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Search:
After a trademark
application is filed, the USPTO will conduct a search
of USPTO records for conflicting marks as part of the official
examination process. The official search is not done for the applicant
but rather to determine whether the mark applied for can be registered.
The USPTO advises applicants and/or their representatives to search the
records before filing the application. A search may be conducted through
TESS, or by visiting the Trademark Public Search Library, between 8:00
a.m. and 5:30 p.m. at
2900 Crystal Drive
, 2nd Floor,
Arlington
,
Virginia
22202
. Use of the Public Search Library is free to the public. Also, certain
information may be searched at a Patent and Trademark Depository
Library. These libraries have CD-ROMS containing the database of
registered and pending marks, and Internet access to the Trademark
Electronic Search System (TESS). (However, the CD-ROMS do not contain
images of the design marks.)
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Secondary Meaning: Secondary meaning arises when consumers have come to identify a trademark
over time 15
U.S.C. §1052(f). “except as expressly excluded in paragraphs (a),
(b), (c), (d), and (e)(3) of this section, nothing herein shall prevent
the registration of a mark used by the applicant which has become
distinctive of the applicant's goods in commerce. The Commissioner may
accept as prima facie evidence that the mark has become distinctive, as
used on or in connection with the applicant's goods in commerce, proof
of substantially exclusive and continuous use thereof as a mark by the
applicant in commerce for the five years before the date on which the
claim of distinctiveness is made. Nothing in this section shall prevent
the registration of a mark which, when used on or in connection with the
goods of the applicant, is primarily geographically deceptively
misdescriptive of them, and which became distinctive of the applicant's
goods in commerce before the date of the enactment of the North American
Free Trade Agreement Implementation Act."
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Section
8 Declaration of Continued Use:
A sworn statement, filed by the owner of a registration that the mark is
in use in commerce. Section 8 of the Trademark Act, 15 U.S.C. §1058. It
must be filed by the current owner of the registration and the USPTO
must receive it during the following time periods: 1) At the end of the
6th year after the date of registration (or the date of publication
under 15 U.S.C. §1062(c) for registrations issued under the Acts of
1905 or 1881 that have claimed the benefits of the Act of 1946),and 2)
At the end of each successive 10-year period after the date of
registration. There is a six-month grace period. If these rules and
deadlines are not met, the USPTO will cancel the registration.
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Section
8 Declaration of Excusable Nonuse: A sworn statement, filed by the owner of a registration, that the mark
is not in use in commerce due to special circumstances that excuse such
nonuse and is not due to any intention to abandon the mark. Section 8 of
the Trademark Act, 15 U.S.C. 1058. It must be filed by the current owner
of the registration and the USPTO must receive it during the following
time periods: 1) At the end of the 6th year after the date of
registration (or the date of publication under 15 U.S.C. §1062(c) for
registrations issued under the Acts of 1905 or 1881 that have claimed
the benefits of the Act of 1946), AND 2) At the end of each
successive 10-year period after the date of registration. There is a
six-month grace period. If these rules and deadlines are not met, the
USPTO will cancel the registration. Once the USPTO accepts the Section 8
Declaration of Excusable Nonuse, the owner of the registration is not
required to file another Section 8 Declaration until the next statutory
filing period.
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Section
9 Renewal Application:
A sworn document, filed by the owner of a registration, to avoid the
expiration of a registration. Federal trademark registrations issued on
or after November 16, 1989, remain in force for 10 years, and may be
renewed for 10-year periods. Trademark registrations issued or renewed
prior to November 16, 1989 remain in force for 20 years, and may be
renewed for 10-year periods. Trademark owners have a total of 18 months
to file a §9 Renewal Application. The §9 Renewal Application may be
filed one year prior to the registration expiration date or during the
6-month grace period immediately after the date of expiration. If the §9
Renewal Application is not filed or is filed after the grace period
ends, the registration will expire.
Because the due date of the 10-year §8 Declaration coincides with the
due date of the §9 Renewal Application, the USPTO created a form
entitled "Combined Declaration of Use in Commerce and Application
for Renewal of Registration of a Mark Under Sections 8 & 9".
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Section 15 Declarations:
A sworn statement, filed by the owner of a mark registered on the
Principal Register, claiming “incontestable” rights in the mark for
the goods/services specified. An “incontestable” registration is
conclusive evidence of the validity of the registered mark, of the
registration of the mark, of the owner’s ownership of the mark and of
the owner’s exclusive right to use the mark with the goods/services.
The claim of incontestability is subject to certain limited exceptions
set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065
and 1115(b). 15 U.S.C. §1065. Filing a Section 15 Declaration is
optional. However, there are certain rules governing when one may be
filed. A §15 Affidavit may not be filed until the mark has been in
continuous use in commerce for at least five consecutive years
subsequent to the date of registration for marks registered under the
Act of 1946 (and subsequent to the date of publication under §12(c) of
the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the
Acts of 1905 and 1881 for which the benefits of the Act of 1946 have
been claimed). The §15 Affidavit must be executed and filed within one
year following a 5-year period of continuous use of the mark in
commerce. Marks registered on the Supplemental Register are not eligible
for claims of incontestable rights under §15.
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Service Mark: A word, name, symbol or device that is to indicate the source of the
services and to distinguish them from the services of others. A service
mark is the same as a trademark except that it identifies and
distinguishes the source of a service rather than a product. The terms
"trademark" and "mark" are often used to refer to
both trademarks and service marks.
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Source of Origin: Trademark
indicate source of origin. Consumers buy goods or obtain services under
a trademark or brand name because they expect to receive a certain
quality of goods or performance. It is this assurance or expectation of
repeatability of quality that causes customers to return.
Consumers feel at ease buying a nationally-known product having a
trademark from the dealer which offers the lowest price because they
expect consistent quality.
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State Trademark: All of the states
have trademark laws. There is a uniform state law that many states have
adopted. Other states have trademark laws with their own spin. The state
registration process is not very substantive and the rights generally
granted are not any more significant than what the party possessed at
common law. Also, since there is no examination except for form,
validity is left for the courts.
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Statement
Of Use: (SOU)
- a sworn statement signed by the applicant or a person authorized
to sign on behalf of the applicant attesting to use of the mark in
commerce. With a statement of use, the owner must submit: (1) a filing
fee of $100 per class of goods/services; and (2) one specimen showing
use of the mark in commerce for each class of goods/services. Statements
of use must be filed within 6 months from the date the USPTO issues a
notice of allowance. Failure to submit the statement of use in a timely
manner results in abandonment of the application. The Amendment to
Allege Use and the Statement of Use include the same information, and
differ only as to the time when it is filed.
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Standard
Character Format: An
applicant may submit a standard character format representation of a
mark if (1) All letters and words in the mark are depicted in Latin
characters; (2) all numerals in the mark are depicted in Roman or Arabic
numerals; (3) the mark includes only common
punctuation or diacritical marks; and (4) the mark does not
include a design element.
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Stylized
Mark: One type of
depiction of the mark sought to be registered. Another name for this
type of mark is “special form.”
If the mark includes a particular style of lettering, or a design or
logo, the mark is considered to be stylized
or in special form. Therefore, applicants must select the "stylized
or special form" mark format when applying for these types of
marks. The representation of the mark's page should show a black and
white image of the mark, no larger than 3.5 inches by 3.5 inches (8 cm
by 8 cm). The mark in special form must be a substantially exact
representation of the mark as it appears on the specimen or on the
foreign registration, as appropriate. |
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Subsequent
Designation: A request
by the holder of an international trademark registration for an
extension of protection of the registration to additional Contracting
Parties.
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Substantive
Reasons For Refusal:
There are several substantive reasons for refusing registration of a
mark. These include: likelihood of confusion; primarily merely
descriptive or deceptively misdescriptive of the goods/services;
primarily geographically descriptive or primarily geographically
deceptively; misdescriptive of the goods/services; primarily merely a
surname; or mere ornamentation. This is not a complete list of all
possible grounds of refusal.
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Suggestive Mark: a mark that, when applied to the goods or services at issue, requires
imagination, thought or perception to reach a conclusion as to the
nature of those goods or services.
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Supplemental Register: secondary
trademark register for the USPTO. It allows for registration of certain
marks that are not eligible for registration on the Principal Register,
but are capable of distinguishing an applicant’s goods or services.
Marks registered on the Supplemental Register receive protection from
conflicting marks and other protections, but are excluded from receiving
the advantages of certain sections of the Trademark Act of 1946. The
excluded sections are listed in 15 U.S.C. §1094. If the applicant seeks
registration on the Supplemental Register, the application should state
that registration is requested on the Supplemental Register. If no
register is specified, the Office will presume that the applicant seeks
registration on the Principal Register. To register a mark on the
Supplemental Register, applicants must either be using the mark or
filing under Trademark Act Section 44 based on a foreign registration.
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Suspension
Inquiry Letter: An
Office action inquiring as to the status of the matter that is the basis
for suspension of an application. The examining attorney will issue a
suspension inquiry letter after an application has been suspended for
six months or more, unless the information is available to the examining
attorney in the Office’s databases. If the applicant does not respond
to the suspension inquiry letter, the application will be abandoned. |
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| Suspension Letter: suspends the action on an application. An
application may be suspended for a variety of reasons. These include
waiting for the disposition of a cited prior pending application to be
determined or waiting for an assignment of ownership to be recorded.
Applicants do not need to respond to suspension letters. |
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