Welcome U.S. Trademark Registration: The Attorney's Role from Clearance to Renewals Presented by Attorney Courtney Dunn Lowndes, Drosdick, Doster, Kantor

WelcomeU.S. Trademark Registration:

The Attorney's Role from Clearance to Renewals

Presented by

Attorney Courtney Dunn

Lowndes, Drosdick, Doster, Kantor & Reed, P.A. – Orlando, FL

Attorney James Hetz

Hetz, Jones & Goldberg, L.L.C. – Orlando, FL

U.S. Trademark Registration:The Attorney's Role from Clearance to Renewals

Prepared by: Attorney Evan Anderson, Esq. | Brand Ventures Intellectual Property Law – Los Angeles, CAPhone: (424) 750-9499 | Email: [email protected] | Website: http://www.bviplaw.com

Agenda:

• Introduction (10 minutes)

• Trademark Clearance (10 minutes)

• Trademark Registration Application Process (30 minutes)

• Trademark Prosecution (30 minutes)

• Break (15 minutes)

• Oppositions and Cancellations (20 minutes)

• Trademark Maintenance (35 minutes)

• Ethics in Trademark Registration Process (60 minutes)

mailto:[email protected]

What is Intellectual Property (IP)?

• Intangible property rights

• Examples:

• inventions and other innovations

• expressions

• Indication of origin

• confidential information



PatentCopyright Trade

Secret

Trademark


WHAT IS A TRADEMARK?

• A trademark is a distinctive sign or indicator used by an individual, business organization or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products and services from those of other entities

• A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.



HAPPIEST PLACE ON EARTH

Home Depot Orange

(NBC chimes)


http://www.google.com/webhp?hl=en

WHAT IS A TRADEMARK?

Governing Law:

•Federal Law: Federal Trademark Act of 1946 (Lanham Act) – 15 U.S.C. § 1051 et set.

•State Trademarks: Varies Per State Statutes

•Common Law




What are the Differences Between a Trademark and Other Forms of Intellectual Property Rights?

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.

A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.

A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.

In some instances, a client may need to protect more than one intellectual property asset, so it is necessary to consult with client to determine what they are attempting to protect and how said asset will be used.




Strength of Trademarks



Auto MechanicAspirin

Escalator

Blu-Ray


http://www.google.com/webhp?hl=en

Trademark Application Filing Basis

In Use Mark: For applications filed under the use-in-commerce basis, you must be using the mark in the sale or transport of goods or the rendering of services in “interstate” commerce between more than one state or U.S. territory, or in commerce between the U.S. and another country.

Intent to Use: If you have not yet used the mark but plan to do so in the future, you may file based on a good faith and bona fide intent to use the mark in U.S. commerce. An intent to use the mark is more than an idea and less than market ready. For example, having a business plan, creating sample products, or performing other initial business activities may reflect a bona fide intent to use the mark.

Foreign Filing Basis: Based on international agreements/treaties, an owner may file an on a foreign application/registration issued by another country (a “Section 44” application). Also, a foreign owner may file an international application in its home country and request an extension of protection to the U.S. (a “Section 66(a)” application).




Notice of Trademark Ownership Rights in the United States

A trademark owner indicates ownership of a trademark or service mark when it is not registered with the U.S. government by using a TM symbol for a trademark and a SM for a service mark.

The owners of a United States trademark or service mark that has been officially registered with the USPTO can use the ® symbol in conjunction with their trademark to denote its registered status




Client Initial Consultation

What is the proposed trademark?

What will the trademark or service mark be used in connection with?

Where will the proposed trademark be used (regionally, intrastate commerce, interstate commerce)

How and when will the trademark be used?




Trademark Clearance

One of the most important steps in the trademark consultation process is to registerability and availablity of the proposed trademark.

While the USPTO only considers pending applications and live registered marks when it determines a conflict with a pre-existing trademark, it is essential to also determine whether a third party owns a state trademark or a trademark at common law that would represent a conflict with the Applicant’s proposed trademark.

In order to determine whether a mark has a conflict at the Federal, State or common law level, it is recommended that all trademark Applicants conduct a comprehensive search that searches for conflicting Federal, State, or common law trademarks.




Trademark Clearance Search Reports:

Direct: A Simple TEAS search on the USPTO, only identical words or translations will appear

Federal: Federal: Cornerstone of the Comprehensive search, informs clients as both its registerability with the USPTO and how an element of or the entire mark has been viewed in past applications and registrations.

State: A search of all 50 states trademark directories

Common Law: A search of business directories websites, periodicals, and other resources to determine whether a trademark is in use but not registered with the USPTO or with a state trademark office.







Trademark Registration Application Process

Introduction to the USPTO (United States Patent and Trademark Office)

Electronic on-line filing with the USPTO

Owner information

The Trademark: Description Of and Information About the Trademark

Goods and Services Description

Filing Basis

Application Filing Fee:




The USPTO does NOT:

Enforce your rights in a trademark

Bring legal action against a potential infringer.

Conduct trademark searches for the public

Comment on the Validity of the registered trademarks

Assist you with policing your mark against infringers

Coordinate with U.S. Customs

Answer questions as to the registerability of a propsoed trademark




Electronic Trademark Application Process with the USPTO

Based on lower costs, speed of processing and USPTO review of an application, and the ability to confirm the submission of an application, it is strongly advised to file trademark application with the USPTO electronically.

Must decide which application form to proceed with:

TEAS Plus: $275 – When goods and services are found in the USPTO’s Identification Manual of Goods and Services

TEAS: $325 – When the goods and services are new or no longer recognized in the ID Manual

Paper Application Submission: $375 – Regardless of the existence of the goods and services in the USPTO ID Manual

























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USPTO Review: Office Actions

• Approximately 3 months from the date your application is filed, the application is assigned to an examining attorney to determine whether federal law permits registration.

• The examining attorney may issue a letter (Office action) explaining any reasons for refusing registration or other requirements.

• If you receive an Office action, you must submit a response within 6 months of the issue date of the Office action. Your filing fee will not be refunded if the application is refused registration.

• Substantive Refusals: Likelihood of Confusion, Genericness, Descriptiveness (Merely, Geographical, Surname), Other basis for substantive refusal

• Clerical Refusals: Errors or omissions in the Owner Information, the Description of the Trademark or the Description of Goods and/or Services, the Specimen, or the Correspondent Information









Trademark Publication Period

If no refusals or additional requirements are identified or if all identified issues have been resolved, the examining attorney will approve the mark for publication in the Official Gazette (OG), a weekly online publication.

The USPTO will send you a Notice of Publication stating the publication date.

If you have authorized e-mail communication, the USPTO will e-mail you a “Notification of ‘Notice of Publication’” approximately 3 weeks before the future publication date in the OG.

On the actual publication date, you will receive a second e-mail, namely, “Official Gazette Publication Confirmation” with a link to the OG. If you have not authorized e-mail communication with the USPTO, the USPTO will mail you approximately 3 weeks before publication a paper “Notice of Publication” stating the publication date.



Trademark Policing

Throughout the life of the registration, you must police and enforce your rights. While the USPTO will prevent another pending application for a similar mark used on related goods or in connection with related services from proceeding to registration based on a finding of likelihood of confusion, the USPTO will not engage in any separate policing or enforcement activities.

Tools for Trademark Policing: Trademark Watching Services Cease and Desist Letters Opposition/Cancellations Federal or State Litigations



Opposition and Cancellation Proceedings

Similar to a lawsuit

Before the Trademark Trial and Appeal Board (TTAB)

Does not affect common law rights, if any

TTAB decision is reviewable by the Federal Circuit if timely filed (60 days)

Taking such an appeal waives certain rights



Opposition and Cancellation Proceedings

• TTAB sets schedule for testimony and filings

• TTAB liberal with granting extensions of time or changes in scheduling, especially when it is stipulated among the parties

• Testimony generally taken in the form of a deposition

• Most, if not all, issues are decided on the brief's and testimony submitted



Notice of Opposition

• Must be filed during 30-Day Publication Period (or during an requested extension period)

• Can be filed by interested 3rd parties with standing

• Filing basis:•Likelihood of confusion•Genericness•Descriptiveness•False suggestion of connection•Abandonment •Fraud



Petition for Cancellation

• Essentially the same as Opposition Proceeding with the following exception•Can be filed up to five years after registration for

• Likelihood of confusion• Genericness• Descriptiveness• False suggestion of connection• Abandonment • Fraud

•Can be filed after five years of registration ONLY for

• Abandonment • Fraud



Maintenance of Trademark Registrations

To maintain your trademark registration, you must file your first maintenance (the 5-6 yr. renewal) document between the 5th and 6th year after the registration date and other maintenance documents thereafter. Then, a renewal will be due on the first during the tenth year following the registration date, and every ten years thereafter.

The USPTO does not currently send reminder notices when the documents are due, so a Trademark Attorney must rely on its own internal docketing system to monitor and meet any and all post registration deadlines.



Ethical ConsiderationsClearance Searches

Recommendation of a search: If a trademark attorney does not recommend and explain the utility and repercussions of not conducting a trademark search report, it may be found to not have fulfilled its obligating of due diligence.

Competent review and advice to client based on the trademark search report: If a trademark attorney does not review the trademark search report properly for conflicts or cite other reasons the trademark may not be register able, the attorney could be found not to fulfill its duty to perform due diligence.



Ethical ConsiderationsDeadlines

Competent filing and maintenance of trademark application: As the USPTO does not assume responsibility for the notification or filing of renewals, the trademark attorney is responsible for assuring all such deadlines are met and responded to in an adequate manner.



Ethical ConsiderationsAffidavit of Use or of Continuing Use

Required for Section 8 and 15 DeclarationsRequired for RenewalMust not include goods or services that trademark owner is not selling

If misstatement was intentional, fraud may be found

Intent to deceive is required to establish fraud Standard of proof is clear and convincing

evidence Registration will be cancelled if fraud is shown

Mere negligence does not constitute fraudHowever, registration must be restricted to reflect commercial reality



Ethical ConsiderationsRepresentation before the USPTO

Who may practice before USPTO (in trademark matters) - 37 CFR § 11.14Power of Attorney (37 CFR § 2.17(b)(1)(i))

Must be in writing and comply with PTO requirements (37 CFR § 2.17(c))

The owner of an application or registration may appoint a practitioner through TEAS (Trademark Electronic Application System) for up to 20 applications or registrations that have identical owner name and attorney (37 CFR 2.17(d)(1))

If filed on paper, there is no limit to the number of applications or registrations for which a practitioner may be authorized to represent the applicant or registrant




Termination of Power of Attorney A power of attorney filed while an application is

pending is deemed to end when the mark registers, when ownership of the application changes, or when the application is abandoned.

A power of attorney filed after registration is deemed to terminate when the mark is cancelled or expired, or when ownership changes. If the power was filed in connection with an affidavit under Sec. 8, 12(c), 15 or 71 of the Trademark Act, renewal application under Sec. 9, or request for amendment or correction under Sec. 7, the power is deemed to end upon acceptance or final rejection of the filing.




Termination of Power of Attorney (cont.) Filing of a new power of attorney revokes the

existing power. A written change of correspondence address

does not revoke a power of attorney. A revocation of power of attorney may be

signed by the applicant, registrant, or party to a proceeding; or by someone with legal authority to bind the applicant, registrant, or party.

Withdrawal of attorney requires application to and approval by the Director




Withdraw of Attorney Attorney MUST be able to declare all of the

following: I have given due notice to the

applicant/registrant of withdrawal from employment and the filing of this request for withdrawal with the USPTO.

I have delivered to the applicant/registrant all papers and property in any file concerning the prosecution of the mark.

I have notified the applicant/registrant of any responses that may be due and the timeframe within which the applicant/registrant must file the response.

I have given the applicant/registrant notice of withdrawal from employment at least two (2) months prior to the expiration of the response period.




Withdraw of Attorney (cont.)

If all requirements met, USPTO will automatically grant the request to withdraw.

If Attorney of Record is unable to satisfy the requirements on the form, the form will not validate and no withdrawal will be allowed.



Questions



Documents

Welcome U.S. Trademark Registration: The Attorney's Role from Clearance to Renewals Presented by Attorney Courtney Dunn Lowndes, Drosdick, Doster, Kantor