Archive | Trademarks

When a First Use is Not a First Use in Commerce for a Trademark Application

First Use In Commerce USPTO TrademarkThe date that you first used your trademark could be, but probably is not, the correct date to use as the first use in commerce date in a federal trademark application. Why? Because in many cases the first use of the trademark was on a website or marketing material before an actual sale or shipment of the goods or rendering of the service.

First Use in Commerce

For each class of goods or services in a federal trademark, you must declare when you first used the mark in commerce for those goods or services. Use in commerce has a specific meaning under the law. It does not mean simply using the mark. The use must also be combined with a sale of goods or a rendering of the services.


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How to Write a Description of Goods or Services for a Trademark Application

TrademarkDescriptionOfGoods_ServicesIt can be difficult to write an accurate and complete description (identification) of goods/services in a federal trademark application. When describing the goods and services you are or want to sell/provide, you want use somewhat broad language, but not too broad.

You cannot broaden the identification after the application is filed. In some cases, if the description is not accurate and the needed changes would broaden the identification, the application may be lost without a refund. However, if the description is too narrow, you could give up valuable trademark protection that you could otherwise obtain.

So how do you draft a description that is just right? I’ll explain that below, but first, why does the application require a description of goods/services?

Why Do I need a Description Of Goods/Services?

Except for …

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Trademark Application Part: The Mark (Drawing)

TrademarkApplication_Mark_and_DrawingFiling a federal trademark application online looks easy. Just fill in the blanks in the online form, right? But it is not necessarily easy. Some errors are uncorrectable and can doom a trademark application. This is the first post in a multi-part series discussing the parts of a U.S. federal trademark application. In this post I’ll discuss the mark (the drawing) portion of the trademark application. Before filing a trademark application you should considered doing a trademark search.

The mark/drawing section of the application is were you specify the mark that you want to register. You will have to choose between a standard character trademark or a special form trademark. If you intend to register a standard character trademark, then you need to know the …

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What Corporate Attorneys Should Do About Trademarks Before Forming a Corporation

StartupA client arrives at your law office and wants to start a company and form a corporation or LLC. Your client had a company name in mind. You search the Secretary of State records for other companies with the same or similar name and find nothing. You also search the state trademark database and find nothing. You prepare an engagement agreement for the work of forming the corporation. Is your client in the clear to use the name? Not necessarily.

The formation of almost every company implicates trademark law. Every new company needs a name. That name will often be used with the relevant group of purchasers or suppliers. Therefore, in addition to counseling on whether the chosen name is protectable as a strong trademark, an attorney’s process forming …

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Trademark Conflict? Found My Trademark Registered for Different Goods or Services

If during preliminary trademark searching you find a mark that is registered at the U.S. Patent and Trademark Office, you may wonder whether that will block your ability to obtain a trademark registration or to use your trademark with your particular goods and services. If the goods or services provided under the registered mark are sufficiently different from the goods or services that you intend to provide under your mark, then there might not be a conflict between the registered mark and your proposed mark.

Trademark rights usually don’t extend to all goods and services. But instead trademark rights extend to the goods and services for which the mark is registered or used and similar goods and services. There is an exception to this rule for famous marks, such as …

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Trademark Registration Renewal Requirements

TrademarkRenewA trademark registration can be maintained indefinitely as long as the required renewal fees are paid, renewal forms are filed, and you continue to use the mark in commerce or have a period of excusable non-use.

First Renewal: Between the 5th and 6th Years
Between the 5th and 6th years after the date of registration, the trademark owner must file a declaration of use or excusable non-use under section 8 of the Lanham Act. A fee must also be paid with this declaration. If this section 8 declaration and fee are not paid, the USPTO will cancel your registration. The USPTO will not send you a reminder notice to pay this fee.

Between the 5th and 6th years after the date of registration the owner may also file a section …

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Obtaining Foreign Trademark Protection through the Madrid International Trademark System

WIPO-MP2The Madrid System provides a means for trademark holders to protect their marks in multiple countries through the filing of one application in a single office, in one language, with one set of fees, in one currency. This post will explain the advantages, disadvantages, process, and example costs when using the Madrid System.

The Madrid System is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks, and the Protocol Relating to the Madrid Agreement (the Madrid Protocol (MP)).  As of July 2014, 91 countries were members or contracting parties of the MP. While most industrialized countries are members, Canada is not. The International Bureau of the World Intellectual Property Organization (WIPO), in Geneva, Switzerland administers the international registration system of the MP.

The benefit …

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Difference between a Trademark and a Service Mark

Tradmark_or_ServicemarkTrademarks are used to identify a source of goods. Service marks are used to identify a source of services.

If your business provides services to customers, then the names, logos, and other marks used to provide services are considered service marks. For example, when you goto a Marriott hotel, the Marriott mark is being used as a service mark related to the hotel services (e.g. providing hotel rooms for customers). When you rent a hotel room goods are not necessarily sold, instead the service of a place to stay is provided.

If your business sells goods to customers then your names, logos and other marks used to provide goods are considered trademarks. The Coca-Cola mark is being used as a trademark when it is used to sale beverages.

If your …

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Registration Priority: I Have Many Trademarks, Which Should I Register First?

CircleR_RegisteredTMBusinesses often have many trademarks, such as, the business name, product names, service names, logos, slogans, tag lines, etc. The question arises which of those trademarks should be registered and what is the priority order for registering of those trademarks? Trademark registration carries a cost. Therefore, the decision to register is a balancing between the importance of the trademark and the cost of obtaining a trademark registration, when allocating a limited budget for trademark registration. Assuming other factors are equal, the question you should ask with respect to each of your trademarks is: how important is this trademark to my business as compared to other trademarks of my business?

Below is an example priority order for registering trademarks (e.g. a registration priority). The list is a generalized example and …

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Should I Claim Color In My Trademark Application?

FedExIf your trademark or logo includes color, then you may wonder whether your federal trademark application should include a claim of color. If this is your first trademark application, then likely you should not make a claim for color. When no claim of color is made and the trademark is presented in black and white then the registration is presumed to cover the mark when presented in any color.

However, if color in your mark is very important so that you would want the best chance of stopping others using your color scheme with different words/characters, then you may want to make a claim for color in your trademark. For example, Federal Express has a trademark application and various registrations on the mark FedEx with “Fed” claimed in purple and …

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