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Presents Best Practices in Filing & Managing Trademark Applications Panelists Francine Ward, Erik Pelton, Cheryl Black, Matthew Asbell Crystal Gateway.

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Presentation on theme: "Presents Best Practices in Filing & Managing Trademark Applications Panelists Francine Ward, Erik Pelton, Cheryl Black, Matthew Asbell Crystal Gateway."— Presentation transcript:

1 presents Best Practices in Filing & Managing Trademark Applications Panelists Francine Ward, Erik Pelton, Cheryl Black, Matthew Asbell Crystal Gateway Marriott Hotel 1700 Jefferson Davis Hwy Arlington, VA April 2 - 4, 2014 Copyright 2014 Francine D. Ward. All Rights Reserved. 1

2 Francine Ward is a business and intellectual property attorney, with a focus on copyrights, trademarks, publishing, entertainment, and social media legal issues. A 1989 graduate of Georgetown University Law Center, Francine is admitted to practice in New York (1991), California (2007), and the District of Columbia (2013). Additionally, she is admitted to the Bar of the U.S. Circuit Courts of Appeals for the 2 nd and 9 th Circuits; as well as the U.S. District Courts for the Central District of California and the Southern District of New York. Ward is Chair of the ABA-IPL USPTO Trademark Affairs EX-Parte Committee, Chair of the ABA-IPL Terms of Use Subcommittee of the Copyright & Social Media Committee, and an Officer of the Copyright Interest Group of the California State Bar. Feel free to visit Francine’s website (http://francineward.com/attorney/), Blog (http://francineward.com/category/legal-blog/), LinkedIn Profile (http://www.linkedin.com/in/trademarklawyer), Facebook Law Fan Page (https://www.facebook.com/Francineward), and her Twitter Law Page (https://twitter.com/Francineward).http://francineward.com/attorney/http://francineward.com/category/legal-blog/https://www.facebook.com/Francinewardhttps://twitter.com/Francineward Copyright 2014 Francine D. Ward. All Rights Reserved. 2 About Francine D. Ward

3 Erik Pelton is the founder of Erik M. Pelton & Associates, PLLC® a boutique trademark law firm in Falls Church Virginia, and a former trademark examiner at the USPTO. Erik counsels clients regarding trademark registration and disputes, and has registered approximately 2,000 trademarks with the USPTO. In 2010, Erik created an iPhone application for intellectual property practitioners called Apptorney®. A graduate of Catholic University School of Law and Boston University, Erik has also represented parties in dozens of proceedings before the Trademark Trial and Appeal Board. Copyright 2014 Francine D. Ward. All Rights Reserved. 3 About Erik Pelton

4 Cheryl Black currently serves as in-house counsel for Evergreen Enterprises and has more than 20 years of experience as an intellectual property attorney, including her career at the United States Patent and Trademark Office (USPTO) and as a partner at the law firm of Goodman Allen & Filetti. Ms. Black previously served on the USPTO Trademark Public Advisory Committee and is currently a member of the ABA-IPL Landslide Magazine Editorial Board, a member of the Board of Governors and chair of the Law Practice Management Division of the Virginia Bar Association, and on the faculty for the Virginia State Bar Professionalism Course. Ms. Black earned her J.D. from Georgetown University Law Center and is admitted to practice in the District of Columbia and Virginia, as well as the U.S. District Court for the Eastern District of Virginia. Copyright 2014 Francine D. Ward. All Rights Reserved. 4 About Cheryl Black

5 Matthew D. Asbell is a newly minted partner in the New York office of the international intellectual property boutique firm of Ladas & Parry LLP. Mr. Asbell has worked extensively in matters involving the use and registration of trademarks around the globe. Mr. Asbell has served in numerous leadership roles in local and national bar associations. He was a Young Lawyer Fellow of ABA Section of Intellectual Property Law. He has authored, co- authored, and edited publications on the topics of trademark, licensing, copyright, patent, broadcasting and internet and privacy law. In association with his colleagues, Mr. Asbell released a two-book series on Intellectual Property for the 21 st Century Corporation through John Wiley & Sons. He received his B.S. in Psychology from Carnegie Mellon University and attended the Medical College of Pennsylvania and Hahnemann University School of Medicine. He received his J.D. from the Benjamin N. Cardozo School of Law, where he was president of the Intellectual Property Law Society and Acquisitions Editor of the top-ranked Cardozo Arts and Entertainment Law Journal. Mr. Asbell is registered to practice as a patent attorney before the U.S.P.T.O. and is admitted to the bars of New York and New Jersey. Copyright 2014 Francine D. Ward. All Rights Reserved. 5 About Matthew D. Asbell

6 What is a Trademark? distinctive A distinctive word, name, phrase, design, logo, or combination thereof, which identifies the source of a product or service. A Source identifier. Copyright 2014 Francine D. Ward. All Rights Reserved. 6

7 1. Selection & Clearance 2. Filing 3. Managing 4. International Trademark Issues AGENDA (Best Practices) 7 Copyright 2014 Francine D. Ward. All Rights Reserved.

8 Selection and Due Diligence 8 Copyright 2014 Francine D. Ward. All Rights Reserved.

9 MOST Important Step in the Process … Choosing a Mark that can be protected Copyright 2014 Francine D. Ward. All Rights Reserved. 9

10 DISTINCTIVE The More DISTINCTIVE … Copyright 2014 Francine D. Ward. All Rights Reserved. 10 Fanciful / Coined Fanciful / Coined Arbitrary Suggestive Suggestive

11 2 nd MOST Important Step … Copyright 2014 Francine D. Ward. All Rights Reserved. 11

12 When to do Due Diligence When to do Due Diligence 1. Starting a business 2. Building a brand 3. Acquiring a business 4. Purchasing Assets 5. Purchasing a Franchise 6. Licensing a trademark 7. Collaborating with someone with a brand Copyright 2014 Francine D. Ward. All Rights Reserved. 12

13 Knock-out Search Limited screening designed to identify & eliminate trademarks that clearly cannot be registered: 1. Generic. (TMEP (c)). 2. Scandalous (§2(a)). 3. Obviously Famous. Copyright 2014 Francine D. Ward. All Rights Reserved. 13

14 Comprehensive Search Comprehensive Search Full Full screening that looks in every possible venue to determine if a trademark can likely be cleared Copyright 2014 Francine D. Ward. All Rights Reserved. 14

15 What to LOOK for What to LOOK for 1. Prior rights holders 2. Existence of Identical or Similar marks 3. Potential risks/challenges e.g., Office Actions, Oppositions, Cancellations 4. True owner of record, assignments 5. Issuance of demand letters Copyright 2014 Francine D. Ward. All Rights Reserved. 15

16 Where to Search USPTO Trademark Electronic Search System (TESS) All 50 States (http://www.uspto.gov/trademarks/process/State_Trademark_Links.jsp) Online search engines e.g., Google, Bing Dun & Bradstreet business directory Domain Name Database Foreign Registration Database Copyright 2014 Francine D. Ward. All Rights Reserved. 16

17 Who Performs the Search? 1. Client 2. Search Company * 3. Lawyer * CAVEAT * CAVEAT: They only do the search, they do NOT analyze the report. Copyright 2014 Francine D. Ward. All Rights Reserved. 17

18 Best Practices 1. Counsel Client to: Take extra care in selecting a mark; Be clear as to how the mark will look; Perform a Comprehensive Search, and 2. Inform Client that a Search is not 100%; 3. Get ALL instruction in writing. Copyright 2014 Francine D. Ward. All Rights Reserved. 18

19 Filing Trademark Applications 19 Copyright 2014 Francine D. Ward. All Rights Reserved.

20 Trademark Prosecution Tips Presented by Erik M. Pelton ABA-IPL Conference – Spring 2014 The Nontraditional Trademark Lawyers © 2014 Erik M. Pelton & Associates, PLLC. All Rights Reserved. ®

21 Intent to use (ITU) – Section 1(b) Use in commerce – Section 1(a) Foreign Filing bases Filing Basis

22 Intent to use (ITU) – Section 1(b) Bona Fide Intent = objective determination based on all the circumstances. Swatch AG (Swatch SA ) (Swatch Ltd.) v. M.Z. Berger & Co., Inc., Opposition No (TTAB Sept. 30, 2013). Generally proof of intent is evidenced by some documentary evidence regarding ongoing plans for making use the mark After receiving Notice of Allowance, Applicant will have to follow up with a Statement of Use to complete registration process Initial follow-up period is 6 months, but you can receive up to 5 extensions for a total period of 3 years. Filing Basis

23 Use in commerce – Section 1(a) Use = in the ordinary course of trade, and not merely to reserve a right in the mark i.e. with goods, this means bearing the mark AND sold or transported, even if the products are seasonal or infrequently purchased. Clorox Co. v. Hermilo Tamez Salazar, Opposition No (TTAB Sept. 26, 2013). Filing Basis

24 Foreign Filing bases Section 44(d)  file within six months of filing a foreign application Section 44(e)  based off foreign registration; no need to show use in U.S. to get initial registration, but you WILL have to eventually show use Must have bona fide intent to use in US Filing Basis

25 Name vs. Logo When wording alone is registered, Registrant can use ® whenever the words are used—in text, logos, and more. Protection covers all fonts, styles, colors. When a design is registered, protection is technically limited to the exact design itself Designs are more likely to change over time This doesn’t mean that you shouldn’t protect your logos, but you should generally do so in a separate application Logos: Black & White vs. Color Black and white covers all color possibilities Might want to file two versions of logo The Mark / Drawing

26 Pay particular attention to: Drawing of the mark Description of the mark Specimen of use Possible evidence of acquired distinctiveness “look for” advertising Can now upload sound and video files to USPTO Nontraditional Trademarks

27 Balance = broad vs. accurate Include keywords that competitors may use in searching the register Possibly craft ID to try to avoid a 2(d) refusal Cannot use registered trademarks in ID descriptions TEAS+ Cheaper to File ($50 less), but stricter requirements Must choose ID for G&S directly from the acceptable G&S ID manual, meaning you have limited opportunities to customize the G&S ID Good for straightforward applications in definite fields ID Manual Available on the USTO website and searchable online (http://tess2.uspto.gov/netahtml/tidm.html)http://tess2.uspto.gov/netahtml/tidm.html Can suggestions to USPTO at Description (“I.D.”) of Goods/Services

28 Proper Signatory Generally, Attorney should NOT sign the application or declarations regarding use of the mark, dates of use, validity of specimens, and/or distinctiveness of a mark Generally fine for Attorney to sign other basic filings (i.e. Response to Office Action) if they don’t include declaration Tips for Online Filing/Signature Include the name of the mark near your name (in the Attorney signature block) so you can keep track of the USPTO s Include your phone number for BOTH signature blocks so the client isn’t sent USPTO correspondence he/she might not understand Have sent to you first, then you send it to client so you know if it bounces Proper Signature on Application

29 USPTO.gov is a tremendous resource featuring databases, electronic forms, news, and other information relevant to the trademark registration process Trademark Manual of Examining Procedure (TMEP) Ability to suggest changes/updates or make comments to the USPTO re: TMEP using IdeaScale File all forms electronically System updates and downtimes Official Gazette Create PDF files of up to 25 registration certificates at once See written materials for much more General Online Filing Tips

30 Managing Trademark Applications 30

31 Managing a Trademark Application for ABA-IPL Spring Conference 2014 Cheryl L Black Counsel - IP and Innovation 31

32 Examination Stage 1. An Examining Attorney at the USPTO reviews the application and may issue an Office Action if the application requirements are not met or if there is a basis for refusing registration. 2. Procedural Requirements - Common Informalities Identification of Goods Disclaimer Description of the Mark Specimen 3. Statutory Requirements - Substantive Refusals 2(d) Refusal - Likelihood of Confusion 2(e) Refusal - Merely Descriptive

33 Examination Stage 1. Responding to Office Actions Six-month response period All Issues must be resolved Examiner’s Amendment or Priority Action for Informalities Formal Response for Substantive Refusals 2. Tips for Responding to Common Procedural Requirements Identification of Goods - Amendments to limit or clarify only. In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991) 3. Tips for Responding to Common Substantive Refusals 2(d) Refusal - Likelihood of Confusion - In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) - 13 du Pont factors 2(e) Refusal - Merely Descriptive - 2(f) Acquired Distinctiveness or Supplemental Register

34 Examination Stage 1. If all requirements are met and any refusals are overcome or no issues found in initial review, the Examining Attorney will approve the mark for publication. The application proceeds to the opposition stage. 2. If all requirements are not met and any refusals are not overcome, the examining attorney may issue subsequent Office Actions to maintain or make final the outstanding issues. 3. If a Final Office Action issues, the applicant may file a notice of appeal of the final decision with the Trademark Trial and Appeal Board (TTAB). Caution about response to Final Office Action Request for Reconsideration Incomplete Responses TTAB Affirmance rate (TTABlog.com)TTABlog.com 2(e)(1) refusals: 85.1% in 2013; 82% in (d) refusals: 84.1% in 2013; 90% in 2012

35 Publication Stage 1. The mark is published in the USPTO’s Official Gazette for thirty days. The publication is available for public review and any third party who can prove they will be injured by the registration of a mark may file an opposition with the TTAB. Official Gazette is available electronically on USPTO website. New searchable web-based format released last year Third party has 30 days from date of publication to file notice of opposition or request extension of time to file a notice of opposition. 2. If no opposition is filed or applicant prevails in the opposition, the application proceeds to the post-publication stage.

36 Post-Publication Stage 1. If the application is based on 1(a), 44 or 66(a), a statement of use is not required. After the opposition stage, the application proceeds to registration and a certificate of registration is issued. 2. If the application is based 1(b) on “intent to use,” it proceeds to registration only after an acceptable statement of use is filed. The Office will issue a Notice of Allowance after publication stage. Applicant has six months to file a statement of use or request extension of time to file a statement of use. Statement of Use requires dates of first use and specimen Extension Request granted for six-month periods. Up to five extension requests may be filed Practice Tip: Insurance Extension Request 3. Statement of Use are examined by the Examining Attorney. It is possible to receive Office Action after review of statement of use.

37 Registration and Beyond 1. The term of a registration is ten years and may be renewed every ten years. 2. In order to maintain the registration for the entire 10-year term, the registrant must Continue use of the mark in commerce File a declaration of continued use between the fifth and sixth year after registration 3. Every 10th anniversary, registrant must file a declaration of continue use and renewal application to renew the registration 4. Registrants meeting certain statutory requirements are eligible to file a claim of incontestability after the mark has been registered for five years.

38 Practice Tips 1. Docketing and Monitoring Application 2. Reviving Abandoned Application 3. Communications with Examining Attorney 4. USPTO Resources: ID Manual Trademark Manual of Examining Procedure : Examination Procedures : Use in Commerce : Intent-to-Use Applications : Substantive Refusals 1. Trademark Database (TESS and TSDR) 2. TTAB Decisions

39 International Trademark Issues 39


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