark has actually been registered.
STEP 6 IDENTIFICATION OF GOODS AND SERVICES. The identification of goods and services must be specific, definite, clear, accurate, and concise. Misidentification of goods and services is the most common issue in trademark rejections.
STEP 7 APPLY FOR TRADEMARK REGISTRATION ®
As a business grows, success in the marketplace may depend on how well the creativity that fostered that growth is protected. Federal Trademark Registration ® is an important way to protect brands, logos, tag lines, slogans and designs.
Not Just Patents® Legal Services can help you plan a registration strategy that takes into account the facts of your business to help ensure success. Rushing or zooming through a trademark application using fill-
STEP ? RECEIVE OFFICE ACTION(S) FROM USPTO (we try to avoid this step!)
There are two basic possibilities: No Objections-
Not Just Patents® Legal Services can help you avoid office actions and get a faster registration. We have registered marks start to finish in as fast as 7 months. We have successfully answered office actions for applicants who submitted their own applications that were refused or were zoomed by a filing service and refused and have answered office actions on the same day requested. We cannot guarantee same day service 365 days a year so try to plan ahead!
STEP 8 APPLICANT’S RESPONSE TO OFFICE ACTION Applicants (or their representatives) must address each issue raised by the examining attorney and responses to office actions must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned. See more . . .
Marks that have been approved for the Principal Register are published in the Trademark Official Gazette. An OPPOSITION is a proceeding in which one party is seeking to prevent registration of another party's trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, he/she can file an opposition. For more information, see TTAB Facts and Questions.
(A CANCELLATION is a proceeding in which a party seeks to cancel an existing registration of a mark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel.)
STEP 10 CERTIFICATE OF REGISTRATION (for actual use) or NOTICE OF ALLOWANCE (intended use). If there is no opposition, the trademark will register and the applicant will receive a Certificate of Registration. If the filing was for an Intent-
STEP 11 TRADEMARK MARKING
The ® symbol can only be used (for the U.S.) after a USPTO registration has been issued and only for the goods or services for which it was registered. Note that the ® symbol cannot yet be used after the Notice of Allowance, the mark must first finish the registration process.
STEP 12 ENFORCEMENT/MAINTENANCE
The USPTO does not enforce rights to a trademark. It is up to the owner of a mark to monitor and protect their own rights through civil or criminal means. Trademarks may be protected from imported counterfeits. See Anti-
A trademark owner must maintain a trademark by continuing to use the trademark in commerce and by filing for Continued Use or Excusable Nonuse and Renewal at the appropriate times.
STEP 13 (optional for Principal Registrations, not available for Supplemental Registrations) RECORD TRADEMARK OR TRADE NAME (OR TRADE STYLE) WITH U.S. CUSTOMS AND BORDER PROTECTION
Trademarks that have been registered on the USPTO Trademark Principal Register can be recorded and protected through U.S. Customs and Border Protection and through the International Trade Commission.
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