August 18, 2009

HOW TO AVOIDHOW TO AVOID

ERRORS & COSTSERRORS & COSTS

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TrademarksTrademarks

Common useCommon use No registrationNo registration

State TrademarkState Trademark State protection onlyState protection only

Federal TrademarkFederal Trademark US protectionUS protection Bases for international trademarkBases for international trademark

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Trademark SymbolsTrademark Symbols

TM – trademark when you claim TM – trademark when you claim rights in a mark for goodsrights in a mark for goods

SM – service mark when you claim SM – service mark when you claim rights in a mark for goodsrights in a mark for goods

® - Only when the USPTO actually ® - Only when the USPTO actually registers the mark (after grant)registers the mark (after grant)

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File a TrademarkFile a Trademark

Electronically using TEAS at Electronically using TEAS at http://www.uspto.gov/teas/index.htmlhttp://www.uspto.gov/teas/index.html

24 hour available24 hour available Checks form for accuracyChecks form for accuracy Proof you filedProof you filed Must pay fee on-lineMust pay fee on-line

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Need an Attorney?Need an Attorney?

No. But you must comply with all the No. But you must comply with all the requirementsrequirements

Read all the Statute and RulesRead all the Statute and Rules Mistakes are costlyMistakes are costly

Principal registerPrincipal register Supplemental registerSupplemental register ResponsesResponses AppealsAppeals

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What Needs to be Filed?What Needs to be Filed?

Applicant’s nameApplicant’s name Usually an LLCUsually an LLC Owner of MarkOwner of Mark

Name & address for correspondenceName & address for correspondence Email and surface mailEmail and surface mail

Depiction of the MarkDepiction of the Mark Word markWord mark Logo Logo ColorsColors

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Errors in Filing for these ItemsErrors in Filing for these Items

Applicant’s named wrong, wrong Applicant’s named wrong, wrong entity, or not LLC at time of filingentity, or not LLC at time of filing

Word mark with design elementsWord mark with design elements Word mark with color not neededWord mark with color not needed Logo - change mind later on logo not Logo - change mind later on logo not

good as must be exactly as filed; good as must be exactly as filed; clear drawing; if colored, must clear drawing; if colored, must specify locations and colors correctlyspecify locations and colors correctly

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What Needs to be Filed?What Needs to be Filed?

Goods or Services ClassificationGoods or Services Classification From ManualFrom Manual

Bases for filingBases for filing Intent to use [1(b)]Intent to use [1(b)] Actual Use [1(a)] – specimen for each Actual Use [1(a)] – specimen for each

classclass

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Errors in Filing for these ItemsErrors in Filing for these Items

Classifications are inaccurate – did not Classifications are inaccurate – did not review list enoughreview list enough

Need to list more than 1 class for the Need to list more than 1 class for the goods or service for the activitygoods or service for the activity

Filed actual use [1(a)] but did not ship Filed actual use [1(a)] but did not ship outside the State (interstate) – proof and outside the State (interstate) – proof and paid; mark on goods and container, sold paid; mark on goods and container, sold and shipped; date first usedand shipped; date first used

Intent to use [1(b)] and do not meet that Intent to use [1(b)] and do not meet that requirement requirement

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Errors in Filing for these ItemsErrors in Filing for these Items

SpecimenSpecimen Cannot see word mark on the goods Cannot see word mark on the goods Cannot see logo on the letterhead or Cannot see logo on the letterhead or

goodsgoods Submit wrong items for proofSubmit wrong items for proof

Signature - wrong person signedSignature - wrong person signed officer of LLC officer of LLC owner of the markowner of the mark AttorneyAttorney

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CostsCosts

Electronically using TEAS + = $275 Electronically using TEAS + = $275 per classper class

Attorney timeAttorney time ProsecutionProsecution SOU if [1(b)]SOU if [1(b)] AppealsAppeals Global MarkGlobal Mark

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Prosecution of MarkProsecution of Mark

Legal and Procedural Review by Legal and Procedural Review by Examiner for Principal RegisterExaminer for Principal Register

Looks for conflicting Marks; confusion Looks for conflicting Marks; confusion of Marksof Marks

Mark may not be descriptive, Mark may not be descriptive, geographic, surname or ornamental, geographic, surname or ornamental, etc.etc.

Office Action then 6 months to replyOffice Action then 6 months to reply Only 2 Actions then appeal [TTAB]Only 2 Actions then appeal [TTAB]

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OppositionOpposition

Published then can be opposedPublished then can be opposed 30 days from publication to file the 30 days from publication to file the

opposition or request extension of opposition or request extension of timetime

TTAB hears these casesTTAB hears these cases

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CertificateCertificate

If actual use [1(a)] and no opposition is If actual use [1(a)] and no opposition is filed, then USPTO registers the Mark ~12 filed, then USPTO registers the Mark ~12 weeks from publicationweeks from publication

If intent to use [1(b)] then notice of If intent to use [1(b)] then notice of allowance issues ~12 weeks from allowance issues ~12 weeks from publication & 6 months laterpublication & 6 months later Must submit SOUMust submit SOU Request 6 month extension for SOU $150/classRequest 6 month extension for SOU $150/class Maximum extension = 3 years totalMaximum extension = 3 years total