Benefit  from a trademark!

According to a 2013 report by the USPTO, trademarks cover a broader set of participants in the economy  [than patents] because almost every firm, regardless of size, market, or business strategy, has goodwill to protect. (The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, January 2013)


Do you have Goodwill to Protect? Need a Trademark Attorney (or Patent Attorney) for working with the USPTO?

Getting the right help can mean better results: Facts Matter and being able to apply the law to the facts is something that is very important in the trademark and patent field. Unfortunately many  applicants (and their attorneys) have trouble and nearly half of trademark and patent applications end up going abandoned! NJP.Legal Services has an excellent record for working with the USPTO. We can help you with a Responses to Office Action; File or Defend a Trademark Opposition or Cancellation; Patent or Trademark Searches and Applications. We also Send or Respond to Cease and Desist Letters (these are not a USPTO activity ).


Is your trademark application a STRONG trademark application? Does it matter?

Only if you have to defend it or want to make money off of it in spite of competition. If your trademark application/registration is weak but your trademark is one that has value, someone can take your trademark application/registration away by opposing or cancelling the application or registration based on its weaknesses.



Why Do Facts Matter? Why Should A Trademark Application Be Rights and Fact Based Instead of Form Based?

Facts Matter. Whether a Trademark Application is strong enough to support a Trademark Registration and whether the registered trademark is a strong trademark is a question of fact decided by the USPTO on a case-by-case basis. Deciding the best strategy for applying for a trademark depends on the facts. Forms can be helpful devices to gather standard information but do not take into account the law & rights behind federal registration of a trademark.

A broad goods/services identification can limit the access of a competitor to the trademark register, experience and strategy and facts can really make a difference. Having too broad of a goods/services identification can lead to an unnecessary refusal or costly litigation, sometimes narrow is better. Having the best strategic ID is not something that jumps out of a form and someone without both application experience and TTAB experience may not use trademark law to the best strategic advantage.

The great variation in facts from trademark to trademark prevents the formulation of specific rules for specific fact situations. Each trademark application is decided on its own merits and understanding strategy can lead to stronger rights.

 


GET FACTS IN YOUR FAVOR BEFORE APPLICATION

We suggest a Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:

1. Verify Inherent Strength

Does the mark consist of inherently distinctive element(s) that can be claimed for exclusive use?

2. Verify Right to Use

Does the mark have a likelihood of confusion with prior marks (registered or unregistered)?

 3. Verify Right to Register

Does the mark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Verify Specimen

Is the mark used as a trademark or service mark in the specimen?

5. Verify Goods and Services ID   Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

Get a Trademark Registration that Can Be Enforced: A registration that protects legal rights and sets the ground work for a strong trademark registration protects investments in a product or service that can last through a long product life.


 What are Office Actions and How to Respond to an Office Action from the USPTO

Office Actions

Office actions are first action correspondences from the assigned USPTO  trademark examiner that set forth the legal status of a trademark application if the trademark application does NOT meet registration requirements.

There are several types of office actions:

1. Examiner’s amendments;

2. Priority actions;

3. Office actions (non-final and final); and

4. Suspension letters.

Note: If the trademark DOES meet registration requirements, the first action of the USPTO (the ‘TRAM Snapshot of App at Pub for Oppostn’) may go unnoticed by the applicant until the applicant receives a postcard or email of the ‘Notice of Publication.’


Types of Office Actions

(from http://www.uspto.gov/trademarks/process/

update/oa.jsp)

   1. Examiner’s Amendment

      An examiner’s amendment is a written confirmation of an amendment made to an application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant’s attorney. The examiner’s amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner’s amendment unless the applicant wishes to make further changes to the application.

     

   2. Priority Action

      A priority action is a letter [electronic] in which an examining attorney sets forth specific requirements that the applicant must meet before an application can be approved for publication. An examining attorney will issue a priority action after consulting with an applicant or the applicant’s attorney. Unlike an examiner’s amendment, the priority action does not confirm resolution of the issues; instead, it explains the requirements still outstanding.

      The applicant must respond to a priority action within 6 months from the date the priority action is mailed. If the applicant fails to do so, the application will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

      The benefit of a priority action is that, if the applicant responds within 2 months, the application will be given priority in processing.

  

 3. Office Action

      An office action is a letter in which an examining attorney sets forth the legal status of a trademark application. In such a letter, an examining attorney will inform an applicant if the search of the Trademark Register yielded any conflicting marks. The examining attorney will also send an office action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to make any procedural requirements.

      Applicants must respond to an office action within 6 months from the date the office action is mailed. If applicants fail to do so, their applications will be declared abandoned. Please note that examining attorneys have no discretion to extend the time for filing a response to an office action.

      There are two types of office actions: non-final and final. A non-final office action raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final office action, the examining attorney will issue another non-final office action that sets forth the new issue(s) and continues any that remain outstanding. A final office action is the last office action that an examining attorney issues. It makes “final” any outstanding issues. An applicant’s only response to a final office action is a) compliance with the requirements or b) appeal to the Trademark Trial and Appeal Board.

 

  4. Suspension letters

      A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons [such as a likelihood of confusion with a pending application]. 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 have to respond to suspension letters.


 How to Respond to Office Actions

There is no set form or required format for responding to an office action. Applicants should address each issue raised by the examining attorney.

Responses to office actions must be received within 6 months from the mailing date on the office action. There are no extensions to this deadline. Examining attorneys have no discretion to extend the time period for filing. If applicants do not submit a timely response to an office action, their applications will be declared abandoned.


Not Just Patents®Legal Services can respond to office actions and advise you on how to use trademarks to capture more rights. For more information, see Office Actions or call us at (651) 500-7590. See Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action if you have already applied and been refused.



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