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Posts Tagged ‘trademark registration’

The USPTO asked users to submit comments regarding proposed changes to the formatting of online declarations that are part of trademark application and renewal filings.

We submitted the following comments: 

[Note that you can submit comments, comment on other submissions, or “upvote” them to indicate support]

Comments regarding proposed changes to declaration format

It appears that the USPTO wishes to increase the “solemnity” of the trademark application declarations in response to the Section 8 & 71 pilot project that revealed more than half of all renewals included at least partially overbroad statements of continued use. Considering that these declarations are already made under penalty of perjury, I am not sure how big an impact the increasing solemnity might have on the problem.

Even so, it seems that the PTO believes the issue is not the seriousness of the language itself, but instead that signatories may not be carefully reading and appreciating the significance of the attestations they are making. I wholeheartedly agree. The best solution, however, is not merely to restructure the paragraphs of the declaration, but to restructure the way that all text is presented throughout the TEAS forms. The declaration is just one of myriad blocks of text and warnings appearing throughout the form. The solemnity of the declaration, especially to inexperienced users, is obscured not because it is a large block of text, but because it is one of many paragraphs of legalese spread throughout the TEAS forms.

Users filling out a form within TEAS are confronted with numerous long blocks of text and various warnings, many of which are presented in garish, hard-to-read red fonts. Many of these blocks of text appear even when they are not relevant to the particular needs or choices of the user. While experienced TEAS users know what to look for, a novice user must painstakingly filter through each block of text to determine which are relevant. Nothing distinguishes those that are important from those that are not. As a result, the declarations can easily get lost in the shuffle.

If the PTO wants to ensure the solemnity of the declarations, they should start by changing the way text in general is presented throughout the forms. Distinguishing the declarations from the rest of the form would substantially increase the weight and attention users give them.

As the PTO begins the process of updating all TEAS forms, I hope it is mindful of this presentation issue. Streamlining the forms will make them more understandable and user friendly. Although the PTO must be thorough in providing information on TEAS forms for the sake of novice users, there are ways to prevent the sheer volume to information from becoming unintelligible walls of text. Perhaps the PTO might even consider multiple versions of the TEAS forms for users with differing degrees of experience.

– Erik M Pelton & John C Heinbockel on behalf of Erik M. Pelton & Associates, PLLC

For all of the comments, including those submitted by other practitioners, see: http://uspto-tmep.ideascale.com/

 

The USPTO recently asked for public comments regarding proposed changes to renewal filings, namely a program whereby 10% of submissions may be required to submit additional evidence of use beyond the current requirement of one specimen per International Class of goods and/or services.

Our firm submitting the following comments:

Others, including major IP associations, submitted comments as well. Many of the comments supported the program, many expressed concerns about how it will be implemented.

The full text of all the comments submitted to the USPTO can be found here:

The ABA-IPL Trademark Day is a unique event. I have been fortunate to have been involved in the planning of the first event. I am not aware of any other event that provides as much detailed information and insight from USPTO trademark staff. And the cost is a bargain at $50 for the full day including lunch.

This year’s program will be the fourth annual  program and is again at the USPTO headquarters in Alexandria, Virginia. The topics covered include examination policy, identification practice, TEAS enhancements, letters of protest, a live TTAB hearing, assignments, and more.

Scheduled USPTO speakers include:

  • Commissioner for Trademarks Mary Boney Denison
  • Chief Administrative Trademark Judge, The Honorable Gerard F. Rogers
  • Steven R. Berk, Trademarks Chief of Staff
  • Jennifer Chicoski, Administrator for Trademark Policy and Procedures
  • Tanya Amos, IT Trademark Legal Administrator
  • Karen Strzyz, Staff Attorney, Office of Petitions

I hope to see you there on September 14th!

For the full program and registration, see:

https://www.americanbar.org/groups/intellectual_property_law/events_cle/trademark-day-2016.html

4th Annual ABA-IPL Trademark Day:
Behind the Scenes at the USPTO

September 14, 2016
8:30 am – 4:30 pm
USPTO Headquarters
Alexandria, VA

Register Online

Trademark Day

What is a “Standard Character” trademark?

Posted by ipelton on: August 17th, 2016

When applying to registered a trademark at the USPTO,  the mark itself can be one of several types. The main types are:

  • Standard Character
  • Design
  • Motion
  • Sound

By far, standard character and design marks are the most common. A design mark is any mark that is a logo or otherwise needs to be drawn and submitted in a two dimensional image. A standard character mark is plain text, usually submitted in all capital lettering.

Registration of a design mark protects just that exact design (or variations in color if the design is submitted in black and white).

Registration of standard character mark protects the wording regardless of the form in appears in. In other words, all fonts, styles, colors, and upper- lower- case variations are covered by a standard character registration.

As a result, a standard character registration is broader and more flexible. Therefore, it is generally more desirable and more important than registering the design of the wording in the mark.

For more on this topic, see:

Five basic trademark application tips

Posted by ipelton on: May 10th, 2016
The trademark application process at the USPTO is generally long, complex, and full of deadlines. Errors have the potential to limit or jeopardize your trademark rights, result in a void application, delay the application process, or result in loss of the non-refundable USPTO filing fees.
When I file trademark applications with the U.S. Patent and Trademark Office (I have filed more than 3,000), here are 5 tips I follow:
  • Search first. Search the USPTO (consider variations in spelling, spacing, and word order) so that you know what potential obstacles lie in front of the application. Of course, a comprehensive clearance search should be done as well because someone using a similar mark prior to you in a related or competing industry, even if they do not have a registration, is a significant potential problem.
  • Words are generally more important than designs. A registration for a design technically covers just that design. A registration for words (a “standard character” trademark) covers all variations of the wording. In other words, when you register a logo you can only use ® next to the logo. When you register words, you can use ® whenever those words are used – in text, in logos, and more. Registering words alone will also provide better protection regarding domain names and usernames.  Note that creative and distinctive logos should be protected, but they should be generally be protected in a separate application. But while generally protecting wording is more important, sometimes the best registration strategy – due to descriptiveness issues or potential conflicts – may be to file only for a design.
  • Black and white is better than color. A large majority of the time, it makes sense to file in black  and white, which protects all colors, rather than to technically protect only the color scheme provided in a color image.  Of course, when color is integral to the brand, it may make sense to file in color – or to file two applications, one black and white and one covering particular colors.
  • Be Patient. It takes the USPTO about 3 months on average to open a new application and review it for the first time (and this is much better pendency than in the past).  In general, when filing based on use of the trademark in commerce, the entire registration process takes about 1 year – and can take far longer if there are hiccups in the process or a “suspension” of the application pending the outcome of some other earlier filed applications.
  • Check the status. To make sure the process is completed as quickly as possible, it is advisable to stay on top check the status every month or so – at a minimum – via the USPTO website to ensure that a correspondence from the USPTO – generally via email – was not lost or missed. Our custom built internal software checks the USPTO status for each application we handle every single day – and is a savior because on occasion USPTO emails get bounced,  or physical mailings get lost, delayed or sent to the wrong address. I have also created a free cloud-based tracking tool that anyone can use, sofTMware (www.softmware.com).
The  “road” to registration is full of bumps, potholes, detours, wrong exits,  and toll booths. The end of the “road” that results in a trademark registration is worth the trip to strengthen a brand, create tangible intellectual property assets, and make issues with infringers generally much easier, quicker, and cheaper to resolve. When embarking on the application trip, keeps these tips in mind and remember that the guidance of an attorney “chauffeur” who has navigated the course many times before will make the ride much safer!