Trademark Examiner's Amendment

Should You Accept a Trademark Examiner’s Amendment?

Trademark Examiner’s Amendment of Application

A Trademark Examiner’s amendment is sometimes suggested and/or required during examination a US Trademark Application*.

Some Examiner’s amendments will alter the scope of rights associated with a future Trademark Registration. Other Trademark Examiner’s amendments will not modify the scope of rights associated with a future Trademark Registration.

Whether or not to accept the Trademark Examiner’s amendment is a business decision.

Potential Consequences of an Amendment

Applicant’s acceptance of the Trademark Examiner’s amendment generally results in Trademark Registration for the Applicant.

Failure to agree to the Examiner’s amendment can result in:

  • Legal arguments that the Examiner’s suggested amendment is inappropriate
  • A refusal to register the Trademark and the loss of long-term federal rights associated with a US Registration
  • An appeal to the Trademark Trial and Appeal Board where the Applicant can lose the appeal
  • Filing a new Application to register the Trademark, where the new Application is modified from the previously filed Trademark Application

About Section 707 – TMEP – Examiner’s Amendment*

Examples of Section 707 relevant procedures for Trademark Examiners include:

  • An Examiner’s amendment should be used whenever appropriate to expedite prosecution of an Application
  • An Examiner’s amendment is a communication to the Applicant in which the examining attorney states that the Application has been amended in a specified way
  • Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual Applicant, someone with legal authority to bind a juristic Applicant 700-20 October 2010 (e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner
  • Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the Applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual Applicant, someone with legal authority to bind a juristic Applicant, or the Applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b) and 2.74(b)
  • If the Applicant has a qualified practitioner, the examining attorney must speak directly with the practitioner
  • If the Applicant is pro se, the examining attorney must speak directly with the individual Applicant or with someone with legal authority to bind a juristic Applicant (e.g., a corporate officer or general partner of a partnership)
  • For joint Applicants who are not represented by a qualified practitioner, each joint Applicant must authorize the examiner’s amendment

*Along with Trademarks, the USPTO Trademark Manual of Examining Procedure (TME) also applies to Service Mark Applications.

If your company needs assistance with its Trademarks/Service Marks, please contact Business Patent Law.

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If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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Christmas Patent Products

Patents for Christmas Inventions

Do Investors Get Patents for Christmas Inventions?

Yes, many inventors receive patents for Christmas inventions!

In 2023, US Christmas sales are anticipated to exceed 950 billion dollars. Christmas inventions are a portion of this market. Some inventors hope to seize a portion of those sales.

Examples of Christmas Themed Inventions

Ask Us Anything… about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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Patent drawings for patent application and replacement drawings after notice of allowance

Replacement Drawings After a Notice of Allowance?

Can the USPTO Require Replacement Drawings?

YES.

Some Applicants for US Patents represent themselves and, on occasion, the pro se Applicant successfully argues to the Examiner that the Application’s claims are patentable.

Other Applicants are represented by patent professionals and (due to various national and international deadlines) a complete but not pristine Patent Application that obtains a filing date is filed in the USPTO.

For some Patent Applications, Examiners issue a Notice of Allowance where the Issue Fee must be paid by a specified date. After the Examiner’s issues the Notice of Allowance, the Application is transferred to the Publications Branch of the USPTO. It is here that a replacement drawing may be required.

Code of Federal Regulations for Utility Patent Application Drawings

37 Code Federal Regulations 1.84 (a) (1), in part, reads, “37 C.F.R. 1.84 Standards for drawings.  (1) Black ink.  Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings”.

After receiving the allowed Patent Application from the Examiner, the Publications Branch can require correction of a part of the Application, such as the Drawings. For instance, when Applicants have not filed the required black and white line drawings in the as-filed Application, but rather used photographs or non-line computer generated images to obtain a filing date.

Most of the time, the drawings are replaced before the Notice of Allowance is granted. However, occasionally, the black and white line drawings are required after the Notice of Allowance and before the grant of the Patent.

Patent drawings for replacement drawings after notice of allowance

Replacement Drawings for Utility Patent Applications

A part of the Notice for Corrected Application Papers looks something like the example below.

Notice to File Corrected Application Papers for Patent

In the Notice to File Correction Application Papers, the Publication Branch of the USPTO requires replacement black and white line drawings before the Patent Application will be granted. One or more as-filed figures need to be replaced by black and white line drawings.

To properly respond to the Notice to File Correction Application Papers – Drawings, the Applicant must file the required black and white line drawings within the allotted time identified on the Notice to File Correction Application Papers.

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If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Abandoned Patent Application

Is An Abandoned Patent Application Public?

How Does a Patent Application Become Abandoned?

An abandoned Patent Application occurs when the Applicant does not meet United States Patent Office’s (USPTO) requirements in responding to the USPTO.

Are They Public Record?

Does an abandoned US Patent become public record when it is abandoned?  It depends!  For national security reasons, some Patents are kept top secret.

With the exception of top secret Patents, when a US Patent is granted the contents of the granted Patent’s USPTO file wrapper become public record.

As a general rule:

  1. When a US Patent Application is abandoned, the USPTO file wrapper for the US Patent Application does not become public record.
  2. A US Provisional Patent Application does not become public record.

Existing Patent Applications Available to the Public Include:

  • Published Patent Applications
  • Reissue Patent Applications
  • Documents that were sealed as a condition of filing the Patent Application
  • Arbitration records associated with a Patent Trademark Trial and Appeal Board proceeding
  • All documents and evidence entered in a US Patent’s Reexamination Proceedings’ records

Abandoned Patent Applications Available to the Public

  • Unpublished abandoned applications (including provisional applications) that are identified or relied upon
  • Unpublished pending applications (including provisional applications) whose benefit is claimed
  • Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified

USPTO Legal Authority Regarding Public Records of Patent Applications

37 Code of Federal Regulations Section 1.11

37 Code of Federal Regulations Section 1.14

Ask Us Anything… About Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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Trade Secrets - What are they and how do you protect them

What Are Trade Secrets?

Trade Secrets

Trade Secrets are a type of intellectual property that can be of great value to the owner over a period of years. For something to be a Trade Secret, it must be kept secret. Public disclosure of a Trade Secret destroys the value of the Trade Secret.

Depending on the circumstances associated with the Trade Secret, federal (18 U.S.C 1831-1839), State or common law may determine the rights of the owner of the Trade Secret. 18 U.S.C 1831-1839, for instance, has both criminal and civil provisions.

Forty-eight of the 50 States have adopted the Uniform Trade Secrets Act (UTSA) which became the law of those States.

Definitions of Trade Secrets

U.S.C. 1939 (3) reads:

“…(3) the term “trade secret” means all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if—

          (A)    the owner thereof has taken reasonable measures to keep such information secret; and

          (B)    the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information;…”

The UTSA defines “trade secret” as:

“”Trade secret” means information, including but not limited to, a formula, pattern, compilation, program, device, method, technique, or process, that:

  1. Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and
  2. Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

What is misappropriation?

 18 U.S.C. 1939 (5 & 6) read:

 (5)   the term “misappropriation” means—

          (A)    acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or

          (B)    disclosure or use of a trade secret of another without express or implied consent by a person who—

                    (i)     used improper means to acquire knowledge of the trade secret;

                    (ii)    at the time of disclosure or use, knew or had reason to know that the knowledge of the trade secret was—

                              (I)     derived from or through a person who had used improper means to acquire the trade secret;

                              (II)   acquired under circumstances giving rise to a duty to maintain the secrecy of the trade secret or limit the use of the trade secret; or

                              (III)  derived from or through a person who owed a duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the trade secret; or

                    (iii)   before a material change of the position of the person, knew or had reason to know that—

                              (I)     the trade secret was a trade secret; and

                              (II)   knowledge of the trade secret had been acquired by accident or mistake;

What are Improper Means?

 (6)    the term “improper means”—

          (A)    includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means; and

          (B)    does not include reverse engineering, independent derivation, or any other lawful means of acquisition;…”

The UTSA Defines “Improper Means” and “Misappropriation”

(1)     “Improper means” includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means;

(2)     “Misappropriation” means:

(a)     Acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or

(b)     Disclosure or use of a trade secret of another without express or implied consent by a person who:

    1. Used improper means to acquire knowledge of the trade secret; or
    2. At the time of disclosure or use, knew or had reason to know that his knowledge of the trade secret was:
    3. Derived from or through a person who had utilized improper means to acquire it;
    4. Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or
    5. Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or
    6. Before a material change of his position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake.

If your company needs assistance protecting its Trade Secrets, please contact Business Patent Law, PLLC.

Ask Us Anything… about Intellectual Property!

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Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Copyright Rules Regulations and Frustrations

Copyright Applications

Copyright Applications

This blog is an expansion of BPL’s July 9, 2020 blog on Copyright Registrations in an effort to further help you understand the copyright process.

It Can Be Complex

The process of applying for a Copyright Registration, according to the United States Code, is as follows:

To procure US Copyright Registrations, the creator/owner of the original work(s) of authorship must be fixed in a tangible medium of expression. 17 United States Code 102.

Simplifying The Code

Let’s consider that statement in normal-speak instead of legalese.

  • The “creator/owner” can be self explanatory, as is the “original work.”
  • Depending on circumstances, the creator is not always the owner.
  • “Authorship” means somebody needs to create the original work.
  • The “tangible medium of expression” can be anything from a physical copy of the work, such as a book or a painting, to a digital copy, such as a computer file or an online video.

With that information, you now know that once there’s a copy of the work (tangible medium of expression), you as the creator/owner will need to file a Copyright Application with the Copyright Office to procure a Copyright Registration.

Benefits Of A Copyright Registration

The application must include information about the work, such as the title, the author, and the date of creation. Once the application is filed, the Copyright Office may issue a Copyright Registration. They usually do, but not always. Also, Copyright Registration is not required to secure a Copyright, but it does provide a number of benefits, including the ability to sue in federal court for Copyright infringement and statutory damages.

Selecting The Correct Copyright Application Form May Not Be Straight Forward

You didn’t expect anything at the Copyright Office to be simple or easy did you? There are different types of authorships which  require different Copyright Office paper forms or digital portals.

Principal Categories of Copyright Applications

  • Literary Works
  • Performing Arts
  • Visual Arts
  • Motion Pictures
  • Digital Works not otherwise categorized
  • Photographs

Copyright Office Forms/Digital Portals

Literary Works (Fiction, Non-Fiction, Poetry, Articles, Periodicals)

  • Literary Work (Form TX)
  • Serial Publications (Form SE)
  • Form CON

Performing Arts (Music, Lyrics, Sound Records, Scripts, Stage Plays)

  • Works of the Performing Arts (Form PA)
  • Sound Recordings (Form SR)
  • Form CON

Visual Arts (Artwork, Illustrations, Jewelry, Fabric, Architecture)

  • Visual Arts Work (Form VA)
  • Form CON

Motion Pictures (Movies, TV Shows, Video Games, Animation, Videos)

  • Works of the Performing Arts (Form PA)
  • Form CON

Group Copyright Applications

1. Group Registration for Works on an Album of Music (GRAM) –

Group Registration of musical works, recordings, photos, artwork and liner notes that are published on the same album

2. Group Registration of Short Online Literary Works (GRTX) –

  • Digital Works not otherwise categorized (Computer Programs, Databases, Blogs, Websites)
  • Group Registration of Published Photographs
  • Group Registration of Short Online Literary Works

3. Group Registration of Unpublished Works (GRUW) –

  • Photographs (News Photographs, Selfies, Wedding Photographs, Family Photographs)
  • Photographic Databases

If you want to secure a copyright on your original works and need assistance filing your Copyright Applications, contact BPL we would be happy to handle this task for you.

Ask Us Anything… about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like us to address in the blog, please send us an email.

We provide intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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Restriction Requirement for Patents

Restriction Requirement

What Our Company Did

We are a start-up existing on a shoe string budget.

An inventor not associated with our company invented a product.  Because our company expected the product would improve our bottom line, we opted to take a license from the inventor to make and sell the product.

Apparently, to save legal fees, the inventor opted to represent himself before the USPTO. Unfortunately, about two years after filing the Patent Application, the inventor received a Restriction Requirement from the USPTO.

What do we do now?

What is a Restriction Requirement?

Title 35 United States Code 121 – Restriction Requirement

35 U.S.C. 121 reads:

“If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.”

35 U.S.C. 121 prevents a tribunal from using the first Application and/or first Patent from which the second Application was divided from being used to reject the claims of the second Application and/or subsequent second Patent.

Restriction Requirement – How The Inventor Can Respond

In the Restriction Requirement, the Examiner will argue something like, “The species are independent or distinct because as disclosed the different species have mutually exclusive characteristics for each identified species.  In addition, these species are not obvious variants of each other based on the current record.”  Generally, the Examiner will suggest groupings of claims from which the Applicant can select a single group of claims for first examination.

An Applicant has an opportunity to argue against the Restriction Requirement by stating that the species are patentably indistinct.  However, this can be a risky strategy.  Such an admission can be used to reject the second species of claims as obvious in view of the first species of claims and other prior art.  In other words, the claims can be rejected as obvious pursuant to 35 U.S.C. 103.

The Better Strategy When Responding to a Restriction Requirement

When the Examiner argues for a Restriction Requirement, the Applicant can elect an invention for first prosecution.

In most instances, the better strategy for the Applicant is to elect one of the Examiner’s groupings claims for first prosecution. During prosecution, the scope of the claims can be expanded by amendment. Frequently, after the examination of the first grouping of claims, Applicant’s will file a Divisional Application including additional claims related to the invention.

Responding to a Restriction Requirement can be tricky. If you need assistance responding to a Restriction Requirement, please contact Business Patent Law, PLLC.

Ask Us Anything… about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

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Mask Mark Protection

What are Mask Works?

Mask Works are a type of intellectual property created by the Semiconductor Chip Protection Act (SCPA) of 1984.

Statutory Mask Works rights are set forth in Title 17 United States Code §§ 901-914. In general, the SCPA allows for the protection of the combination of a mask and a semiconductor chip.

Some Requirements for and Rights associated with Intellectual Property Protection of Mask Works

  • A mask work must be a series of related images, however fixed or encoded (1) that have or represent the predetermined three dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and (2) in which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product.
  • A semiconductor chip product is defined as the final or intermediate form of any product (1) intended to perform electronic circuitry functions and (2) having two or more layers of metallic, insulating, or semiconductor material, deposited or otherwise placed on or etched away or otherwise removed from a piece of semiconductor material in accordance with a predetermined pattern.
  • The Registration of the Mask Work is effective on the date of the Registration or the date the Mask Work is first commercially exploited anywhere in the world by an owner as defined in 17 United States Code § 902.
  • A Registration of the Mask Work is effective for ten years. However, to secure protection of the Mask for the entire 10-year term, the owner must register the work with the Copyright Office within two years of the date on which the Mask work is first commercially exploited or the potential protection will be lost.
  • 17 United States Code § 905 reads, “The owner of a Mask Work provided protection under this chapter has the exclusive rights to do and to authorize any of the following: (1) to reproduce the Mask Work by optical, electronic, or any other means; (2) to import or distribute a semiconductor chip product in which the Mask Work is embodied; and (3) to induce or knowingly to cause another person to do any of the acts described in paragraphs (1) and (2).”

Limitations of Owner’s Rights

  • Protection is not available for a Mask Work that is not original or consists of designs that are staple, commonplace, or familiar in the semiconductor industry, or variations of such designs, combined in a way that, considered as a whole, is not original.
  • It is not an infringement of the exclusive rights of the owner of a Mask Work for— (1) a person to reproduce the Mask Work solely for the purpose of teaching, analyzing, or evaluating the concepts or techniques embodied in the Mask Work or the circuitry, logic flow, or organization of components used in the Mask Work; or (2) a person who performs the analysis or evaluation described in paragraph (1) to incorporate the results of such conduct in an original Mask Work which is made to be distributed. 17 United States Code § 906.
  • An innocent purchaser of an infringing semiconductor chip product — (1) shall incur no liability under this chapter with respect to the importation or distribution of units of the infringing semiconductor chip product that occurs before the innocent purchaser has notice of protection with respect to the Mask Work embodied in the semiconductor chip product and (2) shall be liable only for a reasonable royalty on each unit of the infringing semi­conductor chip product that the innocent purchaser imports or distributes after having notice of protection with respect to the Mask Work embodied in the semiconductor chip product. 17 United States Code § 907.

Mask Work Notice

  • The notice shall consist of— “(1) the words “Mask Work”, the symbol *M*, or the symbol Ⓜ (the letter M in a circle); and (2) the name of the owner or owners of the Mask Work or an abbreviation by which the name is recognized or is generally known.” 17 United States Code § 909.

If your company needs assistance with registration of Mask Works, please contact BPL.

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and you have a topic or question for Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Sound Trademarks

Sound Trademarks

Sound Trademarks

Will the United States Patent and Trademark Office (USPTO) register Sound Trademarks or Service Marks?  Yes.

“Sensory”  Trademarks or Service Marks including sounds, odors, and colors can be the subject matter for US Applications for Registration in the United States Patent and Trademark Office.  In other words, sensory Marks can serve as an indicator of the source of the goods or services.

 Examples of Sound Trademarks and Service Mark Registrations

Click  to hear the Sound Trademark or Service Mark.

The Criterion for registration of Sensory Marks

The Criterion for registration of Sensory Marks is identical to Non-Sensory Trademarks. Title 15 of the United States Code, in part, reads:

  • 1052 – Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless —

Examples of situations that prevent registration are:

      • Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof
      • Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow
      • Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive
      • Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional

 

  • 1053. Service marks registrable

Subject to the provisions relating to the registration of trademarks, so far as they are applicable, service marks shall be registrable, in the same manner and with the same effect as are trademarks, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks. Applications and procedures under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks.

Do You Need a Sound Trademark?

Trademark/Service Mark Applications can become complicated. If your company needs cost-efficient assistance with the filing of a sound Trademark/Service Mark, please contact us.

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact us. We will be happy to assist you.

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International Intent to Use Application

Intent to Use Application – Multiclass

What is an Intent to Use Application?

When the goods or services are yet to be used in commerce, clients may opt to file Intent to Use Applications.  The Intent to Use Trademark/Service Mark Application establishes a “constructive” date of first use with the grant of the Registration. Having this date formally established and recorded can benefit the Applicant/Owner of the Mark in situations where there are conflicts between competing Applications for Registration.

Filing a Multi-International Class Intent to Use Application

There are forty-five (45) International Classifications of goods and services. The USPTO requires a filing fee for each International class in which the Applicant intends to use the goods or services. International Classes 1-34 apply to goods and International Classes 35-45 apply to services. Applicants can file a Trademark/Service Mark Application for the same – MARK – in one or more International Classes.

The Scenario: A Case Study

Our company filed a multiclass Application for our – MARK – in International Classes 1 (chemicals), 6 (pharmaceuticals), 10 (medical apparatus), 29 (staple foods) and 44 (medical services).

In due course, the Examiner issued a Notice of Allowance for International Classes 1 (chemicals), 6 (pharmaceuticals), 10 (medical apparatus), 29 (staple foods) and 44 (medical services).

Within six months after the Notice of Allowance, the Applicant must file a Statement of Use for the – MARK – for each International Class before the Registration for that International Class will be granted.

Past The Six-Month Deadline?

For an International Class, if the Applicant has not used the – MARK – in interstate/international commerce before the expiration of the sixth month period, the Applicant can file a Request for an Extension of Time in Which to File a Statement of Use. The Request for an Extension of Time in Which to File a Statement of Use grants the Applicant an additional six-month period to file a Statement of Use for an International Class.

How Many Extensions?

Under Title 15 of the United States Code, an Applicant may file a maximum of five Requests for an Extension of Time in Which to File a Statement of Use.  If a Statement of Use is not filed for an International Class within the maximum statutory time limit, the Application for Registration will go abandoned for that International Class and the Applicant must file a new Application for Registration of the – MARK –.

NOTE: Some International Classes of goods/services require government agency approval before those goods and services can be used in interstate/international commerce.

For the company’s – MARK –, we were able to establish interstate/international use:

  • For International Class 29 (staple foods), the company filed a Statement of Use during the first Request for an Extension of Time to file a Statement of Use and received a Registration.
  • For International Class 44 (medical services), the company filed a Statement of use during the second Request for an Extension of Time and received a Registration.
  • For International Class 1 (chemicals), the company filed a Statement of use during the third Request for an Extension of Time and received a Registration.
  • Due to lack of FDA approval, the company could not establish intrastate/international use of the – MARK – for International Classes 6 (pharmaceuticals) and 10 (medical apparatus) and the Application went abandoned for International Classes 6 and 10.

BPL’s Observations

Although a multiclass Application can be divided after filing, it is usually more cost-efficient for a company to file an Application for each International Class 1 (chemicals), 6 (pharmaceuticals), 10 (medical apparatus), 29 (staple foods) and 44 (medical services), i.e., file five Applications for Registration rather than a single multi-class Application.

The time of filing an Intent to Use Application is critical for most businesses.

Trademark/Service Mark situations can become complicated. If your company needs cost-efficient assistance with filing for Trademarks/Service Marks, please contact BPL.

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