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What is a mark?
A mark is a word, phrase, symbol, and/or design which is meant to indicate the source of goods or services.
What is a trademark?
A trademark is an indicator of the source of goods - intended to help consumers determine where their goods are coming from. A trademark is a mark which indicates the goods are originating from the same place each time that mark is used.
What is a servicemark?
A servicemark is an indicator of the source of services - intended to help consumers determine where their services are coming from. A servicemark is a mark which indicates the services are originating from the same place each time that mark is used.
When is it proper to use a TM symbol, SM symbol, or R symbol?
What is the USPTO?
The USPTO is the United States Patent and Trademark Office. Trademarks are registered through the USPTO. When referring to the agency where approval is sought for a trademark – the USPTO can be called the Trademark Office.
What is a federal trademark registration filing basis?
Generally, the filing basis of a federal registration application is a description of the use of the mark. Domestic marks will fall into either a filing basis of 1A or 1B.
What is a 1A federal trademark registration filing basis?
A 1A filing basis indicates the mark is currently being used in interstate commerce. A 1A filing basis is also called a “Use in Commerce Basis.”
What is a 1B federal trademark registration filing basis?
A 1B filing basis indicates the mark has not been used in interstate commerce but there is an intent to use the mark in interstate commerce. A 1B filing basis is also called an “Intent-to-use Basis.”
How long does it take for a federal trademark registration application to be approved?
The approval time varies. Applications with a 1A basis tend to be approved earlier than 1B basis applications. The peak time of approval for 1A basis applications occurs at 6 to 9 months. The peak time of approval for 1B basis applications occurs at 12 to 15 months. Although, those stated approval times may be longer because there has been a steady increase in applications to the trademark office in the past few years and the numbers given were taken from a case study done with applications filed at the beginning of 2017 (A case study performed by the Law Office of John B. Hudak).
How are classes defined for a federal trademark registration application?
The classes for trademarks are divided into 45 different classes. Classes 1 – 34 are goods. Classes 35 – 45 are services. A more detailed definition of each class is here.
What is trademark infringement?
One can commit trademark infringement if that person uses a mark, which is the same as -- or similar to another mark -- that will cause likelihood of confusion to a potential consumer, that both marks are indicating a common source of the goods/services.
What action can be taken against trademark dilution?
Under the Trademark Dilution Act 15 U.S.C. 1125(c), if a mark is used which impairs the distinctiveness of a famous mark or harms the reputation of a famous mark, the owner of the famous mark can obtain an injunction to stop the other user from using the mark. This injunction can occur “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” 15 U.S.C. 1125(c)
What are acceptable specimens indicating use of a mark for applications or other submissions to the USPTO?
For goods, a trademark specimen can be a scanned copy, photograph, or other reproduction of: (a) a label, tag, or container (TMEP 904.03); (b) a commercial display directly associated with the good (TMEP 904.03(g)); or (c) a webpage which "(1) contains a picture or textual description of the identified goods; (2) shows the mark in association with the goods; and (3) provides a means for ordering the identified goods" (TMEP 904.03(i)).
For services, a servicemark specimen should show the mark in the sale, rendering, or advertising of the services. The mark should be in direct association with the services. Acceptable specimen examples are: brochures, billboards, websites, etc. (TMEP 1301.04, (a), (f)(ii), h(iv)(C)).
Are there any required government maintenance documents (renewal documents) after approval of a federal trademark registration?
Yes. If proper maintenance documents are not submitted at the proper time, a trademark registration will expire or be cancelled. Below is a summary for domestic marks.
A Section 8 declaration is required after the registration date during the following time periods: (a) between the 5th and 6th year; (b) between the 9th and 10th year; (c) between the 19th and 20th year; and (d) and every ten years following.
A Section 9 declaration is required after the registration date during the following time periods: (a) between the 9th and 10th year; (b) between the 19th and 20th year; and (d) and every ten years following.
There is a grace period allowed for a Section 8 declaration and a Section 9 declaration. A Section 8 declaration can be filed up to 6 months after the above deadlines with an additional fee of $100 per class. A Section 9 declaration can be filed up to 6 months after the above deadlines with an additional fee of $100 per class.
A Section 15 declaration is optional – although recommended – and can be filed if the mark was in continuous use for 5 years after the registration date.
Are there any government fees associated with maintenance documents (renewal documents) after approval of a federal trademark registration?
Yes, the following government fees apply:
Section 8 Declaration - $225 per class
Section 9 Declaration - $300 per class
Section 15 Declaration - $200 per class
How long does a trademark last?
A trademark does not have a specific expiration date. As long as the proper maintenance documents and fees are paid – and the trademark is actually being use for the registered uses – then the trademark will not expire.
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