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Intellectual Property Trademark Trademark Application

Online Trademark Services: Good or Bad?

Let’s talk about filing a TM application without any help first.

There is no doubt that any US person, including legal entity having address in the U.S., can file a trademark application without absolutely no help.

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Intellectual Property Trademark Trademark Maintenance

Trademark Maintenance: does trademark registration expire?

Maintaining registration calls for both administrative and executive action.

Administratively, you need to file with the USPTO a showing that you’re still using the mark after 5 years of the registration, and every 10 years, you need to file a request for renewal.

On the business side, you must continue using your mark at all times, even after the registration. This requirement is often overlooked because your staff who handles trademark typically has no saying in continuing/discontinuing a product line.

You need to monitor your registration status and enforce your trademark rights yourself.

Trademark Status and Document Retrieval (TSDR) service offered by the USPTO is a good place to start. The USPTO recommends every trademark applicant to check TSDR regularly.

The USPTO does not enforce registered trademarks for the owners. It’s your obligation to monitor infringing activities in the market and take actions to stop them. Often it involves writing a letter to notify the wrongdoer and ask for compliance/compensation, but you may need to bring a lawsuit if there’s a dispute.

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Intellectual Property TEAS plus Trademark Trademark Application U.S. Trademark

TEAS Plus, RF (reduced fee) Explained

By carefully filling out all the required blanks and agreeing to go paperless in communicating with the USPTO, you can reduce your application fees from $325 to $225 (TEAS plus).

TEAS RF allows you to enter goods/services description in your own words for a slightly heftier fee, but it is not recommended if you want the examination process to be as quick as possible. If you pick one from the Trademark ID manual (by USPTO), the examiner will unlikely oppose to the propriety of the description.

Not all questions are straightforward. When you’re in doubt, always consult USPTO guidelines. Always consult a professional before making decisions. All you learned today may be a tip of an ice burg.

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Intellectual Property Trademark U.S. Trademark

Trademark Clearance Search

It is absolutely necessary to find out if there is anyone using your mark prior to your use. A clearance search is often performed through proprietary services, which often search not only state and federal registrations but also common law trademarks. Typically, a better service costs more; but depending on your situation a simple Google search may suffice.

Typically, a clearance search provides lists of all current state, federal, common law trademarks that are identical or similar to your mark. Unless your mark is very unusual, you will face a number of identical and similar trademarks in use. Even if there is an identical trademark registered and used, it does not necessarily mean that you can’t use the mark; however, it is also true that even if there is no identical trademark, you might not be able to use the mark. At the end it all comes down to whether your use of the mark would infringe other trademark owner’s rights.

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Intellectual Property TEAS plus Trademark Trademark Application U.S. Trademark

Trademark Registration: do I need to hire an attorney?

Getting a trademark, you can either “do it yourself” or hire a professionals. DIY option describes not only filing directly via TEAS at USPTO.gov but also using commercial services under $100.

Let’s compare these two options.

Do it yourself Professional Help
Mark Your choice of wording and design Likely a better wording and design
Registration online trademark search/registration via your representative
Cost USPTO fees + $100 commercial service fees USPTO fees + up to $2,000 attorney fees + design cost

Trademark registration is not too complicated.

Nonetheless, mistakes can cost your time and money. If you are not going to hire an attorney, you should read and watch everything on USPTO’s Trademark Basics before you proceed. On a side note, even if things go smoothly while registering trademark, lawyers can improve the strength of the registered trademark significantly and designers will give your logo/design a professional look.

USPTO offers an online application form through TEAS (Trademark Electronic Application System).

There are various forms including TEAS plus, TEAS RF (Reduced Fee), and TEAS regular application types. Latter forms are subject to higher fees but offers some flexibility to applicants. Assuming you don’t make any mistake in filling out the form, you can save up to $100 by choosing TEAS plus. TEAS forms are web-based, guided, multi-page forms that anyone can learn the process as-you-go.

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Intellectual Property Trademark Trademark Application

Standard Character mark v. Special Form mark

There are mainly two types of trademark, a standard one and a stylized one.

Coca-cola_stylized_logo

A standard one (called a standard character mark) establishes your trademark rights to the written words of the mark whereas a stylized one (called a stylized/design mark) to the expression of the words in a certain way.

For example, “Coca-Cola” is a brand name of a certain soda drink, registered to the Coca-Cola Company. But you more often see the name in a particular style as shown here.

Nowadays, the use of stylized logos and designs is very common because it effectively sets apart the company/brand from competitors’.

A common choice is Standard Character.

Although virtually all companies use at least some design/style elements in their trademark, still most of the companies register their trademark in a standard character format. Why?

  1. They don’t want their trademark right to be limited to a specific design. In fact, if you registered your brand name in a standard character format, any style/design of that registered name can’t be used by your competitors.
  2. Also, once registered as a stylized/design mark you can’t change the design or style of the mark. Companies often update their design and style elements to modernize them.

Thus, it’s is a rule of thumb that a standard character format affords a better protection.

A Styled/Design Mark works a bit differently.

IPfever_logo_example
JPfever_example

Let’s say IPfever registered a stylized trademark: After a few years, a website devoted to teaching Japanese language and culture dubs itself Japanese Fever, “JP fever” in short, and starts using this logo:.

Do you see any problem? Although they changed a letter, they look too similar. There’s likely an infringement case.

However, if IPfever were registered as standard character, it would’ve been a different story. Because “fever” in Japanese Fever can be considered as a descriptive word for passion and enthusiasm for Japanese culture, it likely has a leeway.

jpfever_example

But it should be noted that stylized/design marks have their own limitation. If Japanese Fever  , I say this one differs in style so much to escape from a potential trademark infringement claim.

You have to choose, but choose wisely.

You might say you would just register both standard character and design marks. Problem solved? Well, it’s not that simple.

You can’t claim “the coffee house” trademark for your coffee house because that’s what people call any coffee house. It’s reserved for everyone. But you may register this stylized/design mark.

the_coffee_house

You probably need to disclaim rights to the words, (meaning that others can literally use the same name) but it still protects you from something like this knock-off.

the_coffee_shop

So, figure out what’s the strength and weakness of your mark, and then choose wisely.

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Intellectual Property Trademark Trademark Examination

Trademark Office Action: how to respond

Office Action calls for a legal writing.

When there is problem with your trademark application, the Office will issue an OA.  There could be multiple instances of OA per application while many trademarks get registered without any.

Sometimes, a simple change to your application can fix the problem, so the only thing you need to is agreeing with the change. But often you must rebut the rejection with legal arguments. This provides you of an opportunity to clarify and strengthen your application (and the trademark), but a wrong response could render the trademark unenforceable or nominal.

You must understand the reason for rejection clearly and respond to every issue to the full extent. You might find it helpful to review similar OAs and corresponding responses from another applicants on the TSDR (Trademark Status & Document Retrieval), which is open to the public and FREE. Although you can borrow their legal argument and logic, you must apply them to your facts.

Sometimes it’s not a good idea to proceed with responding office actions. Use free consultation to figure out whether it’s a good idea or not. You may also get a rough idea about cost and timeline.

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Intellectual Property Trademark U.S. Trademark

You’ve got to “use” your trademark

Let’s take a look at an interesting story:

By the time Apple Inc. debuted iPhone in January 2007, the prefix “i” had already become a thing of Apple. The inauguration of iMac series dates back in 1998. In 2003, iPod was a mega hit.

Lesser known than Apple, however, there was a startup called InfoGear Technology Corporation, which developed an internet phone technology, called “iPhone.”

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Intellectual Property Trademark U.S. Trademark

For DIY TM Applicants: What’s a Strong tradeMark?

There is a “strong mark” and a “weak mark”. You don’t need to know all legal distinctions as to different types of marks, but you want to have a strong mark, right? Here’s a shortcut to get to the goal.

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Intellectual Property Trademark Trademark Application

Marketing Starts From Naming

Many low-end products tend to say exactly what it is. On the other hand, high-end products are very subtle. Have you ever bought a crappy good carefully wrapped inside a sophisticated package? Well, more likely than not you weren’t careful.

The thing is there is a tiny market for a fancy looking crappy product.

In other words, having a fancy name does rarely fly for a low-end product. You should name your product for what it is. However, that doesn’t prevent you from growing a great brand name.

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Intellectual Property Patent patent utilization Trademark

How to Deal with Cease and Desist Letter (Patent or Trademark Infringement Allegation)

When you run a business, there is a chance that one day you receive a letter claiming that you are infringing someone else’s trademark or patent rights. It’s commonly called a “Cease and Desist Letter.”

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Intellectual Property Trademark U.S. Trademark

What is Trade Dress?

When it comes to trademark (or servicemark), brand names, symbols, and logo designs are the first things to come to your mind. However, there are other types of trademarks that are protected. For example, a sound or packaging is also protected by the trademark law.

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Intellectual Property Trademark U.S. Trademark

Cheapest Way to Protect Your Trade Name (or Trademark, Servicemark, etc)

Have you been to a Burger King restaurant in Mattoon, Illinois? I mean the other Burger King restaurant. There is a restaurant called Burger King, which has nothing to do with Burger King franchise.

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Intellectual Property Trademark U.S. Trademark

When to Register Trademark?

Most clients come to me after their products reached the market. In fact, that’s when you know for sure that your product has the potential to be something. If not, why invest in registering trademark?

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Intellectual Property Trademark Trademark Disputes

A Legal Perspective of Trademark Misuse

This article contains fictional scenarios that include facts and legal issues that are created for an explanatory purpose. Any of those facts and legal issues including legal conclusions may not be true when applied to your case. Please seek a legal advice or counsel if you need any help.

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Intellectual Property Trademark Trademark Examination Trademark Maintenance

Trademark Office Action and Maintenance

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Intellectual Property TEAS plus Trademark Trademark Application

TEAS Explained, Page-by-Page

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Intellectual Property Trademark

Trademark Basics

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Intellectual Property Trademark U.S. Trademark

Outline – Trademark

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General Intellectual Property Trademark

Trademark Registration – IPfever Way

I guess you can file a trademark application yourself, which will cost a bit over $200 in government fees (for a long-term cost analysis, see https://www.ipfever.com/how-much-does-a-trademark-registration-cost/ ).
Here, the worst case scenario is you get a rejection letter (called Office Action). If there’s a mistake, you can amend it. In other cases, you can probably go around the problems. These will cost extra time and fees, but still you save money by not paying service/attorney fees.

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Intellectual Property Trademark

Choosing a Right Name for your Brand or Product

Zara, which is a Fast Fashion brand like Forever 21, boasts that it takes only 10 to 15 days for an initial product design to reach their retail stores through international manufacture and logistics. In this fast-paced environment where a product can be copied within a few days and mass produced, a superb product design and packaging warrants only half the success.

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Intellectual Property TEAS plus Trademark Trademark Application U.S. Trademark

$225 to Register a Trademark?

We have discussed the importance of trademark in “Amazon Suggests Branding for All“, and compared good and bad trademarks in “How often do you Google your trademark“. This time, we will learn about how to register a trademark.

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Intellectual Property Trademark U.S. Trademark

How often do you Google your trademark?

How do you react to a sight of a retail store that just launched? Early adopters enjoy using a product or service before other people do, but most of the consumers tend to be a lot less passionate about embracing a new store although its sight might pop among aging stores.

That is why many businesses spend fortune to run commercials on TV and place advertisements on publications to familiarize their trademarks to customers. Since an excessive amount of advertisements is pouring in through various media, most modern consumers consider the ads as something they want to avoid as much as possible.

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Intellectual Property Trademark U.S. Trademark

Amazon Suggests Branding for All

Approaching the 2017 holiday shopping season, the e-commerce giant Amazon’s stock price is heading to $1,200. Amazon.com, often quoted as “The Everything Store”, reportedly accounts for 46% of the entire online retail sales.

An interesting thing about shopping at Amazon.com is that you do not particularly notice the items sold directly by Amazon. All items sold at Amazon receive the same treatment, and the same format applies to all product pages. The product order is determined by objective statistics like sales, rating, and price. Quite often, items sold by third-party sellers are bestsellers or Amazon’s Choice.

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Intellectual Property Trademark U.S. Trademark

What is Trademark?

A trademark is a mark you use in order to identify your good or service.

For instance, IPfever is a trademark as it’s associated with services and contents offered at IPfever.com. If a law professor wants to start a blog about IP, she shouldn’t name it IPfever. Such naming would mislead people to think that the blog was associated with IPfever.

But, on the other hand, if a medical researcher encounters a feverish symptom related to Information Profession, she’s free to call it “IP fever,” to publish a paper titled “IP fever,” and so on. There’s no problem with such designation because the trademark IPfever, at the moment, has nothing to do with medical diagnosis.

So, you can freely catch an IPfever, and you may sell an IPfever brand roasted coffees. But you may not provide an IPfever service if that’s related to what is offered on ipfever.com.

That’s a brief overview of what trademark does and doesn’t. Let’s find out more.