IPlegalED, Inc. Trademark Paralegal Course · Contents 2/E (2) Intent to Use (ITU) Application...

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Contents

Contents

Contents i

Preamble ix

Chapter 1 Introduction 1

1/A The United States Trademark System . . . . . . . . . . . . . . . . . . . . . 1

1/A (1) Overview of the Trademark Registration Process . . . . . . . . . . 2

1/B Trademarks – General Concepts . . . . . . . . . . . . . . . . . . . . . . . . 3

1/B (1) Why We Have a Trademark System . . . . . . . . . . . . . . . . . 3

1/B (2) The Lanham Act . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

1/B (3) What is a Trademark? . . . . . . . . . . . . . . . . . . . . . . . . 4

1/B (4) What is a Domain Name? . . . . . . . . . . . . . . . . . . . . . . 5

1/B (5) What is a State Trademark? . . . . . . . . . . . . . . . . . . . . . 6

1/B (6) What is a Service Mark? . . . . . . . . . . . . . . . . . . . . . . . 6

1/B (7) What is a Collective Mark? . . . . . . . . . . . . . . . . . . . . . 7

1/B (8) What is a Collective Membership Mark? . . . . . . . . . . . . . . 7

1/B (9) What is a Certification Mark? . . . . . . . . . . . . . . . . . . . . 7

1/B (10) What is a Concurrent Use Registration? . . . . . . . . . . . . . . . 7

1/B (11) What is a Trade Name? . . . . . . . . . . . . . . . . . . . . . . . 8

1/B (12) What is Trade Dress? . . . . . . . . . . . . . . . . . . . . . . . . 8

1/B (13) What are House Marks and Product Marks? . . . . . . . . . . . . 8

1/B (14) What is Right of Publicity? . . . . . . . . . . . . . . . . . . . . . 9

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1/B (15) What are Trade Secrets? . . . . . . . . . . . . . . . . . . . . . . . 9

1/B (16) How Long Does a Trademark Last? . . . . . . . . . . . . . . . . . 10

1/B (17) State Versus Federal Registration . . . . . . . . . . . . . . . . . . 10

1/B (18) Is Registration of a Trademark Necessary? . . . . . . . . . . . . . 10

1/B (19) What Kind of Protection Does a Trademark O↵er? . . . . . . . . . 11

1/B (20) What is the Value of a Registered Trademark? . . . . . . . . . . . 11

1/B (21) What Does the USPTO Do? . . . . . . . . . . . . . . . . . . . . . 12

1/B (22) How an Application Becomes a Trademark (Trademark Prosecution) 12

1/B (23) Trademark, Service Mark and Registered Symbols . . . . . . . . . 15

1/B (24) The Trademark Registers – Principal and Supplemental . . . . . . . 15

1/B (24)(a) The Principal Register . . . . . . . . . . . . . . . . . . 15

1/B (24)(b) The Supplemental Register . . . . . . . . . . . . . . . . 16

1/B (25) Resources: Laws and Rules and the TMEP . . . . . . . . . . . . . 18

1/B (26) The USPTO Web Site . . . . . . . . . . . . . . . . . . . . . . . . 19

1/B (27) The Filing Date . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

1/B (28) Docketing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

1/B (29) Structure of a Trademark File . . . . . . . . . . . . . . . . . . . . 20

Chapter 2 Mark Searches, Filing Basis, Drawings, and Specimens 21

2/A How a Trademark is Chosen . . . . . . . . . . . . . . . . . . . . . . . . . . 21

2/B What Makes a Good & Strong Trademark . . . . . . . . . . . . . . . . . . . 22

2/C Conducting Trademark Clearance Searches . . . . . . . . . . . . . . . . . . 27

2/D Goods & Services – Classifications . . . . . . . . . . . . . . . . . . . . . . . 28

2/E Basis for Filing a Trademark Application . . . . . . . . . . . . . . . . . . . 33

2/E (1) Use in Commerce (a Use Application) Under Section 1(a) of theTrademark Act . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33

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2/E (2) Intent to Use (ITU) Application Under Section 1(b) of the TrademarkAct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36

2/E (3) Priority Based on Foreign Filing of an Application Under Section 44(d) 37

2/E (4) Priority Based on Foreign Registration Under Section 44(e) . . . . . 38

2/F Drawings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 40

2/F (1) Standard Character (or Typed) Drawing . . . . . . . . . . . . . . 40

2/F (2) Stylized or Special Form Drawing . . . . . . . . . . . . . . . . . . 42

2/G Specimens of the Trademark . . . . . . . . . . . . . . . . . . . . . . . . . . 46

2/G (1) Specimens – Goods . . . . . . . . . . . . . . . . . . . . . . . . . 46

2/G (2) Specimens – Services . . . . . . . . . . . . . . . . . . . . . . . . . 48

2/G (3) Specimens – Collective Membership . . . . . . . . . . . . . . . . . 50

2/G (4) Specimens – Certification Mark . . . . . . . . . . . . . . . . . . . 50

2/G (5) Specimen Refusal During Examination . . . . . . . . . . . . . . . 50

2/G (6) Responding to a Refusal of a Specimen . . . . . . . . . . . . . . . 51

Chapter 3 Corresponding with the USPTO 53

3/A How to Communicate With the Patent & Trademark O�ce . . . . . . . . . . 53

3/B Electronic Filing Using TEAS – Brief Overview . . . . . . . . . . . . . . . . 56

3/C Filing by Mail . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 58

3/D Faxing Documents to the USPTO . . . . . . . . . . . . . . . . . . . . . . . 67

3/E Email Correspondence With the USPTO . . . . . . . . . . . . . . . . . . . 70

3/F Hand Delivered Documents . . . . . . . . . . . . . . . . . . . . . . . . . . 70

3/G Methods of Payment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 72

3/H The USPTO Financial Manager System . . . . . . . . . . . . . . . . . . . . 75

Chapter 4 Filing a Use-Based Trademark Application 88

4/A Filing a Use-Based Trademark by Mail . . . . . . . . . . . . . . . . . . . . 88

4/A (1) The Transmittal Sheet . . . . . . . . . . . . . . . . . . . . . . . . 89

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4/A (2) Parts of the Use-Based Trademark Application . . . . . . . . . . . 91

4/A (3) Specimens . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96

4/A (4) A Return Receipt Post Card (Only if Filing by Mail) . . . . . . . . 97

4/A (5) Application Format . . . . . . . . . . . . . . . . . . . . . . . . . 97

4/A (6) Drawings Format (for Stylized Marks Only) . . . . . . . . . . . . . 97

4/A (7) Specimen Format . . . . . . . . . . . . . . . . . . . . . . . . . . 99

4/A (8) Finalizing the Use Application for Filing by Mail . . . . . . . . . . 100

4/B Using TEAS to File a Trademark Application on the Principal Register . . . 102

4/B (1) TEAS, TEAS Plus and TEAS Reduced Fee (TEAS RF) . . . . . . 103

4/B (2) Elements in TEAS Applications . . . . . . . . . . . . . . . . . . . 106

4/B (3) Additional Requirements for a TEAS Plus Application . . . . . . . 107

4/B (4) Ongoing Requirements for TEAS Plus Application, After Filing . . 107

4/B (5) Signatures . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108

4/B (6) Statement of Consent to Registration . . . . . . . . . . . . . . . . 111

4/B (7) TEAS Tutorial . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112

4/B (7)(a) TEAS Plus Option . . . . . . . . . . . . . . . . . . . . 125

4/B (8) TEAS Image Submission . . . . . . . . . . . . . . . . . . . . . . . 126

4/B (9) TSDR (Trademark Status and Document Retrieval) . . . . . . . . 127

4/C Power of Attorney . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 132

4/D Assignments and Assignment Recordation . . . . . . . . . . . . . . . . . . . 134

Chapter 5 Filing an Intent-to-Use (ITU) Trademark Application 136

5/A The Intent to Use (ITU) Application . . . . . . . . . . . . . . . . . . . . . 136

5/B Filing an ITU Application by Mail . . . . . . . . . . . . . . . . . . . . . . . 137

5/C Filing an ITU Application Using TEAS . . . . . . . . . . . . . . . . . . . . 139

5/D Allegation of Use (Statement of Use / Amendment to Allege Use) . . . . . . 140

5/D (1) Filing an Amendment to Allege Use / Statement of Use by Mail . . 141

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5/D (2) Using TEAS to File a Statement of Use / Amendment to Allege Use 145

5/E Request for Extension of Time to File a Statement of Use . . . . . . . . . . . 150

5/E (1) Filing a Request for Extension of Time to File a SOU by Mail . . . 150

5/E (2) Using TEAS to File a Request for Extension of Time to File a SOU 153

5/F Docketing After Filing a New Application . . . . . . . . . . . . . . . . . . . 157

Chapter 6 Assignments & Assignment Recordation 158

6/A Recordation Form Cover Sheet (Form PTO-1594) . . . . . . . . . . . . . . . 159

6/B Electronic Filing Using ETAS . . . . . . . . . . . . . . . . . . . . . . . . . 162

6/C Change of Name Using ETAS . . . . . . . . . . . . . . . . . . . . . . . . . 168

Chapter 7 Trademark Prosecution 171

7/A The Pre-Examination Stage (TMEP 401) . . . . . . . . . . . . . . . . . . . 172

7/A (1) Filing Receipt and Corrected Filing Receipt . . . . . . . . . . . . . 172

7/A (2) Notice of Incomplete Trademark Application . . . . . . . . . . . . 178

7/A (3) Pseudomarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 178

7/B Trademark Examination (TMEP 700 and 1200) . . . . . . . . . . . . . . . . 179

7/B (1) First Action Allowance . . . . . . . . . . . . . . . . . . . . . . . 179

7/B (2) Refusal and O�ce Action . . . . . . . . . . . . . . . . . . . . . . 179

7/B (3) O�ce Actions . . . . . . . . . . . . . . . . . . . . . . . . . . . . 181

7/B (4) Reviewing the O�ce Action and Docketing Due Dates . . . . . . . 190

7/B (5) Responding to the Non-Final O�ce Action Using TEAS . . . . . . 190

7/B (6) Responding to the Non-Final O�ce Action by Mail . . . . . . . . . 210

7/B (7) Priority Action (TMEP 708) . . . . . . . . . . . . . . . . . . . . . 211

7/B (8) Extensions of Time (None) . . . . . . . . . . . . . . . . . . . . . 213

7/C Final O�ce Action (TMEP 714) . . . . . . . . . . . . . . . . . . . . . . . . 213

7/C (1) Response to a Final O�ce Action . . . . . . . . . . . . . . . . . . 213

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7/C (1)(a) Request for Reconsideration After a Final O�ce Action . 214

7/C (1)(b) Filing a Notice of Appeal and Appeal Brief . . . . . . . 216

7/C (1)(c) Amending the Application to Comply With RequirementsMade by the Examiner . . . . . . . . . . . . . . . . . . 216

7/C (1)(d) Filing a Petition to the Commissioner . . . . . . . . . . 216

7/C (1)(e) Amending the Application to Have it Placed on the Sup-plemental Register . . . . . . . . . . . . . . . . . . . . 220

7/C (1)(f) Submitting Evidence of Secondary Meaning . . . . . . . 221

7/C (1)(g) Abandoning the Present Application and Giving Up Al-together . . . . . . . . . . . . . . . . . . . . . . . . . . 221

7/C (2) Abandonment (37 CFR 2.65) . . . . . . . . . . . . . . . . . . . . 221

7/C (3) Revival of an Abandoned Application (37 CFR 2.66) . . . . . . . . 224

7/C (4) Suspension . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 225

7/C (5) Division of an Application . . . . . . . . . . . . . . . . . . . . . . 226

7/D Letters of Protest (TMEP 1715) . . . . . . . . . . . . . . . . . . . . . . . . 226

Chapter 8 Appeal 230

8/A Notice of Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 230

8/B Appeal Brief . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 232

8/C Appeal Brief – Form and Content . . . . . . . . . . . . . . . . . . . . . . . 232

8/D Oral Hearing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 233

8/E Examiner’s Brief . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 234

8/F Appellant’s Reply Brief . . . . . . . . . . . . . . . . . . . . . . . . . . . . 234

8/G Amendment During Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . 234

8/H An Example of an Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . 235

8/I Filing an Appeal Online Using ESTTA . . . . . . . . . . . . . . . . . . . . 235

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Contents

Chapter 9 After Prosecution 242

9/A Publication for Opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . 242

9/B Notice of Allowance (NOA) . . . . . . . . . . . . . . . . . . . . . . . . . . 247

9/C Statement of Use (SOU) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 250

Chapter 10 After Registration 251

10/A Declaration of Continued Use in Commerce (a §8 Declaration) . . . . . . . . 251

10/B A�davit of Incontestability (§15 A�davit) . . . . . . . . . . . . . . . . . . 253

10/C Term and Renewal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 254

Chapter 11 The Madrid Protocol 256

11/A What is a Madrid Protocol Application? . . . . . . . . . . . . . . . . . . . . 256

11/B When is Filing a Madrid Protocol Application Applicable? . . . . . . . . . . 256

11/C Madrid Protocol Application Filing Requirements . . . . . . . . . . . . . . . 257

11/D How is a Madrid Protocol Application Filed and Processed? . . . . . . . . . 260

11/D (1) Filing a Madrid Protocol Application Using TEAS . . . . . . . . . 260

11/D (2) Filing a Madrid Protocol Application by Mail . . . . . . . . . . . . 267

11/D (3) Hand Delivery . . . . . . . . . . . . . . . . . . . . . . . . . . . . 267

11/D (4) Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 267

11/E Advantages of the Madrid Protocol . . . . . . . . . . . . . . . . . . . . . . 277

11/F Maintaining and Renewing a Madrid Protocol Trademark . . . . . . . . . . . 278

Chapter 12 The European Trade Mark System (formerly CTM) 280

Chapter 13 Ongoing Protection of Trademark Rights 283

13/A Non-Use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 283

13/B Generic Use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 283

13/C Naked Licensing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 284

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13/D Enforcement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 284

13/E Counterfeiting . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 285

13/F US Customs Protection (Department of Homeland Security) . . . . . . . . . 285

Chapter 14 Licensing 287

Chapter 15 Trademark Course – Final Exam 294

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Preamble

About the IPLEGALED Trademark Course - how to get the most out of it.

Trademark administration is a very demanding area of legal administration. There are rulesto master, abstract concepts to understand and always deadlines to meet. This course willteach you how to competently handle all these things. Try to set aside regular study timestwo or three times per week. Study for no longer than about three hours. This will helpyou retain and comprehend the materials. Take your time. Read all the text, even if youthink you already know it or that you will not be using it. If you don’t understand somethingimmediately, keep trying until you do. Concepts introduced earlier in the course come upfrequently in the later sections, so you have to be confident with one section before you goonto the next.

At the end of each section there is a quiz. You must be logged into your account on theIPlegalED.com website to take each quiz. To get the most benefit from the course, you musttake all the quizzes, and to earn your certificate you must pass the Final test. Take the testsimmediately after finishing each chapter. Don’t wait until later. The tests are designed toreinforce what you have learned and are a very important part of the learning process. Eachtest is automatically graded. For every question you get wrong, you should go back to thecourse and review the topic until you fully understand it. If you get less than 70% for anytest, then you should not go onto the next section. Instead, you should review the chapterand retake the test. Of course, it’s an honor system, and it’s up to you, but unless you fullyunderstand the previous section, the next sections could be di�cult.

Once you’ve completed all the sections, there is a Final exam. A score of 70% or above isrequired to pass the course, and a certificate is awarded upon passing. If you study diligently aswe have suggested, you will pass the final with no trouble and will be awarded your Certificate.In the highly unlikely event that you do not pass the final within three attempts, then youwill have to register to re-take the final (up to three additional times) and a pay an additionalfee ($250).

The entire course is designed to be printed out for use as a study guide and future referencemanual. You may also study on your electronic device, however, you will have access toyour paper manual after your course access has expired, so please don’t forget to print it out.Whatever method you use, you should study regularly, take your time, make notes, and do allthe tests. And one more suggestion: do the course in the order in which it is presented. It isdesigned to be done that way. Jumping from section to section will only make it harder.

Forms, addresses, fees, application numbers: The forms presented in the course are providedas examples only. Do not use them for o�cial correspondence. If you are not 100% certain,always check online for the latest fees, forms and addresses. All application or registrationnumbers provided are as examples only and are not meant to be associated with any realtrademark or application.

The IPLEGALED trademark paralegal certificate course has been expertly crafted to teachyou how to handle the administrative side of trademark practice. Whether you’re taking it torefresh your skills, to catch up on the new or infrequently used rules, or are embarking uponan entirely new career, all you need to know is right here.

Now it is up to you. You have 100 days from the time of activation to complete the courseand pass the final exam. Study hard, have fun, and good luck!

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Ch. 1/A The United States Trademark System

Chapter 1

Introduction


The United States Patent and Trademark O�ce (USPTO) was established in 1790 bythe United States Congress, under the guidance of Thomas Je↵erson as part of theFederal Government within the Department of Commerce. The USPTO administers thepatent and trademark laws, which are interpreted by the Federal courts, with the UnitedStates Supreme Court as the ultimate authority on all trademark matters. In 1870,Congress enacted the first U.S. trademark law, which was later declared unconstitutionalbecause it was improperly based on the patent and copyright clause in the Constitution(Article 1, Section 8). Congress had mistakenly believed it had the right to regulate alltrademarks. In 1881 the Supreme Court ruled that under the Constitution, Congresscould only regulate marks that were used in interstate or foreign commerce. This meantthat if a mark was only used within one state, the federal government did not have theright to regulate it. Thus a new law, based on the interstate commerce clause was passed,just as Je↵erson had suggested nearly a century before. This law stated that both theFederal and State governments concomitantly regulate trademarks, with State trademarklaw applying to trademarks that are used solely within states, and Federal trademarklaw applying to trademarks used in interstate (or international) commerce. This is stillthe law today. In practice, you will very infrequently be dealing with State trademarklaw, and this course is focused entirely on Federal trademark law and procedures.

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Ch. 1/A (1) Overview of the Trademark RegistrationProcess

In this course we will teach you the elements trademark filing system step-by-step. Butright now we will give you a brief overview of how it works.

(i) CHOOSE MARK – Select a Mark to use with your products or services.

(ii) SEARCH – Search your mark to determine if it actually can be registered and ifit can, how di�cult it will be to protect your mark based on the strength of themark selected.

(iii) FILING – Prepare and file your trademark application using the TrademarkElectronic Application System (TEAS). A mark can be applied for on the basis ofactual use in commerce, or intended use.

(iv) EXAMINATION – An examining attorney will examine the application anddo a search for conflicting marks. If the examining attorney decides that a markshould not be registered, he/she will send a letter (an O�ce Action) explainingthe reasons for refusal. The applicant’s response to the O�ce Action must be filedwithin six months of the mailing date of the O�ce Action. You will then receiveapproval/denial of your application.

(v) PUBLICATION – If the examining attorney raises no objections to registration,or if the applicant overcomes all objections, the examining attorney will approvethe mark for publication in the O�cial Gazette. Any party who believes it maybe damaged by registration of the mark has 30 days from publication to file anopposition to prevent registration. If no opposition is filed or if the opposition isunsuccessful, the application enters the next stage of the registration process.

(vi) ISSUE – If the mark is based on actual use in commerce the USPTO will registerthe mark and send the owner a Certificate of Registration. If the mark is based onan intent to use the mark, then the USPTO will issue a Notice of Allowance. Theapplicant then has six months from the date of the notice of allowance to either:Use the mark in commerce and submit a statement of use (SOU); or Request asix month extension of time to file a statement of use (extension request).

(vii) MAINTENANCE – To keep the registration active the registrant must filespecific maintenance documents and fees. Failure to make these required filingswill result in cancellation and/or expiration of the registration.

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Ch. 1/B Trademarks – General Concepts


A trademark is a form of intellectual property right granted by the government to anindividual or legal entity, such as a corporation. It is a word, phrase or symbol thatindicates the source of the goods, products or services with which the trademark is used.This is a very important concept to understand. For example, the Coca-Cola® logo ona bottle of Coke indicates that the bottle and its contents come from The Coca-ColaCompany. The Visa® logo on a credit card indicates that the credit card servicesare provided by Visa International Service Association. Chevrolet®and McDonald’s®

trademarks indicate the source of cars and hamburgers, and the Bayer®mark on a Bayeraspirin indicates that the pill was made by the Bayer Pharmaceutical Corporation. Likeother kinds of property, it can be bought, sold, or leased (licensed). A trademark givesthe owner certain legal rights that can be enforced using by federal laws (the LanhamAct). These rights importantly include the right to stop other people from using themark in a way that causes confusion or misrepresents where the goods/services camefrom and/or who is the creator. We will discuss all these things in detail throughoutthe course.

Ch. 1/B (1) Why We Have a Trademark System

The aim of the trademark system is to allow the public to identify the source of aproduct or service. Trademarks are the foundation of competition for businesses andallow meaningful choices to be made by consumers. Trademarks have been around along, long time and have even been found on pottery dating back to about 5000 B.C.One of the first trademarks in the United States was granted by a Fairfax County courtin 1772, to a gentleman wanting to use his name as a trademark for the flour he milled.His name was George Washington.

Trademark law is related to a larger body of law known as unfair competition. UnfairCompetition laws prohibit companies from competing unethically and generally prohibit:

– false advertising, e.g. making false claims about a product or against a competitor’sproducts;

– false designation of origin, e.g. making fake Versace® gowns;

– trademark infringement, e.g. using an identical or a confusingly similar trademark;and

– theft of trade secrets, e.g. stealing software code from a software company or theftof the formula for Coca-Cola® .

On average, we encounter 1,500 trademarks per day in places such as the medicine chest,in the kitchen, in newspapers, on television, on radio and on billboards driving to work.We will see up to 30,000 marks on a single visit to the supermarket!

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Ch. 1/B (2) The Lanham Act

Also known as the Trademark Act, or, “the Act”, this is the primary federal trademarklaw. It is located in Title 15 of the United States Code at sections 1051 to 1127 (15U.S.C. §§1051-1127). This law establishes a system for trademark registration andregulation and provides remedies for infringement of federally registered trademarks.

Ch. 1/B (3) What is a Trademark?

A trademark is a word, phrase, design, logo, word-logo combination, sound or scent(or combination thereof) that is used to identify the source of a product or service. Ittherefore provides an assurance of the quality of that product, and helps create consumerloyalty known as goodwill.

To be valid, a trademark (or mark) must either be in use in interstate commerce by thetrademark owner, or the trademark owner must have a bona fide intention to use themark in interstate commerce. A trademark may be used to identify any type of goodsor services. A trademark may be o�cially registered and legally restricted to the use ofthe owner, or the owner’s licensees.

Note that there are such things as State trademarks for marks that are used within asingle state and are not used in interstate commerce.

Trademarks do not have to be restricted to words, names or logos. Anything thatidentifies an owner’s products or services may be trademarked in the US, such as letters,colors, smells (not in Europe), slogans, numbers, alpha-numeric combinations andsounds. Even backgrounds that incorporate symbols or other distinguishing marks maybe registrable. Geometric shapes, statues, moving images, holograms, sounds, fragrancesand radio station call letters are also commonly registered. Diverse things such as rocks,sand, vaccines, and even human sperm have received trademark protection. Here aresome examples:

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Ch. 1/B (4) What is a Domain Name?

At this point we should mention domain names. A domain name is not the samething as a trademark, although a domain name can be trademarked if it meets allthe requirements. A domain name is simply an address on the internet, for example,www.microsoft.com.

When registering a domain name with the Internet Corporation for Assigned Namesand Numbers (ICANN), it is the responsibility of the registrant to make sure that thedomain does not infringe or violate someone else’s prior intellectual property rights. Thewords of a domain name can be registered as a trademark or service mark in the usualway. In order to serve as a trademark, it would have to act as the source indicator of aproduct or service and be used in interstate commerce, or the applicant would have abona fide intention of use.

The existence of a confusingly similar domain name may be problematic for the reg-istration of a trademark, and when performing a search to determine the availabilityof a potential trademark, domain names should always be searched. If a confusinglysimilar domain name exists, it does not necessarily mean that the desired mark cannotbe registered. Many registered domain names are confusingly similar to trademarks(more than 33,000,000 domain names have been registered at the time of this article)and many are confusingly similar to registered trademarks.

It is the responsibility of the trademark owner to be vigilant and to continuously checkfor the registration and/or use of confusingly similar domain names. This is policingyour mark. If a domain name use goes unchallenged for an extended time, there isalways the chance that the trademark owner will su↵er some dilution or loss of rightson the prior registered mark.

A number of high profile domain name disputes have arisen when a domain name hasbeen registered that is confusingly similar to an existing trade name or trademark. Hereare some examples that illustrate the kind of problems that domain name registrationcan produce:

In 1994, the domain name www.mcdonalds.com was registered by a journalist fromWired magazine who was writing a story on the value of domain names. The author gaveMcDonald’s Corporation the domain name in exchange for a charitable contribution.

The domain name www.mtv.com was registered by video jockey Adam Curry. MTVacquired the domain name after a federal court action was brought and an out-of-courtsettlement was made.

The domain name www.peta.org was registered by an organization called People EatingTasty Animals. This upset the more well-known organization, People for the EthicalTreatment of Animals. A protracted conflict resulted, and the domain name is nowowned by the PETA Foundation.

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Ch. 1/B (5) What is a State Trademark?

There are such things as State trademarks for marks that are used within a single stateand are not used in interstate commerce. State trademarks are separate and independentfrom Federal trademarks. You can have one without the other or you can have bothat the same time, provided that your mark meets the requirements. To acquire a statetrademark or service mark, an applicant must file an application with the trademarko�ce of the specific state. Information and links about state registrations can be foundhere:

www.uspto.gov/trademarks-getting-started/process-overview/state-trademark-information-links

It is unlikely that you will have a great deal to do with state trademark law, as the vastmajority of trademark filings are for goods or services used in interstate commerce andare filed under the federal system. This course is not designed to teach you about thetrademark laws in each individual state, but since all state trademark law is based onfederal laws, if you understand the federal system, then the state system will be verysimple. However, state trademarks are an excellent option for geographical protectionwhen a federal application is not possible or is denied.

Ch. 1/B (6) What is a Service Mark?

A service mark is the same as a trademark, except that it identifies and distinguishesthe source of a service, that is, an intangible activity such as credit card processing(MasterCard® ), internet search services (Google® ) or emergency roadside assistanceservices (AAA® ). Services are performed by an individual or entity (such as a cor-poration) for the benefit of another individual or entity. The service must be a realactivity, it must be performed for the benefit of someone other than the applicant, andthe service cannot be similar to anything necessarily done in connection with the sale ofthe applicant’s goods or the performance of another service. Some of the more diverseactivities with service marks include renting chain link fences, adoption agencies, fleamarketing, tattooing, and zodiac consultation.

There are a few other forms of related types of marks that are not as common asthe regular trademarks and service marks. These include collective marks, collectivemembership marks, certification marks and trade names.

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https://www.uspto.gov/trademarks-getting-started/process-overview/state-trademark-information-links

https://www.uspto.gov/trademarks-getting-started/process-overview/state-trademark-information-links


Ch. 1/B (7) What is a Collective Mark?

A collective mark is a trademark or service mark that signifies membership in anorganization such as Blue Shield® , 4H Club®or Realtors® . The organization mayprovide and police certification standards. The mark is owned by the association ororganization. While the association itself neither sells goods nor performs services underthe collective mark, it may advertise or promote programs with reference to the markto publicize the mark and promote business of its members.

Ch. 1/B (8) What is a Collective Membership Mark?

A collective membership mark is a specific type of collective mark used by individualmembers of an association to indicate membership in the association and not to identifya member’s goods or services. While collective marks are owned by a collective entity,collective membership marks may be owned by some other person or entity. True Value®

is a collective membership mark indicating membership in True Value hardware stores,which is a collective group sponsored by the owner of the registration of the mark, Cotter& Co. FTD® , Boy Scouts of America® , and Weight Watchers®are all examples ofcollective membership marks.

Ch. 1/B (9) What is a Certification Mark?

A certification mark is a mark that certifies quality, mode of manufacture, regional orother origin of goods, such as Good Housekeeping Seal of Approval® . It does not indicatethe origin of specific goods, but rather certifies that goods or services meet certainquality criteria or manufacturing standards, or originate from a specific geographicregion, or that the supplier belongs to a certain group or organization. A certificationmark functions like a trademark and not simply as a description of the goods. Unlikecollective marks, the owner of the certification mark may not use the mark. The ownerauthorizes other persons to apply the mark to their goods and services and the usertypically must meet certain standards or conditions before they may use the certificationmark. Examples include Wisconsin Real Cheese® , Rated PG® , or Tempered Glass® .

Ch. 1/B (10) What is a Concurrent Use Registration?

A concurrent use registration is a registration of the same trademark by two unre-lated, separate parties, with each party restricted to use in a separate geographic area.A concurrent use application can be filed, or an existing application can be convertedinto a concurrent use filing. These registrations generally arise out of two parties tryingto register the same trademark, and coming to a compromise to each take trademarkrights in separate geographic areas.

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Ch. 1/B (11) What is a Trade Name?

The name of a business or a company is a trade name. The Trademark Act definesTrade Name and Commercial Name as follows: “Any name used by a person to identifyhis or her business or vocation.” Trade Names are distinguished from Trademarks andService Marks because there is no provision in the Trademark Act for the registration ofa Trade Name which is used solely as a Trade Name and not also used as a trademark.However, wording which makes up a Trade Name may be used in such a way that italso functions as a Trademark or Service Mark. For example, Ford Motor Company is atrade name as well as a trademark.

Ch. 1/B (12) What is Trade Dress?

Trade dress is a special kind of trademark that deals with the appearance of thepackaging or presentation of a product that is unique to that product. For example:the appearance of the packaging of a tube of Pringles® , the appearance of the Aleve®

pain reliever bottle or the shape and look of the Coca-Cola®bottle are all forms ofprotectable trade dress. McDonald’s golden arches theme is trade dress.

Ch. 1/B (13) What are House Marks and Product Marks?

Both of these are special kinds of trademarks. A house mark identifies the companyor division that is the maker or seller of the product or provider of a service. It canalso be used to identify a particular grouping of products as a product line. A productmark identifies the particular product or service that is being sold. A company mayhave more than one house mark to identify di↵erent product lines. A house mark and aproduct mark are often used in conjunction with one another.

For example, if a car company named AUTOHEAP o↵ered a car called FrozenFish 2000.The decal on the car would read AUTOHEAP FrozenFish 2000. AUTOHEAP is thehouse mark, and FrozenFish 2000 is the product mark.

In another example, AUTOHEAP may o↵er two car lines, one called the FrozenFish,and the other called FrostyFish. They may o↵er a suite of products for each:

FrozenFish 2000 XL FrostyFish Tadpole

FrozenFish 2500 Deluxe FrostyFish Guppy

FrozenFish Arctic FrostyFish Lil’ Sardine

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All are made by AUTOHEAP, but each grouping of related products is distinguished byits own house mark, and each house mark encompasses three product marks.

An actual example would be General Motors Cadillac Coupe DeVille and Cadillac ElDorado. Cadillac® is the house mark, and Coupe DeVille®and El Dorado®are theproduct marks.

Ch. 1/B (14) What is Right of Publicity?

This is the right to control the commercial exploitation of a person’s name, image orpersona. This is usually associated with celebrities because the name or image of afamous person is more often used to sell products or services, but the right of publicityextends to everyone. For example, the unauthorized use of Sylvester Stallone’s image onpower tools infringes their right to publicity. For this reason, all models or persons usedin advertisements sign consent agreements allowing the use of their image or likeness.

Note that the use of a name, likeness or persona for news, information, education,satire, or public interest purposes is NOT a violation of the right of publicity as it isconsidered fair use, and for this reason many famous people find photos of themselves inthe National Enquirer or on the news without their consent.

Ch. 1/B (15) What are Trade Secrets?

Trade secrets fall under the laws of unfair competition, but are not related to trademarks.We only mention them here to distinguish them from trademarks. Trade secrets arepieces of information that a company keeps secret, such as the formula for Coca-Cola®

soda, the seasoning mix for KFC® chicken, the formula for Chanel perfumes, and themanufacturing process for Pringles potato snacks. Other examples of trade secrets mayinclude: a new invention for which a patent application has not been filed, or a company’smarketing strategies or customer and marketing lists. Trade secrets have value becausethey are secret – they must NOT be public, distributed or published information. Ifthe information becomes publicly known, they are no longer considered trade secrets.Protection is acquired when a company treats confidential information like a secret. TheCoca-Cola Company keeps the formula for Coke soda in a safe, and no single personknows the secret formula for the seasoning mix for KFC chicken. The protection of atrade secret lasts as long as the secret remains a secret. If someone can make the secretpublic by disclosure, independent discovery or reverse engineering (lawfully obtaining theproduct and taking it apart to learn the secret), then the protection is ended. Becauseregistering a trade secret would entail revealing that secret, there is no registrationprocess of trade secrets as there is for trademarks or patents. The federal and stategovernments have passed trade secret laws, and both federal and state courts interprettrade secret laws.

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Ch. 1/B (16) How Long Does a Trademark Last?

All registered trademarks issued or renewed on or after November 16, 1989, are validfor 10 years. Trademarks must be renewed every 10 years and each registration may berenewed for periods of 10 years from the end of the expiring period. Certain documentsneed to be filed and fees paid to maintain trademark rights through their maximumperiod of enforcement. To maintain enforceable trademark rights, the owner needs tofile a trademark application and make a Section 8 (and sometimes also a Section 15)filing with the USPTO. All these are covered in detail later in the course. Trademarkregistrations may be renewed indefinitely as long as the mark is still being used incommerce. Many valuable marks such as Coca-Cola®have been in existence for over acentury because the owner has repeatedly renewed the trademark. The owner, however,must prevent the public from misusing the brand name to refer to all similar productsin a generic sense. This is accomplished by reminding the public through advertising,that their brand names are trademarks and not just descriptive nouns, and by makingsure the mark is always used in conjunction with the goods or services being o↵ered. Ifa mark is widely misused over a prolonged period of time, it may become generic, andthus, unenforceable as a trademark. One such example is Aspirin, which was once atrademark, but is now a generic word used to refer to a class of pain relievers, regardlessof their source or manufacturer.

) Trademark rights are based upon continued use. Use it or lose It!

Ch. 1/B (17) State Versus Federal Registration

Both state and federal registration is available for trademarks. Trademarks used ininterstate and international commerce are regulated by Federal law. State trademarklaws only apply to marks that are used exclusively within a single state. You will veryinfrequently (if ever) be dealing with State trademark law, and this course is focusedentirely on Federal trademark law and procedures.

Ch. 1/B (18) Is Registration of a Trademark Necessary?

No, you can establish rights in a mark based on legitimate use of the mark, withoutregistration. This is known as common law rights. Federal registration is not requiredto establish rights in a trademark. Common law rights arise from actual use of a mark.Generally, the first to either use a mark in commerce or file an intent to use applicationwith the Patent and Trademark O�ce has the ultimate right to use and registration.

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However, having a federal trademark registration on the Principal Register gives youcertain advantages, such as:

– Legally notifying the public of your claim of ownership of the mark and exclusiveright to use the mark nationwide on or in connection with the goods and/orservices listed.

– Allowing you to bring an action in federal court and to claim statutory damages.Statutory damages are awards of money to the injured party following a successfullaw suit. Statutory damages are powerful because they are set amounts determinedby statute that are payable to the infringed party and may be claimed merely byproving infringement, without having to go through the long complex actuarialprocess of proving actual damages.

– The use of the U.S. registration as a basis to obtain registration in foreign countries.

– The ability to record the U.S. registration with the U.S. Customs Service to preventimportation of foreign goods that may infringe on the trademark.

Ch. 1/B (19) What Kind of Protection Does a TrademarkO↵er?

A United States trademark registration provides protection only in the US and itsterritories. If an owner of a mark wishes to protect a mark in other countries, theowner must seek protection in each country separately under the applicable country’srelevant laws or through a Madrid Protocol application. The USPTO cannot provideany information or advice concerning trademark protection in any other countries.

Ch. 1/B (20) What is the Value of a Registered Trademark?

Trademarks are a way for a product to gain recognition and to be di↵erentiated froma similar product. In most cases a desirable product is eventually what makes thetrademark for the product well known. In other cases, however, a product can be rathermediocre, but a really catchy trademark is what makes the product successful.

Trademarks can be immensely valuable. For instance, the Coca-Cola trademark isso valuable that if every piece of real estate, building, and every item owned by theCoca-Cola Company were to be destroyed, the company could still sell the trademarkname, by itself, for between 40 to 70 billion dollars. It is arguably the most recognizabletrademark in the world, instantly identifiable by over 90% of the world’s population.This is due to diligent marketing and persistent enforcement of trademark rights.

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Ch. 1/B (21) What Does the USPTO Do?

The USPTO reviews trademark applications and determines whether an applicant meetsthe requirements for federal registration. They do not decide whether you have the rightto use a mark. This is di↵erent from the right to register. Even without registration,you may still use any mark adopted to identify the source of goods and/or services.Once a registration issues, it is up to the owner of a mark to enforce its rights in themark based on ownership of a federal registration.

Ch. 1/B (22) How an Application Becomes a Trademark(Trademark Prosecution)

This section only provides an overview of the process, which we shall look at in greatdetail later on.

In order to obtain a trademark, the applicant must file a trademark application withthe USPTO. A trademark application can be filed either by using the TEAS system(Trademark Electronic Application System) or by filing a paper application by mail.Although TEAS filing is by far the preferred method, this course will explain bothprocesses in detail. A thorough knowledge of the paper filing process helps you understandthe TEAS process as every element of the TEAS filing is based on its paper predecessor.

Filing an application using TEAS provides an automatic online check for completeness.The application is then submitted directly to the USPTO over the internet. Paymentof fees can be done by credit card, or through an existing USPTO deposit account orelectronic funds transfer using the USPTO’s Financial Manager. The TEAS systemprovides an immediate filing receipt and summary of the filing by email. The applicationwill be assigned a serial number and forwarded to the appropriate department fortrademark examination.

If the application is filed on paper, it first goes through a pre-examination process todetermine whether it meets the minimum necessary requirements to obtain a filing dateand an application serial number. Essentially the USPTO simply checks whether allnecessary papers have been received and that all the necessary information is includedin the application. This is not a substantive legal examination of the mark. If allformal requirements are met, a filing receipt will be sent by mail. If you file a paperapplication, you should allow several weeks to receive a filing receipt for your application.The filing receipt will include the serial number of the application.

If the application does not meet the minimum formal requirements it will be returnedto the applicant and no fee will be charged.

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If the USPTO determines that the application meets the minimum filing requirements,an application serial number is assigned, the filing receipt is mailed, and the applicationis then forwarded to a trademark examiner (also referred to as an examining attorney) forexamination. The examining attorney reviews the application to determine whether itcomplies with all applicable rules and statutes required for registration. This process isthe substantive legal examination of the mark. It often takes at least 6 months to hearfrom the examiner. It is no faster if you file using TEAS. The process and the time-linesof trademark examination are the same whether you use paper filing or TEAS, only themethod of submitting the documents di↵ers.

The trademark examiner reviews the application by searching for conflicting marks,and examining the written application, the drawing, and any specimen of use provided.If the examiner determines that a mark should not be registered he/she will issue anO�ce Action explaining any substantive reasons for refusal, and any technical orprocedural deficiencies in the application. When only minor corrections are required,the examiner may contact the applicant by telephone or email, if the applicant hasauthorized communication by email. If an O�ce Action is sent, then the applicant mustrespond in writing (by mail or by TEAS), and the response must be received in theUSPTO within six months of the mailing date of the O�ce Action, or the applicationwill be declared abandoned for non response.

If the applicant’s response does not overcome all objections, the trademark examiner willissue another O�ce Action. If this second O�ce Action is not made Final (explainedlater) by the examining attorney, then a response can be made. If the second O�ceAction is made Final by the examiner, then to overcome a final refusal, the applicantmay, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB),an administrative tribunal within the USPTO.

If no objections to registration are found by the trademark examiner, or if the applicantovercomes all objections, the examiner will approve the mark for publication inthe O�cial Gazette, a weekly publication of the USPTO.

The USPTO will then send a Notice of Publication to the applicant stating the dateof publication.

After the mark is published in the O�cial Gazette, any party who believes it may bedamaged by registration of the mark has 30 days from the publication date to file anopposition to registration or file a request for extension of time to oppose.

An extension of time to oppose (37 CFR 2.102c) must be filed before 30 days haveexpired from the date of publication or before the expiration of a previously grantedextension of time, as appropriate. The extension of time to oppose can be filed for eithera 30 day extension of time, which will be granted automatically upon request, or a 90day extension of time, which will be granted only for good cause shown. The time forfiling an opposition cannot be extended beyond 180 days from the date of publication.

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Requests to extend the time for filing an opposition must be filed as follows: (1) Aperson may file a first request for either a 30 day extension of time, which will be grantedupon request, or a 90 day extension of time, which will be granted only for good causeshown. (2) If a person was granted a 30 day extension of time, that person may filea request for an additional 60 day extension of time, which will be granted only forgood cause shown. (3) After receiving one or two extensions of time totaling 90 days, aperson may file one final request for an extension of time for an additional 60 days. TheBoard will grant this final request only with written consent of the trademark applicant,or with a showing of extraordinary circumstances.

An opposition (discussed in more detail later) is a legal challenge to registration of themark held before an administrative panel called the Trademark Trial and Appeal Board(TTAB). An opposition generally is made by a company or individual who believes thatthe published mark is confusingly similar to their own and would cause them commercialharm. The opposing party has 30 days from the date of publication of the mark to file aNotice of Opposition. If the opposition is successful, the applicant may either appeal thedecision to a Federal Appeals Court, abandon the application, or consider negotiatingan out of court settlement or coexistence agreement.

If the mark is published based upon the actual use of the mark in commerce (or on aforeign use registration) and no party files an opposition or request an extension of timeto oppose, a Certificate of Registration will be issued about 12 weeks after the datethe mark has completed its publication.

If the mark is published based upon the applicant’s bona fide intention to use themark in commerce, and no party files either an opposition or request to extend the timeto oppose, the USPTO will issue a Notice of Allowance (NOA) about four weeksafter the date the mark completes publication. The applicant then has six months fromthe date of the Notice of Allowance to either: (1) Use the mark in commerce and submita Statement of Use; or (2) Request a six-month Extension of Time to File a Statementof Use.

When a trademark is registered, it is generally posted on the Principal Register.Under certain circumstances, such as when the mark is not qualified to be placed on thePrincipal Register because it has not obtained distinctiveness, the mark may be postedon the Supplemental Register. Usually you will file on the Principal Register, andonly place the mark of the Supplemental Register if you are required to do so, but youcan ask for the mark to be placed on the Supplemental Register in the initial applicationif you think it is highly likely that the USPTO will view the mark as descriptive. Wewill discuss both registers in detail later in the course.

Examination of a trademark application often takes over a year. The long and complexprocess by which the trademark is examined, with correspondence going back and forthbetween the examining attorney and the applicant (or the applicant’s attorney) is calledtrademark prosecution. It is the job of the trademark paralegal – your job – to makesure that everything runs smoothly from filing of the application, through trademarkprosecution, to successful registration (hopefully).

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Ch. 1/B (23) Trademark, Service Mark and RegisteredSymbols

Anyone who claims rights to a mark may use the TM (trademark) or SM (service mark)designations with a mark to alert the public to their trademark claim. The mark doesnot have to be federally registered to use these symbols. Mostly you will see thesedesignations in superscript following a mark. Note that it is not necessary to registeror apply for registration to use the TM and SM symbols. These designations merelysay, “I am claiming exclusive rights in the use of this mark in connection with the goodsand/or services shown.” In other words, the claim may or may not be valid. Using thesedesignations tells the world that you consider it to be your trademark and you can beginbuilding secondary meaning in descriptive or configuration marks.

When used by an online business, the symbols may appear either before or after the.com, e.g.: FROZENFISHTM .com or FROZENFISH.COMTMdepending on what theapplicant considers to be its mark.

The ® symbol, however, may ONLY be used when the mark is o�cially and formallyregistered with the USPTO. It is improper and illegal to use this symbol at any pointbefore the registration has issued, however, it is important that it is used as soonas possible after registration since it has important ramifications for damages in aninfringement suit.

Ch. 1/B (24) The Trademark Registers – Principal andSupplemental

There are two di↵erent registers for trademarks: the Principal Register and the Supple-mental Register.

Ch. 1/B (24)(a) The Principal Register

Trademarks or Service Marks found on the Principal Register are entitled to all therights provided by the Trademark Act. The Principal Register is for marks that areused in interstate or international commerce and are legally registered. Marks on thePrincipal Register have been legally determined to function as trademarks, service marks,collective marks, or certification marks or other marks that indicate the source of goodsor services.

The benefits of being on the Principal Register include:

1. Notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C.§1072) eliminating any good faith defense by an infringer that claims it wasunaware of the mark.

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2. A legal presumption of the registrant’s ownership of the mark and the registrant’sexclusive right to use the mark in connection with the goods and/or services listedin the registration (15 U.S.C. §§1057(b) and 1115(a)).

3. An o�cially recorded filing date of the application claiming use of the mark fromat least that date (15 U.S.C. §1057(c); TMEP §201.02). For registrations grantedafter November 16, 1989, the registrant is entitled to claim the filing date of theapplication as the constructive date of earliest use (discussed later).

4. The ability to bring an action concerning the mark in federal court (15 U.S.C.§1117) and to claim statutory damages.

5. The ability to file the U.S. registration with the U.S. Customs Service to preventimportation of counterfeit or infringing foreign goods (15 U.S.C. §1124).

6. The registration becomes incontestable after five years on the Principal Registerafter filing the appropriate a�davit or declaration of continuous use. (15 U.S.C.§§1065 and 1115(b)).

7. Registrants have the right to register in countries that o↵er reciprocal rights tothe U.S.

Ch. 1/B (24)(b) The Supplemental Register

The Supplemental Register is for marks that are in commercial inter-state use, but not(yet) qualified to be placed on the Principal Register. A mark would be qualified if itobtains a secondary meaning or distinctiveness i.e., if the mark becomes associated inthe mind of the public with the goods or services with which they are used. Descriptivemarks, surnames and marks consisting primarily of geographical terms may qualifyto be placed on this register. Remember, a mark must be in use to be placed on theSupplemental Register, so an Allegation to Allege Use must have been filed. Whilethe mark is issued on the Supplemental Register, the applicant works to give the marksecondary meaning through advertising and marketing, etc. The owner of a mark onthe Supplemental Register generally intends to have the mark eventually registered onthe Principal register at some point.

Placing a mark on the Supplemental Register is frequently done and is very useful if itruns into merely descriptive rejections during trademark examination. It is a very easyprocess and provides many of the protections that the Principal Register provides, butwithout having to show secondary meaning or distinctiveness.

A Supplemental Registration cannot be converted into a Principal Registration. Suchconversion used to be allowed after a certain amount of time of exclusive use. Instead,the owner of the Supplemental Registration must file a new application to place the markon the Principal Registration. If the trademark owner has used the mark su�ciently thatit has acquired secondary meaning, the mark will be granted a Principal Registration.

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Benefits of Supplemental Registration. Registration on the Supplemental Registerprovides many of the same benefits of the Principal Register, including the following:

1. Notice to the public that the mark is being claimed by the applicant for indicatingthe source of specific goods or services.

2. Use of the ® symbol, or, Registered in the Patent and Trademark O�ce, or, Reg.U.S. Pat. & Tm. O↵.

3. Jurisdiction in Federal District Courts for claims of trademark infringement andunfair competition, and the possibility of recovering monetary awards. Thisincludes infringer’s profits, damages and costs, and in some cases, trebled damagesand attorney’s fees.

4. The mark is on file with the USPTO and can be cited by the USPTO against alater application by a third party to register a confusingly similar mark on thePrincipal Register.

5. The applicant can subsequently reapply under a new application to have the markregistered on the Principal Register. This usually requires showing that the markhas acquired secondary meaning in the eyes of the general public once the markhas been in use at least five years.

Di↵erences between Principal and Supplemental Registration. Registrationon the Supplemental Register does not provide all the protection of a registration on thePrincipal Register. It does not convey the same presumptions of validity or ownership,and it cannot be used to prevent the importation of infringing or counterfeit products.Also, unlike registration on the Principal Register, where after five years of continuoususe, the mark can be given incontestable status, you cannot do this for a mark on theSupplemental Register. An incontestable trademark can still be challenged, but it ismuch harder for the challenger to prevail, and it removes the ability for the trademarkto be cancelled by the TTAB for descriptiveness. See Section 15 of the Trademark Act,15 U.S.C. §1065.

Principal vs.Supplemental Trademark Register

PrincipalRegister

SupplementalRegister

Distinctiveness required? Yes No

Allowable with merely descriptive rejection? Yes No

Gives prima facie evidence of ownership and use? Yes No

Can achieve incontestable status? Yes No

Published for opposition? Yes No

Can be based on Intent to Use filing? Yes No

Requires basis of use in commerce? Yes Yes

May be based on foreign registration? Yes Yes

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Principal vs.Supplemental Trademark Register

PrincipalRegister

SupplementalRegister

Can use the ® symbol? Yes Yes

Provides a bar to subsequent registration by otherparties?

Yes Yes

Ch. 1/B (25) Resources: Laws and Rules and the TMEP

There are a couple of government publications that you should be familiar with. Thesepublications are written in a legalistic style that makes them hard to read, but theycan be very useful, and it is important to know how to use them. You can only reallybecome comfortable with these publications by repeated use, and this will happen slowly,with experience. We will not discuss these references in detail in this course, but wewould suggest that you have a look at them, remember they exist, and use them to lookup relevant rules when they are specifically referred to by section number in the courseand in USPTO correspondence. The three publications are:

15 U.S.C. (United States Code)37 C.F.R. (Code of Federal Regulations)T.M.E.P. (Trademark Manual of Examining Procedure)

The United States Code, Title 15 (15 U.S.C.) sets out the trademark laws as passed bythe United States Congress.

The Code of Federal Regulations, Title 37 (37 C.F.R.) reiterates the laws and adds somepractical detail about how the laws are to be applied. For example, it will list the feesthat are required to be submitted with various communications and to which addressesthey should be sent. As a trademark paralegal, you will probably be using 37 C.F.R.quite frequently.

The TMEP (Trademark Manual of Examining Procedure) tmep.uspto.govis the bookpublished by the USPTO to help trademark examiners. It usually comes in a large looseleaf binder, or bound as a thick, soft cover book, and it also available on the USPTOweb site; it looks very imposing, but it has a fairly good index. It contains almosteverything you ever need to know about trademark procedures. We highly recommendthat you become familiar with the TMEP.

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Ch. 1/B (26) The USPTO Web Site

As a trademark paralegal, you will probably be using the USPTO web site every dayof your professional life. We will not discuss the USPTO web site in any detail here,but we will describe and explain it all later, in the separate sections dealing with all itsfunctions.

The main tools that you will be using are TEAS– for filing forms on line, TSDR– forchecking that status of applications, and TESS– for searching marks.

Ch. 1/B (27) The Filing Date

This is an important concept. It is the o�cial date when the USPTO determines that atrademark application was received by them. The Filing Date can be very importantfor rights of use and in litigation. To get a filing date, you have to follow certainUSPTO-mandated rules and send in certain properly prepared documents. Making surethat all these rules are followed will be a major part of your responsibility and we’llspend quite some time going over these requirements in this course.

Ch. 1/B (28) Docketing

Good docketing is absolutely vital! When docketing goes wrong, deadlines get missed,applications become abandoned, clients are unhappy and people can get fired.

Docketing refers to the practice of entering information and due dates in a database toautomatically generate deadlines and reminders for said deadlines. This list of deadlinesis referred to as the docket. The docket should be printed out weekly and reviewed eachday. Each trademark application you deal with will have its own docket number, whichis a unique internal tracking number used to identify the client and matter numberassociated with the application file.

The filing of a trademark application (the filing date) sets the clock running for anumber of important actions that the applicant may take, e.g., providing samples ofuse, foreign filing dates (also known as Priority Dates) or responding to O�ce Actions.Correspondence from the USPTO will require a response from the applicant withincertain time limits calculated from the date that the correspondence was mailed orcommunicated electronically by the USPTO. The mailing date will be clearly printedon the USPTO document.

You will need to enter these dates into the docket and monitor accordingly to ensurethat no deadlines are missed. Special docketing software is commercially available fromComputer Packages, Inc. (CPI), OP-Solutions, Inc., WebTMS.com or other variouscompanies. Your docketing software will use the filing date and mailing dates to generatea list of deadlines for various actions. We’ll discuss docketing in more detail later.

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Ch. 1/B (29) Structure of a Trademark File

The fact that papers are now filed electronically has not negated the use of paper files,which are routinely used in law firms and corporations. It is hard to over-emphasizethe importance of a well-kept trademark file. Generally, a trademark file comes as a filewith a middle divider, creating four panels for papers.

One way to arrange documents inside a four-panel file folder is the following:

On panel 1 (the left hand side inside page of the file) there may be an envelope withspecimens showing the mark in use, for example, labeling or packaging. If you havespecimens that are too bulky, insert a note here indicating that specimens are ina separate accordion-style bucket file. On top of the envelope, also on panel 1, isplaced all correspondence from the USPTO, filed reverse chronologically, with the mostrecent document on top. It is useful to have an itemized, chronological index of thecorrespondence on top at all times. This helps you see at a glance what’s been doneand how far along the trademark application is in the prosecution process.

On panel 2 (the left hand side of the middle divider), place all correspondence to theUSPTO.

On panel 3 (the right side of the middle divider), put all correspondence to the client.

On panel 4 (the far right side), place all the correspondence from the client.

Your firm or company may have another system of filing papers, or di↵erent folders, butwhatever system you use, organization and consistency are key.

GO TO CHAPTER QUIZ

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IPlegalED, Inc. Trademark Paralegal Course · Contents 2/E (2) Intent to Use (ITU) Application...

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