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.

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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Deadlines and timing of trademarks and service marks

Duration of a US Trademark Registration

The duration of a US Trademark or Service Mark is perpetual; provided the following conditions are met:

  • The United States Patent and Trademark Office (USPTO) granted a federal Registration of the Trademark or Service Mark
  • After registration, the Trademark/Service Mark is not canceled by the USPTO or court order
  • The required government fees are paid in timely manner
  • The required declarations of use are timely filed in USPTO
  • The required evidence of use in commerce regulated by Congress is timely filed in the USPTO

Timing Required to Maintain a Trademark

There is a specific timing of Required Fees, Declarations and Evidence needed to Maintain a US Trademark/Service Mark Registration in full force and effect:

15 U.S.C. §1058. Duration, affidavits and fees

(a) Time periods for required affidavits

Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:

(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this chapter or the date of the publication under section 1062(c) of this title.

(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.

(3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.

Illustrations of Timely Filings

To preserve the duration of a US Trademark Registration you must do the following:

  • Between fifth and sixth year subsequent to registration, file required fees, declarations and evidence of use in USPTO
  • Between ninth and tenth year subsequent to registration, file required fees, declarations and evidence of use in USPTO
  • Between nineteenth and twentieth year subsequent to registration, file required fees, declarations and evidence of use in USPTO
  • ***Subsequent to the ninth year USPTO filings, every tenth year interval, i.e, 19, 29th, 39th, etc. from the registration date

If your company needs assistance with its Trademarks/Service Marks, 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 you 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.

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.

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, we are here to assist you.

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Notice of Abandonment for Patent

Notice of Abandonment

Approximately six months ago, our company’s patent attorney filed our response to the USPTO Office Action. The response was filed within the time period set by the USPTO. We just received a USPTO Notice of Abandonment of our Patent Application.

When receiving a Notice of Abandonment, do not panic. It is not uncommon for the USPTO to take months and sometimes more than a year to reply to an Applicant’s response. Applicants have two months from the date of the Notice of Allowance to file documents in the USPTO.

What Can You Do?

First, let’s determine your particular situation, based on the letter you received…

The Notice of Abandonment identifies the USPTO’s reasons for the abandonment

  • Pursuant to 37 C.F.R 1.135, prepare a complete response for the most recent Office Action that was issued prior to the Notice of Abandonment.
  • Pursuant to 37 C.F.R. 1.137, prepare a Petition to Revive and pay the USPTO fee.

The Reason(s) for the Notice of Abandonment cannot be readily discerned

  • When the Examiner is known, attempt to call the Examiner.
  • Most Examiners are responsive to telephone inquiries.  However, if the Examiner is not responsive to your telephone messages, attempt to call the Examiner’s supervisor.  Supervisors generally return calls.
  • If the Examiner is unknown, search the USPTO database for one or more telephone numbers that can be of assistance in identifying USPTO personnel that may be of assistance.
  • If the Notice of Abandonment is associated with a US National Stage Application, the PCT help desk may be of assistance.

Once you have the evidence required to respond to the Notice of Abandonment:

  • Pursuant to 37 C.F.R 1.135, prepare a complete response for the most recent Office Action that was issued prior to the Notice of Abandonment.
  • Pursuant to 37 C.F.R. 1.137, prepare a Petition to Revive and pay the USPTO fee.

The Code of Federal Regulations

37 C.F.R 1.135 – Abandonment for failure to reply within time period reads:

  • (a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.

  • (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.

  • (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.

37 C.F.R 1.137 Revival of abandoned application, or terminated or limited reexamination prosecution.

In part, 37 C.F.R 1.137 reads:

(a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under §1.550(d) or §1.957(b) or limited under §1.957(c).

(b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:

  • The reply required to the outstanding Office action or notice, unless previously filed;

  • The petition fee as set forth in §1.17(m);

  • Any terminal (and fee as set forth in §1.20(d) required pursuant to paragraph (d) of this section; and

  • A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

Navigating the requirements of protecting your intellectual property can be challenging. If you need assistance, please contact Business Patent Law, PLLC.  We provide intellectual property and business counsel for businesses and companies. If you would like to stay up-to-date with the news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Lexington Kentucky Trademark Bananas

Lexington Trademarks/Service Marks

Will the United States Patent and Trademark Office (USPTO) grant a federal Trademark/Service Mark Registration for the term “Lexington?” It depends on the goods or services with which the Trademark or Service Mark are associated.

The Statutory Law

15 United States Code (U.S.C.) Section 1052, in part, reads:

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 it—

(e) 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.

When certain facts are in evidence, under 15 U.S.C. Section 1052(e), the Trademark Examiner can reject the Applicant’s Application as “primarily geographically descriptive.”

The USPTO Examiner’s Geographically Descriptive Marks – Test

The Examiner is to consider:

  • (1) the primary significance of the mark is a generally known geographic location
  • (2) the goods or services originate in the place identified in the mark; and
  • (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association.

Illustration 1 – Refusal

The Owner of a Lexington, Kentucky restaurant filed an Application for Registration in the USPTO for “The Lexington” for restaurant services

Pursuant to the USPTO test, the Examiner would argue that “The Lexington” for restaurant services is “primarily geographically descriptive” and refuse registration of the Service Mark.

Illustration 2 – Approval

The Owner of a Lexington, Kentucky banana store filed an Application for Registration in the USPTO for “Lexington” for bananas

Pursuant to the USPTO test and the case law, the name of a geographic location that has no significant relation to commercial activities or the production of the relevant goods or services, such as Lexington for bananas, is treated as an arbitrary mark because it is unlikely that consumers would believe that the mark identifies the place from which the goods originate.  The Examiner would likely conclude that the Trademark “Lexington” for bananas sold by the Lexington banana store should be granted.

Illustration 3 – Refusal

The Owner of a Lexington, Kentucky saddlery shop filed an Application for Registration in the USPTO for “Lexington” for saddles, bridles, and other equipment for horses

Pursuant to the USPTO test, the Examiner would argue that “Lexington” for saddles, bridles, and other equipment for horses is “primarily geographically descriptive” and refuse registration of the Trademark because Lexington, Kentucky is world renown for thoroughbred horses.

Conclusion

For Applicants, the federal registration process can be somewhat confusing.  By way of illustration, when a potentially “geographically descriptive” mark overcomes the 15 U.S.C. Section 1052(e) bar to registration, the applicant must still overcome the 15 U.S.C. § 1052 Sec. 2 (d) “likelihood of confusion” bar and other 15 U.S.C. § 1052 bars to registration.

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios.

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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.

Likelihood of Confusion trademarks service marks

Likelihood of Confusion – Trademarks

“Likelihood of confusion” is a legal test. It is applied by the courts and administrative agencies to contested Trademark/Service Mark proceedings and by United States Patent and Trademark Office (USPTO) Examiners during the registration process for Trademark/Service Mark Applications.

Likelihood of Confusion – What Law Applies?

Before a federal Trademark is granted, an Applicant must prove to the USPTO that the Trademark was used on goods and/or services in commerce that the U.S. Congress may lawfully regulate. The geographical limit for a federal Trademark registration is the geographical boundary of the United States and its territories.

Federal Jurisdiction

Federal jurisdiction of Trademarks/Service Marks (hereinafter Trademarks) can be controlled by the precedent of the US Supreme Court or one of the thirteen federal circuit courts sitting beneath the US Supreme Court.

Each of the thirteen federal circuits has its own case law precedent for adjudicating “likelihood of confusion” for contested Trademarks.  Although the case law precedent of the federal circuits is similar, it is not identical.

State Jurisdiction

When a Trademark is granted at the State level, the law of that State controls court and agency proceedings. The laws of the several States are variable on the standards for “likelihood of confusion.” The geographical limit for a State Trademark is the border of the State.

Likelihood of Confusion – USPTO Trademark Applications

For the USPTO, the “likelihood of confusion” precedent for Trademark Examiners is set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). Today, the Court of Appeals for the Federal Circuit has jurisdiction over appeals from USPTO agencies and adopted the du Pont case as precedent.

On page 567 of the du Pont case, the court stated:

“In testing for the likelihood of confusion under 15 U.S.C. § 1052 Sec. 2 (d), the following, when of record, must be considered:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  2. The similarity of dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. care, sophisticated purchasing.
  5. The fame of the prior mark (sales, advertising, length of use.)
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  8. The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
  9. The market interface between applicant and the owner of a prior mark… (e.g., have the interested parties executed a contract to proclaim there is no confusion?).
  10. The extent to which the applicant has a right to exclude others from use of its mark on its goods.
  11. The extent of potential confusion, i.e., whether de minimis or substantial.
  12. Any other established fact probative of the effect of use.”

If the Examiner or the USPTO determines there is a “likelihood of confusion” between Applicant’s Trademark and a prior Registration or pending Application, the USPTO will refuse to register the junior Applicant’s Trademark.

Observations

With regard to the “likelihood of confusion” test, each of the federal circuit courts have adopted precedent similar to the test set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). When possible, parties to an infringement will attempt to try the case in a venue most favorable a party’s evidence and arguments.

Have Questions on Your Trademark?

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios.

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses of all sizes.

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.

Securing Your Trademark Service Mark - Evidence of Use for Trademarks

Evidence of Use for Trademarks

Do I Have to Use My Product or Trademark in Commerce First?

Yes. Before the United States Patent & Trademark Office (USPTO) grants a Registration, you must provide evidence of use of the Mark in commerce.

The Statutory Law

15 United States Code 1051 (U.S.C.) (a) (2) reads, “The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.”

15 U.S.C. 1127, in part, reads, “The word “commerce” means all commerce which may lawfully be regulated by Congress.”

Establishing Interstate or International Use

Only interstate or international commerce can be lawfully regulated by Congress. Thus, interstate or international use of your product is required to secure a federal Registration.

Example Scenarios

Your Louisville, Kentucky company, only sells gizmos (bearing your Trademark) to a Lexington Kentucky corporation. In this example, there is only intrastate commerce. Since Congress does not regulate intrastate commerce, your Trademark would not be a subject for a federal Registration.

On the other hand, if your Cincinnati Ohio company sells gizmos (bearing your Trademark) to corporations in Columbus, Ohio; Louisville, Kentucky; and Nashville, Tennessee, then you conduct interstate commerce. Since Congress regulates interstate commerce, your Trademark would eligible for a federal Registration.

Likewise, if your Lexington, Kentucky company sells your gizmos (bearing your Trademark) to retailers in Canada and Mexico, then you conduct international commerce. Congress regulates international commerce, so your Trademark would be eligible for federal Registration.

What is Acceptable Evidence of Use to Establish Interstate or International Use?

For either Trademarks or Service Marks, invoices and other business records showing sales across state lines or international borders are useful in establishing interstate and/or international commerce. Here are a few more examples of acceptable evidence of use for both Trademarks and Service marks:

 Examples of Evidence for Trademarks:

  • Photographs of the Trademark, when attached to the goods and/or the packaging containing the goods
  • Photographs of displays of the goods, where the displays and the goods bear the Trademark
  • Screen shots of websites for the sale of goods where the website and the goods bear the Trademark
  • Screen shots of websites for the streaming or downloading of software products, where the website and the software goods bear the Trademark
  • Copies of audio commercials advertising the goods bearing your Trademark
  • Photographs of promotional giveaways advertising the goods bearing your Trademark

Examples of Evidentiary Specimens for Service Marks:

  • Photographs associating the Service Mark with the services rendered
  • Video and/or audio commercials associating the Service Mark with the services rendered
  • Printed publications and brochures associating the Service Mark with the services rendered
  • Letterhead and business cards associating the Service Mark with the services rendered
  • Photographs of promotional giveaways associating the Service Mark with the services rendered

What Digital Formats Should I Use To Provide Evidence?

Do you plan to submit digital proof of use to the USPTO? Then you need to know that the office prefers PDF or .jpg samples. So, be sure to submit all digitally filed evidentiary specimens in one of these two formats.

What If I Need More Trademark Help or Legal Advice?

When you need help to secure, manage and/or enforce your Trademarks or Service Marks, contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies of all sizes.

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.

Intent to Use Applications - Service Marks and Trademarks

Intent to Use Applications

Intent to Use Applications for Registration

There are two kinds of federal Trademark/Service Mark Applications:

  1. Intent to Use Applications
  2. In Use Applications

In the United States, the Mark must have interstate or international use before a federal Registration is granted.

Clients may opt to use the Intent to Use route to establish a “constructive” date of first use (the filing date) with the grant of the Registration. This constructive date of first use can benefit the Applicant/Owner of the Mark in situations where there are conflicts between competing Applications for Registration.

The Statutory Law for Intent to Use Applications

The United States code allows an applicant to file an Application for Registration before the Mark has interstate or international usage. That section of the code (15 United States Code 1051) reads:

(b)Application for bona fide intention to use trademark

(1)  A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.

When filing of the Application, the Applicant must verify the following:

  • The Applicant believes that he/she/it is entitled to use the Mark in commerce
  • The Applicant has a bona fide intention of using the Mark in commerce
  • That the facts recited in the Application are accurate
  • That no other person is using an identical form in connection with goods (services) or in a near enough resemblance that it is likely to cause confusion, mistake, or to deceive

There is a USPTO filing fee for filing the Intent to Use Application and the filing of an Application for Registration does not guarantee that Registration will be granted.

The USPTO email Notice of Allowance

After filing of the Intent to Use Application, there may be one or more Office Actions between the Examiner and the Applicant before the Examiner issues or declines a Notice of Allowance.

If the Examiner approves the Intent to Use Application, the Applicant will receive an email from the USPTO that indicates the following (among other things):

  • Notice of Allowance (NOA)
  • Issue Date
  • U.S. Serial Number
  • Mark
  • Docket/Reference Number

If no opposition was filed for this published Application, the issue date of this NOA establishes the due date for the filing of a Statement of Use (SOU) or a Request for Extension of Time to file a Statement of Use (Extension Request).  WARNING: A SOU that meets all legal requirements must be filed before a Registration Certificate can issue.  Please read below for important information regarding the Applicant’s pending six (6) month deadline.

The Six Month Deadline

An applicant has six (6) MONTHS from the NOA issue date to file either:

  • An SOU, if the Applicant is using the mark in commerce. OR
  • An Extension Request. (Required if the applicant is not yet using the mark in commerce.)

NOTE: If an Extension Request is filed, a new request must be filed every six (6) months until the SOU is filed.  The applicant may file a total of five (5) extension requests.  Warning: An SOU may not be filed more than thirty-six (36) months from when the NOA issued.  The deadline for filing is always calculated from the issue date of the NOA.

Post Notice of Allowance Procedures 

Until the Mark has interstate or international usage and the Registration is granted, Applicant must file either:

  • A Statement of Use; or
  • A Request for an Extension of Time in which to file a Statement of Use

Support of a Request for an Extension of Time to file a Statement of Use

You do not have to show “good cause” for the first request, but in order to support your request for an extension after that, you must include a showing of good cause. The showing of good cause must include a statement of the Applicant’s ongoing efforts to use of the Mark in commerce.

Efforts to use the Mark in commerce may include:

  • product or service research or development
  • market research
  • manufacturing activities
  • promotional activities
  • steps to acquire distributors
  • steps to obtain required governmental approval, or
  • other similar activities

An Applicant can file a maximum of five Requests for an Extension of Time to file a Statement of Use.

Need assistance with your Intent To Use Application?

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

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.

suspended trademark next steps

Trademark Suspension Notice: How to Handle

The Trademark Suspension Situation

Our Company has been using our Trademark for Years. Our General Counsel filed an In-Use Federal Trademark Application. We just received a Suspension Notice from the Trademark Examiner.

  • During the Application phase, regardless of your Company’s alleged prior use, the Examiner can suspend your Company’s Trademark Application
  • With regard to Trademark Applications filed in the USPTO, until the subsequent Applicant proves otherwise, the first Applicant to file has superior procedural rights, and potentially, superior substantive rights
  • When a Trademark Application is suspended, the Examiner takes no further action on the suspended Application until proof of certain evidentiary conditions cause the Examiner to resume examination of the suspended Application
  • In some situations, multiple Applicants’ Applications can be suspended for a period of years

Receiving a Trademark Suspension Notice

A United States Patent and Trademark Office (USPTO) Suspension Notice of a pending Trademark Application looks something like the following:

SUSPENSION NOTICE

No Response Required

Issue date:  December 15, 2020

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq.

USPTO database searched; prior-filed potentially conflicting pending application(s) found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark(s) in a prior-filed pending application(s) may bar registration of applicant’s mark.

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s).  15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c).  Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below is provided in this letter.

– U.S. Application Serial No(s). ????????

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05.

What can our Company do to Advance our Application?

  • Accumulate evidence about the Applications involved with the suspension
  • Seek competent intellectual property counsel
  • Determine best options for success in advancing the Company’s Application toward a Federal Registration
  • In the United States, before the USPTO grants a Registration, the Applicant must provide evidence of either interstate or international use of the Mark
  • Trademark Suspension Notices can create a convoluted path to federal Registration

Need More Help?

Business Patent Law, PLLC represents and has represented clients owning suspended Trademark Applications before the USPTO. If you need legal assistance in preparing and prosecuting and Patent and Trademark Applications, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses, companies and individuals.

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.