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Tag: trademark application

Reviving an Abandoned Trademark Application

A trademark application will be abandoned by the Trademark Office if a deadline passes without you taking certain action. This can happen, for instance, if the Trademark Office has issued you an Office Action that requires a response, and the normal 6-month period for response elapses. It will also happen if you filed an intent-to-use trademark application, the Trademark Office sent you a Notice of Allowance, but you failed to submit a Statement of Use within 6 months showing that you were properly using the mark in commerce.

 An abandoned trademark application isn’t necessarily lost and gone forever. While in some cases you may have to re-file the application anew, in other cases, you may be able to petition for the revival of the application.

There are limitations on these petitions to revive. They must be filed within 2 months of the abandonment, or within 2 months of the Notice of Abandonment. Your failure to make the original response deadline must have been unintentional, and you must swear to this. The petition has to be accompanied by a petition fee, and by whatever response or action was due on the original deadline.

Time is of the essence when a trademark application has been abandoned. It is therefore important that you act quickly to revive the application if it is your intent to do so. Additionally, you should respond correctly. For those reasons, consider hiring a trademark attorney to handle the petition to revive, to help ensure that the time and money you’ve already invested in the trademark application up to this point isn’t unnecessarily wasted.

Ascribing a Date of First Use to a Trademark

All trademark registrations filed under Sections 1(a) or 1(b) of the Lanham Act carry a date of first use. In those registrations that are filed as intent-to-use applications, the date that the mark is first used is typically very easy to pinpoint. However, for registrations that begin as in-use applications, the date of first use is sometimes difficult to remember. If a company has been using a mark for several years, it can often be quite hard to pinpoint when that use first began, especially if the date wasn’t linked to a major launch (companies often launch a new product or brand at conventions and can remember the date of the convention).

When an application is filed, the applicant must specify the date that it first used the mark anywhere and the date that it first used the mark in commerce. These dates must be accurate and definite. It isn’t enough to say “June 1999” or “2010.” Instead, the date should be entered as the last day in that period. For instance, if the business knew it started using a mark sometime in June 1999, then the acceptable way to enter that date would be as the last day of June 1999: 06/30/1999. The application will then state that the mark was in use “at least as early as 06/30/1999.”

Insurance Extension Requests in Section 1(b) Trademark Applications

When an Section 1(b) intent-to-use trademark application receives a Notice of Allowance, the applicant has six months to file an acceptable statement of use to prove that the applied-for mark is being used in commerce. Applicants that fail to file by the six-month deadline can request a six-month extension, and indeed, can continually file those requests extending the time for a statement of use out to a maximum of three years from the Notice of Allowance.

A statement of use can be filed anytime during a currently pending six-month period. However, any corrections to a filed statement of use must also be filed within that six-month period or within an extension period following afterward (if available – an extension period can’t extend past the 3-year mark). Applicants place themselves in risky situations when they file on the last day of the six-month period or close to the last day of a six-month period – if anything goes wrong, it will likely be impossible to correct the deficiency within the period.

To dampen that risk, an “insurance extension request” can be filed. An insurance extension request is a hedge against your statement of use. If the request granted, the extension provides you with an extra six months to correct any problems with your statement of use.

Why would you file an insurance extension request, especially there are filing fees associated with it that might be forfeited if you don’t need it? Well, there is a certain amount of processing time in the Trademark Office. It is highly unlikely that a statement of use will be evaluated and accepted or rejected the same day it is filed. The statement of use is first assigned to ITU staff and is then forwarded to the Trademark Examiner assigned to the application. This can take often take a week or two. If you file a statement of use one or two days before it is due, there is little chance that the filing will even land on the Trademark Examiner’s desk before that deadline has already passed. If the statement of use is acceptable, that’s fine. But if the specimen doesn’t show the mark quite right, or the Examiner thinks that the goods shown in the specimen are different from the goods identified in the application, there may be a problem that can’t be cured. So there is a chance that you will lose out the $100 / class fee for the insurance extension request, but failing to file one could cost you the application if there are problems in the statement of use.

Should I use LegalZoom for my Trademark Application?

Trademark applications mature into trademark registrations and can be very important and valuable assets for a business.  Anyone can file a trademark application, and most people can successfully “register” a trademark.  However, the value of a DIY trademark is dubious, and, more importantly, its value usually isn’t called into question until just when you need it.

I’ve had clients call me before and ask me whether they can file a trademark application themselves or whether they should use LegalZoom for help.  I don’t like to tell people to use or not use LegalZoom, but there are some factors to consider.  First, services like LegalZoom are not attorney services.  Attorneys provide guidance.  One of our chief functions is that of counselor: we provide advice professionally.  When a trademark client hires me, we often spend a lot of time just talking about the mark itself: how it was picked, how it is being used, how long it has been used, the kind of power it commands with customers, whether they have other marks they are using or are considering using, whether those marks should be registered or not, how to develop new marks and build new branding.  Lots of topics.  And I give out advice when we talk about these things.  LegalZoom doesn’t give advice (they acknowledge it) – they take input, namely, the input you provide to them, whether right or wrong.  LegalZoom does spellcheck your application, but you aren’t too likely to misspell your mark or your name, right?

Hiring an attorney to file a trademark application is generally not very expensive, especially when compared with the value that a properly-filed and maintained trademark registration provides.  Most trademark attorneys charge a flat rate to file an application, so you can know and control your budget.  Granted, LegalZoom is almost certainly cheaper, but the difference isn’t much – perhaps a few hundred dollars.  That hundred dollars should buy you many things: a correctly-filed application, peace of mind it was done properly, advice when you need it, someone to watch and remind you of maintenance fees required on the registration, and a host of other things.

I sometimes take on cases that I haven’t filed originally.  Sometimes, clients make careless mistakes in filing the application themselves.  Totally forgivable.  Sometimes, the client gets an Office Action and doesn’t know what to do with it.  Totally understandable.  Sometimes, the client has butchered an application and we have to start all over.  I hate to see these cases because I know the client is now spending more money (and time) than had he or she just come to talk to me in the first place.

I’ll draw an analogy to electrical wiring.  Anybody can connect a light fixture and a junction box with some Romex.  That doesn’t mean the lights will come on.  Many people can do it and yes, provide power to the light so that it turns on.  That doesn’t mean the house won’t burn down.  Only some people can do it to code with the assurance that the lights will stay on and the house will stay standing.  If you’re not one of those people – or if you can’t say that you know what you are doing – stay away from the electrical.  The lights may never come on.  Or they may work fine right up until the point that they don’t – they come on, but someday the insulation catches fires.  At that point, you’ll wish you had hired the master electrician for $250 to do it.

And that’s the deal with trademark applications – they work until they don’t.  You’ll have a false sense of security (or it may keep you up at night) unless you get the advice of a trademark attorney.  As someone on the net said, and I apologize because I can’t find the source: “filling in blanks in a form is easy, doing it properly is another matter entirely.”

Differences between the Principal Register and the Supplemental Register

When trademark attorneys talk about registering trademarks (not “trademarking”), they generally mean registering a trademark on the Principal Register.  We all aspire to have an application show up here, but sadly, we aren’t always so successful.  There is another, seedy, underworld of trademark registration, where those marks that couldn’t quite make it to the Principal Register go: the Supplemental Register.

Ok, the Supplemental Register isn’t so bad.  It is a sort of trademarky-Purgatory, a place where marks sit until they earn the graces to become part of the Principal Register.  Those graces come in the form of secondary meaning, or acquired distinctiveness.  Marks that are registered on the Supplemental Register include geographic terms, surnames, and descriptive marks: ones that do not signal to the consumer source of the product.  They lack that little bit of distinctiveness that separates them from “true” trademarks, which indicate the source of the product or service.  However, marks on the Supplemental Register can earn secondary meaning, and when they do, they become eligible for registration on the Principal Register.

Another difference between the Principal and Supplemental Registers is that there is no opposition proceeding for marks placed on the Supplemental Register.  Those marks are never published, and thus, if a third party wishes to remove the mark, it must wait for a cancellation proceeding.  However, if the mark is moved to the Principal Register by way of filing a new application, then it will be published and an opposition is possible.

The Supplemental Register offers a number of benefits.  Marks registered there can be the basis for a federal lawsuit (common law trademarks cannot).  Registration also can provide the platform for international trademark applications.  Registration on the Supplemental Register blocks applied-for marks that are similar to the registered mark.  And of course, the Supplemental Registers allows mark owners to use that little ® that they so often want.

Foreign Language Trademarks and Non-English Trademark Applications

Trademark registration applications for non-English words present special challenges.  Trademark examination at the USPTO normally considers whether there are similar marks already registered that would prevent the applied-for mark from being registered.  Typically, the USPTO considers the look, sound, and meaning, along with other factors, of a mark and the class of goods and services with which it is used when deciding if it is similar to another mark.

When the applied-for mark is in a foreign language, the application must include a translation or a trans-literation of the mark so that the meaning can be ascertained and compared with other marks.  If the foreign mark is written with letters from the Latin or Roman alphabet, as a German, French, or Spanish word might, then a translation should be provided.  If the foreign mark is composed non-Latin-based letters, such as Cyrillic, Chinese, or Korean, a transliteration and a translation should be provided.  In some cases, of course, no translation will exist, especially if the foreign word is made up or a collection of random characters.

If the USPTO receives an application for a non-English or non-Latin-based trademark without a translation or transliteration, it will require that a statement be submitted translating the mark.

Recall that the distinctiveness of a trademark is described on a spectrum ranging from generic to fanciful.  Marks that are fanciful possess the required distinctiveness to be granted registration, assuming they meet other statutory guidelines and do not conflict with other marks.  Marks that are generic can never become trademarks.  Marks that are descriptive – slightly more distinct than generic – generally can’t be registered either, because they don’t serve to distinguish one product from another (because they simply describe the product, right?).  However, descriptive marks can be registered on the Supplemental Register, and can be registered on the Principal Register if they acquire secondary meaning.  Secondary meaning is gained when the public comes to recognize the mark as signifying the company behind the product or service – the mark takes on the proper source-indicating function that a trademark must have.

Some may think that they can get around this secondary meaning requirement by taking an descriptive trademark and translating it into another language, assuming that the use of non-English characters or a non-English translation makes the mark more distinctive.  However, the USPTO requires a transliteration or translation for this very reason – to prevent such a run-around.  By requiring the translation, the USPTO can compare the English-meaning or English-sounding version of the foreign-language mark with other marks registered at the USPTO, and can reject or allow the mark on that basis.

Some foreign language marks do not require a translation.  Marks which include foreign words that are also common or defined in English need not be translated (think “siesta” or “taco”).  Foreign language articles that prepend English words also need not be translated (“le pool” or “la restaurant,” for instance).  Lastly, marks that incorporate dead languages generally do not need to be translated, because the dead meanings are not ones with which the public would associate the mark.

Trademark Opposition

A trademark opposition can be part of the registration application process. Typically, a successful application proceeds through the Trademark Office in a predictable manner: the application is filed, the applicant and examiner communicate and work on the application, and the application is approved and published in the Official Gazette. Generally, thirty days of publication go by without incident and the registration certificate then issues. However, sometimes, a member of the public decides to intervene by filing a trademark opposition.

A senior trademark owner can use an opposition proceeding to challenge a registration, as can a common-law trademark holder. The opposing party will attack the registration if it believes the registration will cause damage, usually on the theory that the applied-for-mark is confusingly similar to the challenger’s mark. Other bases for opposing the mark exist but are less common. The opposition is similar to litigation in court, but it occurs before the Trademark Trial and Appeal Board – the TTAB – and does so almost entirely by paper. An opposition involves pleadings, discovery, motion-work, trial periods, and post-trial work.

An opposition is sometimes considered an attractive “alternative” to litigation. A trademark infringement lawsuit goes after allegedly infringing use of a mark, while an opposition seeks to prevent registration of the mark from the get-go. And while a trademark infringement suit can produce monetary damages or an injunction preventing the defendant from using their mark, a trademark opposition attempts to block the applicant from ever getting federal rights in the mark.

While it can be an effective tool, an opposition is not necessarily mutually exclusive from trademark. Trademark maintenance and strategy can encompass many different aspects of monitoring and activity. An opposition can prevent registration of an infringing mark, but the TTAB does not issue an order for the applicant to cease using the mark. The TTAB’s decision only goes so far as to say registration is proper or improper. Therefore, the applicant can technically continue to use its mark, albeit without federal registration protection. An infringement lawsuit may be necessary to actually get the applicant to stop using the mark. Of course, other less severe options, such as cease-and-desist letters, may accomplish this goal more efficiently.

Some trademark lawyers specialize in opposition work, while others make it only a small part of their practice. A trademark attorney with experience in trademark oppositions and general trademark strategy should be consulted if you are considering filing an opposition or have to defend one.