Filing & Prosecution - USA Flashcards
What are the ways to obtain TM protection in the US?
- Simply using a TM (common law rights)
- only protected in locality in which mark is used, may be able to stop others in that locality from using similar marks - State TM Registration
- Federal TM Registration
- national
- international
How does the state TM registration work?
- each of the 50 US states has its own TM Law, possible to register TM’s at the state level
- in most states, mark must be in USE before filing (e.g date of first use must be included in application)
- more easily enforceable than common law rights (puts on record date of registration, date of first use and is on public record, searchable by third parties)
HOWEVER - weaker right than federal rights - rights restricted to geographic area, I.e only that state, cannot use the R symbol - cannot use a state registration as a priority filing OR as basis of Madrid application
Inexpensive and quick (useful if only using mark in that state)
How does a federal registration work?
- covers all 50 states and US territories (though these also have own TM laws)
- strongest right, most easily and widely enforced
- can be recorded at customs
- owner may use R symbol
- can form the basis for filings in other countries through Madrid Protocol
- can also be used to claim priority
What are the different bases that a US TM registration can have?
- Section 1(a) - Use in Commerce - you are currently using your mark in commerce with your goods and/or services
- Section 1(b) - intent-to-use basis - you have a bona fide intention to use your mark in commerce with your goods and/or services
- Section 44(d) - priority claim - you are claiming priority from another registration
- Section 44(e) - foreign registration basis - the mark is based on a foreign registration of the same mark for the same goods or services from your country of origin
- Section 66(a) - designation of the US in an International Registration
What languages must a US application be filed in?
Is an agent required?
English
Non-US applicants need US-licensed attorney
What types of marks can be filed in the US?
- Standard marks - words, devices, slogans, 3D marks
- Certification marks
- Collective marks
- Collective membership marks (used to indicate membership of a collective group)
How does classification work for US TM’s?
US uses the international NICE classification system
Multi-class applications are allowed, but it requires precise specifications
Does not accept broad terms
(E.g clothing would not be permitted, need to be specified, clothing in relation to tshirts)
(Medical devices -> medical devices for treating sleep disorders)
How are certification marks classified for US TM’s?
Class A - goods
Class B - services
How are collective membership marks classified?
Just signify membership of a collective and do not refer to specific goods/services therefore all put into Class 200
Can you claim priority on a US TM application?
YES
must be filed within 6 months of filing first-filed application
Details need to be provided of application number, filing date, and country of first filing
Section 44(d) will need to be claimed as a basis to make priority claim
Usually do not need proof
What are the forms required for filing a US TM application?
As a non-US resident all forms handled by US licensed attorney
Filed online - online filing system - TEAS
Filing receipt will issue automatically after filing
Applications under Section 1(a) use in commerce - must provide a specimen of the mark as used in commerce (per class)
What are the requirements for a US TM application?
- Name of the applicant
- Name and address for correspondence
- Clear representation of the mark
- Specification of goods and/or services
- Filing fee for at least one class of goods and/or services
How do the filing fees work for US TM applications?
Fees are payable PER CLASS
Depends on whether an application is TEAS Standard or TEAS Plus
TEAS Standard - $350 per class
TEAS Plus - $250 per class
TEAS Plus has more mandatory fields and you must choose goods/services from the USPTO ID Manual, as opposed to free text entry (hence less work for examiners in terms of specification queries so therefore cheaper)
Professional fee for US attorney
How does the examination procedure work for US TM applications?
Once filed, Examining Attorney will conduct a COMPLETE examination (comprising formalities, classification, absolute and relative grounds)
If any objections they will issue an Official Action
3 month deadline (with a 3 month extension available to respond)
Required to submit a full response
Can contain both procedural issues or substantive refusals
Examples of procedural issues in US TM examination report
- Clarification of applicants name/entity type
- Amendments to specification of goods and/or services
- Disclaimers may be needed
- Color claims
- Description of a device mark
What happens once US trademark has proceeded past examination?
Mark is published in the Official Gazette of the USPTO for Opposition purposes
Opposition deadline is 30 days after date of publication (can be extended)
What is the Supplementary Register?
US TM’s filed in 2 Registers (principal and supplementary)
If a mark is ineligible for registration on the principal register but it is capable of distinguishing an applicants goods/services it may be possible to switch to registration on the supplementary register
More limited protection
These are registered when published (cannot be opposed by third parties but can be cancelled)
What happens after opposition period ends for US TM’s?
Depends on the basis of application
If solely based on Section 1(a) use in commerce - mark is now registered
What happens after opposition period for US TM’s based on Section 44(d) - priority?
Foreign priority basis applications cannot be registered on the basis of Section 44(d) alone
HOWEVER - if the priority application is from your country of origin and it has now registered then a 44(e) basis can be added to your application
Applications under 44(e) will now be registered once a copy of the foreign registration is filed
Relying on 44(e) avoids requirement to use the mark and submit a statement of use)
What happens after the opposition period for US TM’s based on Section 1(b) - intention to use?
Notice of Allowance (NOA) issued
NOA means the mark will be allowed to register AFTER an acceptable statement of use is filed
6 month deadline to file a Statement of Use (can be extended for 6 month periods, maximum 30 months)
What is a Statement of Use? What must it contain?
Statement of Use is filed once the mark is being used in commerce on all of the goods or services listed in the NOA (or any unused goods/services should be struck out or divided)
Effectively converts to a 1(a) use in commerce basis
Must contain a specimen of the mark as used in commerce (per class)
(Could submit a photo of the mark on the goods themselves, or a label etc) (for service marks - advertising/marketing materials typically acceptable)
Filing statement of use or extension of time carry official fees
Once statement of use examined and accepted, mark will move to registration
How does registration and duration work for US TM’s?
You must submit Declarations of Use between
5th and 6th anniversaries of registration
9th and 10th anniversaries of registration (combined with renewal)
What are the use requirements for US TM’s?
Vulnerable to cancellation of grounds of abandonment and non use if not used for a continuous period of three years
Pros for designating the US through Madrid Protocol
- 6 month deadline to respond to provisional refusals
- Do not require use in the US
- Does not require a US attorney unless there is a provisional refusal (which are very common)
Cons for designating the US through the Madrid Protocol
- Most US international applications will have a provisional refusal
- Transfer to the supplementary register not possible with international applications
- Can be confusing with maintenance formalities and fees
