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