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Posts Tagged ‘trademark registration’

Because I like to practice what I preach, our firm owns more than 10 trademark registrations. An application to register Tuesday Trademark Tip. That application was refused registration on the Principal (or stronger) register, as the USPTO has asserted that the name is descriptive. I contested this ruling and appealed it to the administrative judges of the Trademark Trial and Appeal Board (TTAB). A hearing in the appeal was held recently.

A decision of the USPTO refusing an application for registration can be appealed to the TTAB once it is a “Final Office Action.’ The appeal is called an Ex Parte Appeal. The applicant and the USPTO examining attorney each submit briefs. A hearing is held if the Applicant requests one. And then the judges then make a ruling. The entire process can take about year from the time the appeal is started, especially if the applicant requests a hearing, which takes some time to schedule.

The decision – and the hearing if there is one – is by a three judge panel. During the appeal process, no new evidence can be entered into the record by the Applicant or the Examining Attorney. The USPTO filing fee for an Ex Parte appeal is $100.

The hearing allows the Applicant 20 minutes to argue and the Examining Attorney 10 minutes.  The Applicant may reserve some of its time for rebuttal.

The hearings are open to the public.  Parties – and even judges – may appear in person or via live video transmission.

I always advise that an appeal is an “uphill battle” but if there are strong arguments that the USPTO has ignored or evidence that has been misunderstood, it may be worthwhile to get the case in front of three new faces instead of the examining attorney who has already made up his or her mind.

     

Pictures outside of the USPTO last recently following my hearing on the Tuesday Trademark Tip application.

Timeline for trademark creation, protection and launch

Posted by ipelton on: March 25th, 2015

Of course, every new brand name has unique circumstances and timing issues. And there are a plethora of factors that can disrupt this timeline. But here is a rough ideal timeline for protecting and launching a new brand name.

  1. Search potential names for clearance, and settle on one available name.
  2. As soon as possible after Step 1, apply to register the name at the USPTO based on an intent to use the name.
  3. Application will be reviewed by USPTO approximately 4 months after filing in Step 2.
  4. Receive preliminary approval at USPTO, hopefully, four to six months after filing in Step 2.
  5. The trademark application is published in public record (the “Official Gazette”) by the USPTO approximately two months after Step 4.
  6. During the 30 day publication period, hopefully no one files an objection (“Notice of Opposition”) or an extension of time to oppose.
  7. Approximately one month after the end of the publication period, two months after Step 5, the USPTO issues a “Notice of Allowance.”
  8. Begin using the trademark in commerce anytime after the publication period in Step 6.
  9. Submit evidence of using the trademark in commerce to the USPTO and complete the registration process.
  10. 10. Receive a registration certificate approximately two months after submitting evidence of use in Step 9.

The entire registration process, for an ‘intent to use’ application, therefore takes approximately one year or longer.  If there are any delays such as a substantive refusal by the USPTO, and extension of time to oppose filed, or more than a few weeks between the Notice of Allowance and filing the State of Use, the process will take longer. If the application is completely “smooth sailing” and all filings (Statement of Use, etc) are made with days of their eligibility, it is possible to receive the registration in less than 10 months, as I did for THE NONTRADITIONAL TRADEMARK LAWYERS.

Below is the timeline from the USPTO database from on a recent registration received by a client (Registration No. 4705197), with the oldest event (filing) at the bottom:

Date Description
Mar. 17, 2015 REGISTERED-PRINCIPAL REGISTER
Feb. 13, 2015 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Feb. 12, 2015 ALLOWED PRINCIPAL REGISTER – SOU ACCEPTED
Jan. 22, 2015 STATEMENT OF USE PROCESSING COMPLETE
Nov. 07, 2014 USE AMENDMENT FILED
Jan. 15, 2015 CASE ASSIGNED TO INTENT TO USE PARALEGAL
Nov. 07, 2014 PAPER RECEIVED
Oct. 28, 2014 NOA E-MAILED – SOU REQUIRED FROM APPLICANT
Sep. 02, 2014 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Sep. 02, 2014 PUBLISHED FOR OPPOSITION
Aug. 13, 2014 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Jul. 26, 2014 LAW OFFICE PUBLICATION REVIEW COMPLETED
Jul. 26, 2014 ASSIGNED TO LIE
Jul. 15, 2014 APPROVED FOR PUB – PRINCIPAL REGISTER
Jul. 02, 2014 TEAS/EMAIL CORRESPONDENCE ENTERED
Jul. 02, 2014 CORRESPONDENCE RECEIVED IN LAW OFFICE
Jul. 02, 2014 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jun. 15, 2014 NOTIFICATION OF NON-FINAL ACTION E-MAILED
Jun. 15, 2014 NON-FINAL ACTION E-MAILED
Jun. 15, 2014 NON-FINAL ACTION WRITTEN
Jun. 12, 2014 ASSIGNED TO EXAMINER
Mar. 22, 2014 NOTICE OF PSEUDO MARK E-MAILED
Mar. 21, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Mar. 12, 2014 NEW APPLICATION ENTERED IN TRAM

EMPA Logo

Your products or services need not be flashy to have a catchy slogan. As I have written in the past, even manure companies and garbage services have trademarks. Industrial packaging companies can have great slogans. Every single service or product variety can have a brand. Electrical supply companies have brands.

IMG_5933

Earlier This week I saw the truck in the photo from Atlantic Electric Supply on the road. The name might be unexciting, but the slogan is terrific: Grounded in tradition. Connected to the future. It is witty, unique, and memorable! And it tells you something about their business — they have been around, but can keep up with recent technological changes.

If only they had been wise enough to protect the slogan better by applying to register it with the USPTO….

 

 

 

In 2013, a total of 326,306 trademark applications were filed with the USPTO.  The number of trademark filings increased in 2014, to 336,239. [These numbers come from a T.E.S.S. search conducted on January 6, 2015.]

The number of registrations issued in 2014 also grew over the prior year.

Registrations issued in 2014: 204,624

Registrations issued in 2013: 194,274

Registrations issued in 2012: 187,527

With the rate of growth in application filings and registrations issued, the USPTO trademark register indicates steady and increasing growth in the economy. There are currently more than two million ‘live’ US trademark registrations! (2,008,878 to be exact)

[Note – data retrieved from USPTO.gov on 01/06/2015]

Related posts:

Trademark Guide to the NFL Playoffs

Posted by ipelton on: January 9th, 2015

Eight teams remain in the NFL playoffs, with the conference semi-final games this weekend. More and more athletes have realized the value of their brands off the field, and I believe that a  record number of them own trademark registrations or applications today. Many players on the eight remaining team – and even coaches – have USPTO trademark applications or registrations.

Here are some of the highlights [click names/logo for USPTO records]:

 

Packers:

  • Aaron Rodgers – Endorsement services, namely, promoting the goods and services of others

Cowboys:

  • Trademark image- Sporting goods, namely, footballs

Patriots:

  • REVIS ISLAND – t-shirts, sweatshirts, sweatpants, hats, footwear, sleepwear, swimwear
  • Trademark image[Tom Brady] – entertainment and education in the nature of on-going audio visual and multimedia interactive programming providing information on celebrities distributed over a global computer network; Clothing, namely, hats and shirts
  • WILFORK YOU UP - T-shirts

Ravens:

  • HALOTI NGATA FAMILY FOUNDATION – Charitable fundraising services by means of arranging, organizing and conducting projects, entertainment and social events; charitable services, namely, providing financial support to underprivileged and disadvantaged individuals, educational organizations and medical research organizations
  • JOE FLACCO – Entertainment in the nature of competitions in the field of athletics; Entertainment in the nature of football games; Entertainment in the nature of football games; Entertainment services, namely, participation in promoting charities; Entertainment services, namely, personal appearances by a football player; and more
  • Trademark image & LACE UP SON – [Steve Smith] Charitable fundraising services by means of running and walking events

Colts:

  • CHUCKSTRONG – Charitable fundraising to support cancer research and procedures

Panthers:

  • Trademark image & CAM NEWTON – Men’s, women’s and children’s clothing associated with a professional sports athlete, namely, sports caps and hats, sports pants, sports shirts, baseball caps, caps, fleece pullovers, fleece tops, footwear, hats, headwear for winter and summer, hooded pullovers, hooded sweat shirts, knitted caps, athletic shoes, long sleeve pullovers, moisture-wicking sports shirts, pants, pullovers, shirts, shoes, socks, sweat shirts, sweat pants, T-shirts, tee shirts, tops
  • RIVERBOAT RON – Clothing, namely, T-shirts, sport shirts, polo shirts, knit shirts, golf shirts, dress shirts, sports caps and hats
  • RON RIVERA – Educational and entertainment services, namely, providing coaching in the sport of football, motivational speaking in the field of sports and leadership, and educational speaking in the field of sports and leadership

Seahawks:

  • BEAST MODE – t-shirts
  • DANGERUSS WILSON – Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Entertainment services, namely, participation in professional football; Entertainment services, namely, personal appearances by a professional athlete

Broncos:

  • Trademark image- charitable fund raising services