Making Trademark Applications “Special”

We tend to think that trademarks, in general, are pretty special.

However, a “special” trademark application has a … well … special meaning to the PTO.  The PTO normally examines applications in the order it receives them, which can take about three to four months.  That said, there are two ways to make an application “special” so that the PTO will pull the application out of order and expedite its initial examination.

A quick caveat:  Just because the PTO examines an application quickly doesn’t mean it has a better chance of getting registered.

Scenario 1:  You realize that your trademark registration inadvertently lapsed.  (Deep breaths.)  Perhaps a deadline was docketed incorrectly or there was a miscommunication about minding a portfolio during a transaction.  Whatever the reason, if the registration lapsed due to a mistake on your (or your counsel’s) part, it’s time to file a new application.  Consider also submitting what’s called a “Request to Make Special,” asking the PTO to advance examination of the application.

Keep in mind that a Request to Make Special is only appropriate if the applicant owned the cancelled registration or is an assignee of the prior registrant.  The mark in the new application must also be identical to the formerly registered mark and identify a description of goods or services that is identical to, or narrower than, the description in the cancelled registration.  (One piece of good news:  No PTO fees are required to submit this request!)

Scenario 2:  You may lose rights in your brand if you don’t obtain a registration quickly.  For example, someone is infringing, or threatening to infringe, on your brand, or you need to secure a foreign registration.

Here, it might be a good idea to file a new application accompanied by a “Petition to Make Special.”  Like a Request to Make Special, this petition asks the PTO to speed up the initial examination of an application.  A petition requires a little more legwork, though – it must include the reason for expedited examination, supporting facts and a fee.

The PTO only grants these petitions under pretty extraordinary circumstances.  If your situation applies to a lot of other applicants, the PTO may not consider special treatment necessary.

Strategies for Squashing Sketchy Specimens

So your time-of-filing trademark watching service [1] warned you that someone filed a use-based application to register a mark that’s awfully close to your mark.

You drill into their application file history and notice that their proof of use of their trademark looks like this:

Sketchy, right?

Worse, you check into other applications filed by the same company, and the proof of use they filed for a totally different trademark looks like this:

Even sketchier!  (Would anyone really buy that stuff?)  We’ve noticed this happening more and more lately, sometimes from US applicants, but more often from other countries.  Applicants also shamelessly copy well-known retailers’ or manufacturers’ ads or photos, use software to paste in new brand names, and then submit that to the PTO as so-called proof of use.  Um, bad guys, if you are going to do that, you might want to pay attention to details.  For instance, if you’re claiming use of the mark in the USA, probably best not to submit a storefront photo where the signs  are in Swedish, and the Swedish flag is flying atop the store.  Ahem.

In any event, no need to let the bad guys get a leg up.  You might even be able to avoid spending money on opposing their application, if you send a little old email to TMSpecimenProtest@uspto.gov no later than the 30th day after publication.  See here to learn what you need to include in your e-mail.  The PTO won’t update you as to whether it’s going to reject the bad guy’s application, though, so better mark your docket to check on it occasionally, in case you end up having to oppose (booooo, hisssss).

Hooray for the PTO for giving us an option other than an opposition!

____________________________________
[1] You do have a time-of-filing watching service, right? Here is why you need one.

Tricks to Transferring Trademarks

A trademark assignment is the transfer of ownership of a mark.  This usually entails having the owner transfer all its rights, title and interest in a given mark to a third party.

Sounds pretty straightforward, right?  Well, imagine you’re not just assigning one trademark to a third party – instead you’re transferring an entire portfolio containing hundreds of marks in dozens of countries.  Generally, this transfer of rights must be documented – or recorded – with the trademark office in every jurisdiction where marks have been assigned.  Otherwise, the outdated Trademark Office records relating to the ownership of a mark could cause issues, like blocking new applications filed in the new owner’s name.  The requirements for assigning trademarks and recording this transfer of rights often vary by jurisdiction, so handling the transfer of a global trademark portfolio can become a major undertaking.

Continue reading

Five Reasons NOT to Register Your Trademark

Our followers know that we get a little giddy at the prospect of registering trademarks.  It’s almost as much fun as deep-fried Twinkies!  (Um, make that “Twinkies® brand sponge cakes.”)  So why are we posting about reasons NOT to register your mark?  Well, although we love global brands, you may sometimes be better off skipping or delaying those new applications.  Consider, for example, the following:

  1. How long will you continue to use the brandIf you will only use the mark for a short time, or in a limited geographical area, maybe it’s not worth spending the money on registration.  You might even stop using the brand before the application matures to registration!
  2. Is your industry brand-focused?  In some industries, brands can be (gasp!) a little less important. If your competitors don’t tend to copy your brand names, consider applying to register only your most important brand names.
  3. Might the Trademark Office consider the mark descriptive? If you’re at risk of a refusal to register the mark on descriptiveness grounds, you might refrain from applying, or wait until after you have used the mark for five years.
  4. Is there a crowded field of similar marks? If you’re not keen on trying to persuade the Trademark Office to withdraw a refusal to register your mark on the ground of confusion with five prior third-party registrations (ugh), maybe your resources would be better spent on something other than a new application…like finding a new brand?
  5. Is there a compelling reason to register the mark now? In some cases, if you’ve been using an unregistered brand for a while, maybe there’s no need to disrupt the status quo, particularly if the brand isn’t especially valuable or distinctive, you’re facing serious registrability hurdles, and there’s no infringement you need to stamp out.  Why call attention to yourself and invite oppositions when no confusion has arisen in the real-world marketplace?

Of course, the above considerations may not apply in every case.  If a brand’s importance is increasing, you’re entering new territories, or you have infringement concerns, it’s often a good idea to conduct searches and file applications.  Just wanted to share some (fat-free) food for thought before you rush into filing globally!

Boo, Lean, and Truncate: A Guide to Getting Your Search On

Ever wonder what dance parties and trademark searching have in common?  Neither did we.  But I can’t deny this title reminds me of a dance party.  Maybe because today is Friday (today is Friday, right?).

We often receive requests to file new applications for clients who have already cleared a potential mark through searching the PTO records and the Internet.  If done properly, a bit of self-help can cut down on legal expenses.  However, a proper preliminary search can be tricky – it involves more than just plugging the exact mark into the “basic search” feature on the PTO website here (“Quick Links” -> “TESS” -> “Basic Word Mark Search”) and hitting “submit query.”

Continue reading

Helping “Insure” Your Success: When and How to Use “Insurance” Extension Requests for US Trademark Applications

You might remember from our “How Much Use Equals ‘Use’?” post that the USPTO can be picky when it comes to accepting proof that a brand is in use (and, of course, when we say “use,” we mean that special kind of “trademark use” that the USPTO is looking for – i.e., use of a brand in connection with products or services offered in commerce).

Luckily, owners of trademark applications based on proposed use have some time to develop and submit proof of use.  After an initial 6-month period, a trademark owner may request up to five 6-month extensions before it has to file proof that its brand is in use (that’s a total of three years!).  Of course, while taking advantage of these extensions might be helpful in some cases, the faster a trademark owner can submit an acceptable example of use, the faster its application can proceed to registration.

Continue reading

Trademark Traps for the Unwary, Part 1: Black-and-White Registrations Abroad are a Gray Area

US trademark aficionados know that US registrations depicting logos in black and white allow the trademark owner to display the registered mark in any color.  Filing in black and white is often a good way to achieve broader protection in the States, and it helps avoid your having to file a new application if you change the color of your logo in the future.  The next time you want to protect your logo outside the USA, however, pause before you send that email to local counsel or submit your Madrid Protocol application depicting the logo in black and white.  It’s not safe to assume that a black-and-white registration outside the USA confers “universal” protection for a mark displayed in any color.

To elaborate:  counsel in a number of jurisdictions have informed us that black-and-white registrations may not protect marks displayed in any color.  We’ve heard this from the EU, Kazakhstan, and Thailand, among other places – though you will of course want to check this with your own local counsel, since this is a fact-specific issue.  Worse yet, black-and-white registrations outside the USA may be subject to attack on non-use grounds if the trademark isn’t used in black and white.  (How often does that happen?!)

We haven’t run across a treatise or other resource that drills down to this level of trademark nerddom, so this might be a good topic to add to the next edition of the Country Guides (accessible to members of the International Trademark Association).  In the meantime – now you’re equipped to ask some more pre-filing questions, to help ensure that your future logo applications will achieve maximum protection.

How Much Use Equals “Use”? Decoding Common Specimen Refusals issued by the USPTO

Filing a trademark example of use in the USA?  You think, piece of cake.  At this point you have jumped through the application hoops, chosen and narrowed your classes of goods and services appropriately and are ready to get the coveted “circle R.”  You jump on your website, see the mark clearly used on the first page, hit “print,” and send it to the USPTO.

Except…

Wait, how can use not be considered “use”?  As it turns out, simply displaying a mark is often not enough.  Below are some tips for decoding three common specimen rejections issued by the USPTO and finding a suitable example of use. Continue reading

A Second Chance for Supplemental Register Registrations: Debunking “Myths” about Re-Filing on the Principal Register

You might remember from Tore DeBella’s post on deciding between Principal and Supplemental Register registration that the Principal Register is the place to be if you’re a trademark owner. But what if the best you could do was secure a Supplemental Register, or “second best,” kind of registration?

Don’t despair!

It might be possible to find your way to the Principal Register even if your mark initially landed on the Supplemental Register.  If a mark has acquired distinctiveness – or significance as a brand name – while on the Supplemental Register, it may become eligible for registration on the Principal Register.  We’ve noticed a few common misconceptions about this process.  Below, we do our best to debunk the “myths” we most often hear: Continue reading

Seven Strategies for Speedy Service Mark (and Trademark) Registration

We really love registering service marks. Trademarks, too. (Mentioning service marks in the title of this post better served our alliterative inclinations.) What’s even more fun is finding new ways to register trademarks as quickly and cost-effectively as possible – which frees up time and money we can use to…register more trademarks.  Hooray!

In case you are of a similar mindset, here are some things to ponder while you work on a new US application.

Continue reading