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Trademarks

Understanding the Requirements for Filing a Section 1(b) Trademark Application

If you are seeking to register a trademark or service mark with the United States Patent and Trademark Office (USPTO), you may be able to file an application under section 1(b) of the Trademark Act. This section allows you to file an application on the basis of your intention to use the mark in commerce for the identified goods or services. However, before your registration will be granted, you must be able to demonstrate that the mark is actually being used in commerce on or in connection with the goods or services specified in your application. This means that you will need to file either an amendment to allege use under 15 U.S.C. section 1051(c) or a statement of use under 15 U.S.C. section 1051(d). Both of these documents must include dates of use for each class, as well as a specimen evidencing such use for each class. It's worth noting that the requirements for registering a collective trademark, collective service mark, collective membership mark, or certification mark may be slightly different. If you are seeking to register one of these types of marks, you should refer to the relevant sections of the Trademark Electronic Processing Manual (TMEP) for guidance. In summary, if you want to register a trademark or service mark with the USPTO, you must be able to demonstrate that you have a bona fide intention to use the mark in commerce, and that the mark is actually being used in commerce on or in connection with the identified goods or services. Filing an amendment to allege use or a statement of use, along with the required specimens, is an important step in the process.  Talk with a trademark attorney at Tucker Law [...]

By |2023-01-11T20:41:21-05:00February 10th, 2023|Trademarks|Comments Off on Understanding the Requirements for Filing a Section 1(b) Trademark Application
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The USPTO’s Process for a Timely Amendment to Allege Use

If you've filed an amendment to allege use for your trademark application, but the mark was published for opposition before the amendment was examined, you may be wondering what steps the USPTO will take next. According to the Trademark Manual of Examining Procedure (TMEP) §1104.04, the examining attorney will contact you (or your trademark attorney) by telephone or email and give you the option to withdraw the amendment. If you decide to withdraw the amendment, the examining attorney will advise you that a notice of allowance will be issued if the application is not opposed, and you'll need to file a statement of use or request an extension of time to file a statement of use within six months of the notice. You also have the option of requesting that the USPTO treat the amendment to allege use as a statement of use, which must be done within six months of the notice of allowance using the TEAS Post-Publication Amendment form. If you don't file a statement of use, request an extension, or request to treat the amendment as a statement of use within six months of the notice of allowance, your application will be abandoned. On the other hand, if you elect not to withdraw the amendment to allege use, the examining attorney will take one of two actions: If no notice of allowance has been issued, the examining attorney will withdraw the application from publication and examine the amendment to allege use. If a notice of allowance has already been issued, the ITU/Divisional Unit will cancel the notice and the examining attorney will examine the amendment to allege use. If the amendment to allege use can be approved after examination, the mark must [...]

By |2023-01-11T20:39:06-05:00February 8th, 2023|Trademarks|Comments Off on The USPTO’s Process for a Timely Amendment to Allege Use
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Understanding the “Blackout Period” in USPTO Trademark Prosecution

When it comes to obtaining a trademark registration from the United States Patent and Trademark Office (USPTO), there are certain rules and regulations that must be followed that are best to discuss with an experienced trademark attorney. One of these rules is known as the "blackout period," which is a specific time frame during which an applicant is not permitted to file an amendment to allege use or a statement of use. Under 37 C.F.R. §2.76(a)(1), the USPTO will not review an amendment to allege use that is filed after the date that the application is approved for publication by the examining attorney. Similarly, under 37 C.F.R. §2.88(a)(1), the USPTO will not review a statement of use that is filed before the date of issuance of the notice of allowance. These two rules combine to create the blackout period, which is a time when neither an amendment to allege use nor a statement of use may be filed. If an applicant attempts to file an amendment to allege use or statement of use during the blackout period using the Trademark Electronic Application System (TEAS), they will receive an error message indicating that the application is in the blackout period and advising them to wait until the status of the application changes to "notice of allowance issued" before filing the form. The applicant can monitor the status of the application on the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at https://tsdr.uspto.gov/. If an applicant submits a permitted paper-filed amendment to allege use during the blackout period, the USPTO will notify the applicant that the amendment is untimely and will not be reviewed, and any filing fee will be refunded. Intent-to-use applicants who [...]

By |2023-01-11T20:23:52-05:00February 7th, 2023|Trademarks|Comments Off on Understanding the “Blackout Period” in USPTO Trademark Prosecution
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Understanding the Definition of ‘Use in Commerce’ in Trademark Law

Trademark law can be complex and confusing, especially when it comes to the requirements for obtaining and maintaining a trademark. One important concept in trademark law is the requirement for "use in commerce," which refers to the actual use of a mark in the sale or transportation of goods or services. The definition of "use in commerce" was amended by the Trademark Law Revision Act of 1988 (TLRA) to include the phrase "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." This amendment was primarily intended to eliminate the practice of "token use," or using a mark solely to reserve rights in that mark without any real intent to use it in business. The TLRA's legislative history makes it clear that the meaning of "use in the ordinary course of trade" will vary from one industry to another. For example, an industry that sells expensive or seasonal products may make infrequent sales, but these sales would still be considered "in the ordinary course of trade." Similarly, a pharmaceutical company that markets a rare disease treatment may make few sales, but these sales would still be considered "in the ordinary course of trade" because they are part of the company's business. There are several factors to consider when determining whether a mark is being used in the "ordinary course of trade." These include the amount of use, the nature or quality of the transaction, and what is typical use within a particular industry. For example, in the case of Automedx Inc. v. Artivent Corp., the sale of demonstration models of portable medical ventilators to the military was found to be a [...]

By |2023-01-11T20:21:58-05:00February 6th, 2023|Trademarks|Comments Off on Understanding the Definition of ‘Use in Commerce’ in Trademark Law
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Understanding the Requirements for Use in Commerce in a Trademark or Service Mark Application

If you are considering applying for a trademark or service mark, it is important to understand the requirements for use in commerce. According to the Trademark Act (15 U.S.C. §1051(a)), in order for a mark to be eligible for registration, it must be in use in commerce on or in connection with all the goods and services listed in the application as of the application filing date. This requirement is outlined in 37 C.F.R. §§2.2(k)(1) and 2.34(a)(1)(i). In order to satisfy this requirement, the application must include a statement that the mark is in use in commerce, verified in an affidavit or declaration under 37 C.F.R. §2.20. This verified statement must be filed with the original application, or the application must allege that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date (37 C.F.R. §2.34(a)(1)(i)). It is important to note that the requirements for verification can vary depending on the circumstances of the application. For more information on these requirements, see TMEP §§804-804.05. Overall, the use in commerce requirement is a critical aspect of the trademark or service mark application process. It is essential to ensure that your mark meets these requirements in order to move forward with your application.  Contact a trademark attorney at Tucker Law to discuss the use of your trademark in commerce.

By |2022-12-31T11:24:13-05:00February 1st, 2023|Trademarks|Comments Off on Understanding the Requirements for Use in Commerce in a Trademark or Service Mark Application
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