Categories
Amazon Brand Registry Intellectual Property Trademark

Amazon Brand Registry related FAQ

Amazon Brand Registry is one of the strongest Amazon selling tools as a seller can control the entirety of Amazon listings for all products associated with a brand. It’s a free service for a seller who owns a UPSTO registered trademark.

As Amazon Brand Registry is a private program ran and controlled solely by Amazon, Amazon can do whatever it wants regarding the program including registration requirements.

Hence, you should take a note the following materials are only provided as an anecdote of an attorney who only indirectly experienced enrollment in Amazon Brand Registry through his clients.

What is Amazon Brand Registry?

What are requirements to participate in Amazon Brand Registry?

What is Amazon Brand Registry Beta?

Can you use Amazon Brand Registry as soon as you have U.S. Serial Number?

Should I give a chance to Amazon IP Accelerator program?

Why do I need to register my mark/brand/logo with the USPTO?

What is Amazon Brand Registry?

Amazon Brand Registry is an Amazon’s own program that offers its sellers an ability to control, edit, and possibly remove listings related to the sellers’ registered trademark.

Go to Amazon’s Brand Services page to get more info.

What are requirements to participate in Amazon Brand Registry?

The answer used to be simple. In the beginning, Amazon only allowed “registered” trademarks, meaning you need to first have your trademark registered with the USPTO before you enroll in Brand Registry.

The problem was that when you file a trademark application with the USPTO, the following happens:

  • At least four months for the USPTO to examine your mark
  • At least a month for notice to the public via publication
  • At least two months for processing and waiting for USPTO actions

In sum, the trademark registration process takes at least seven months, which means an Amazon seller who launched a new brand would not be eligible to enroll in Brand Registry for a significant period of time.

That brought Amazon to recently start a pilot program Brand Registry Beta that allows sellers in the U.S. and India to apply for Brand Registry as soon as they file an application.

What is Amazon Brand Registry Beta?

It’s an invitation-only pilot program that allows you can request an enrollment of your brand with a pending trademark application.

According to its introduction page, the requirements are

  1. a pending trademark application with the USPTO or the Indian counterpart,
  2. you have an Amazon seller or vendor account, and
  3. you have no trademark currently enrolled in Amazon Brand Registry.

If you met the aforementioned requirements, you need to fill out a form to be waitlisted. The form asks you the followings:

  • Trademark office where your trademark is pending registration
  • The number of your trademark application (serial number for US trademarks and trademark application number for India trademarks)
  • First name
  • Last name
  • Email (valid email addresses only)
  • Company name
  • Brand name
  • If you have a seller central account please provide your merchant token. If you have a vendor central account please provide the email associated with your vendor central account

Can you use Amazon Brand Registry as soon as you have U.S. Serial Number?

A U.S. Serial Number is immediately available when you file a trademark application with the USPTO via TEAS. However, we don’t know yet how soon you can use tools available through Amazon Brand Registry.

When we have statistically meaningful data as to how long the process takes, I will post here.

last update on 9/24/2020 by Young Jeon, Esq.

If you can’t meet the Amazon Brand Registry Beta requirements, you can alternatively consider Amazon IP Accelerator program. The IP Accelerator program has affiliated law firms that offer trademark services and allows you to file a trademark application with one of the law firms and to apply for Brand Registry with the U.S. Serial Number.

IPfever does not participate in Amazon IP Accelerator program, but you can go to the program’s webpage via this link.

We already analyzed the program’s worth in a previous post, but if you need Brand Registry before your trademark gets registered, this is probably your last resort.

Should I give a chance to Amazon IP Accelerator program?

My belief, and also the USPTO’s, is that any U.S. licensed attorney can handle trademark registration, if a sufficient time is given. The key issue is how competent and responsible the lawyer is for your case. It can vary from an attorney to another within a firm.

However, Amazon probably requires the law firms to maintain the quality of the trademark applications, meaning a vast majority of the application should eventually render registration. This gives an incentive to law firms to reduce the likelihood of an Office Action, which gives many clients a reason to abandon their application due to the cost.

If so, the IP Accelerator law firms should be a better choice than many unethical trademark service companies, especially non-attorney service providers of dubious legality, who often blindly files a high likelihood of refusal application without forewarnings to make money.

The best method is to contact a law firm, preferably talk to an attorney, and ask trademark questions first. For example, if what you are hearing is nothing but a recommendation to get Brand Search or Brand Review service, then you might want to try another law firm.

Of course, you can’t never know if a trademark is safe to use, sure to be registered, and so on. Even with Brand Search and Review, it’s never 100%. On the other hand, a competent attorney can provide a general but very helpful overview of your trademark instantly upon hearing about the mark and associated goods/services.

Why do I need to register my mark/brand/logo with the USPTO?

I tend to start a free trademark consultation with a saying, you have a right to a trademark when you use it. There are exceptional circumstances such as Intent-to-Use application under which you can file a trademark application before you start to use the trademark. Nonetheless, trademark registration offers registration of an existing rights related to trademark, servicemark, collective mark, and trade dress.

The registration scheme offers a pre-screening of the alleged rights, including if there are any conflicting marks, and provide notice to the public. This helps businesses can operate with certain expectations that their trademark will be protected. As an incentive, the registered trademarks are given certain enforcement options and heightened legal status.

That does not mean, you don’t have a right to stop others from misappropriating your trademarks by using confusing names, marks, or logos.

It is true that federal trademark registration is almost always recommended unless you deal exclusively with a set of preexisting clients. However, it is also recommended that you should do your marker research and find a distinctive name or logo for your product/service. And when you feel ready, you proceed with the registration process in consideration of your business plan and budget.

On the other hand, if you want to pre-register a name or logo even long before you start actually using the name or logo, let alone your business, then you can always file an ITU application that can hold a name or logo for registration upon your actual use for up to 3 years. ITU applications involve less risk because the trademark examination will be completed before you start using it, so you can more confidently file it yourself.

Categories
TEAS plus Trademark Trademark Application U.S. Trademark

Change Address on TM registration, DIY

Businesses move. And their trademarks should come along. Unfortunately, changing your address on your trademark registration(s) (also in your application(s) if it has not been registered) is not as straightforward as changing your profile on Facebook.

Categories
Intellectual Property Trademark Trademark Application

Amazon IP Accelerator Program

Amazon’s IP Accelerator Program (hereinafter “IPAP”) allows sellers to use Amazon Brand Registry as soon as they file for a trademark application with the USPTO. Typically, registration takes 6-9 months, so this is an exciting program for Amazon sellers.

Categories
General Intellectual Property Trademark Trademark Application U.S. Trademark

How IPfever works: the Real Cost of Getting a Trademark

If you’ve reached this article, you’re very likely mindful about those dubious online trademark services. They’re low cost, and they tend to have bad reviews on online communities like BBB and Yelp. Well, I’m not surprised. I’ve recently had a client who was charged for two international classes ($550 in USPTO fees), but for only one international class the application was actually filed. That’s an outright fraud.

So, now you wonder how IPfever is different. I understand it seemingly has less documentations and lacks fancy charts/diagrams explaining the process. The truth is that IPfever is actually just an online arm of two patent attorneys’ traditional law practice. In other words, though IPfever has online presence, we work like any other law offices with real attorneys except that we have a very different approach to legal fees.

The reason people consider those dubious online services is obviously the cost. When you walk in to a law firm, you’re starting to pay everything you see and interact from there on. The receptionist’s salary? The fancy office furniture? The time you spend in their offices including “free” consultation? All paid by the clients in the end. IPfever attorneys believe attorneys can file a trademark application at a fraction of cost if they work smart.

Not all trademark applications are created equal. Some takes more time and preparation while others may be filed in minutes if not an hour. So, IPfever created this after-the-fact fee structure where clients will not pay unless they are satisfied.

Here’s how it works:

When you request a free consultation, an attorney will contact you and ask you bunch of questions. Of course, you can ask questions, too. But some of those questions will cost money.

For example, if you want to know if you can use a brand name or logo without infringing other’s trademark, or more simply if you can successfully register a brand name or logo with the USPTO, then attorneys will have to do some research to answer that question. These kind of answers will be in a research report that comes with an invoice, which you should pay, theoretically. However, if you feel you’re not happy with the report, then you’re free to walk away.

Other than that, most questions will be answered by your attorney on spot. Some of the questions will take a lot of time answering because you might ask something like “what about this design feature?” There, your attorney will try to guide you through the process of getting a registered trademark based on your specific needs about the cost, timeline, the ultimate strength of registered trademark, and etc. When you say the cost is your top priority, your attorney will lead you to the shortest way, but meanwhile you will be informed about the risks that you’re taking. Sometimes, you are willing to take a risk to save money, and we fully understand.

After that initial consultation, attorneys can give you the estimate of cost for filing an trademark application with the USPTO. This would include all the USPTO fees, and unless your application is initially refused for some reason, that is all you pay for the registration.

If you like what you saw and heard so far, you give your attorney a nod, and a trademark application will be ready in 2-3 business days. Then, you will receive a report of details of the trademark application and an invoice, for the services done so far and the USPTO filing fees. You make the payment, and your application will be filed with the USPTO.

This is not the most straightforward process because more often than not, the first question you ask is how much it costs? Well, the obvious answer is “it depends”. Maybe we can simply say $1,000 per trademark, excluding USPTO fees, like other attorneys. We can certainly do that because the average cost of getting a registered trademark at IPfever is less.

From February 2020 to June 2020, the average cost of getting a registered trademark at IPfever was about $425.

Then, why not just do $500 flat fee? Well, the lowest was $130. What should we say to the client for whom we only spent $130 worth time and resources? We understand the fear of getting unexpected legal invoices, and that is why we always try to provide estimates before we move and also have the “100% satisfaction guarantee”: if you’re not satisfied with the services, you don’t have to pay the invoice. Just let us know what went wrong, and we will try to fix it or simply cancel the invoice.

I hope you find this article helpful, and if you have further questions, simply request a free consultation and include your question there.

Categories
TEAS plus Trademark Trademark Application Trademark Examination

Acceptable identifications of goods and services

There are good reasons you should stick to the Trademark ID Manual when you describe your goods and services in your trademark application. Picking one outside Trademark ID Manual not only cost you more but also may delay the registration process.

Why is the description important?

First, you need to understand there are two different classification systems: (1) the Nice Classification (NCL) and (2) a Trademark Identifications and Classifications Project (or TM5). The NCL is a “compulsory” classification system, which is annually updated and currently lists about 80 international classes (ICs). TM5 is an “optional” classification regime that simply seeks to unite the big 5 intellectual property agencies in the world (obviously the USPTO is one of them).

Long story short, NCL gives categories and TM5 gives sub-categories. And some sub-categories adopted by the USPTO are yet adopted by all major intellectual property offices, meaning they are okay with the USPTO although not TM5.

The reason you need to place your trademark in a proper category arises from the very reason you want your trademark registered. As you probably know by now, trademark is quite different from other intellectual properties in that it is not about protecting your ingenuity or creativity but about protecting your goodwill and reputation in the market.

What this means is that your pretty logo or emblem is protected by the trademark law not because you created it but because you used it in association with your goods/services. If you want to protect your artistic or literary expression, you should seek copyright protection.

So, why we need appropriate classification? On the paper, your trademark protection likely goes only as far as the IC in which your product/service belongs. For example, you run a bakery named Flew Blast, and someone launches an athletic clothing brand Flew Blast . You unlikely can argue your trademark right is being infringed.

If you have two or more ICs in which your goods/services belong, you need to file multiple-class trademark application. In reality, you simply list all ICs in an application and pay the application fee multiplied by the number of ICs you elected.

How to Identify My Goods/Services?

Once you have chosen all ICs that apply to your goods/services, now you need to tell the USPTO why you selected those ICs. At least one good/service must be entered for each IC in your application, and it can be as many as you like. The thing is that your business is likely dealing with many types of goods/services in an IC. For example, all cosmetics belong to the international class 003 except those having medicinal purposes. The latter would belong to the international class 005 with other medicines.

It might be tempting to include just every possible goods/service you can find in the USPTO’s Trademark ID manual. After all, it is for no extra charge. However, one of the goals of the USPTO is to allow all rightful owners of trademarks to register their trademarks for protection. Sometimes, even within an IC, there can be instances where quite similar trademarks can be used by two business owners without much conflict or confusion among the consumers. That might be due to no overlapping of potential customers between these two among many other reasons. The identification of goods and services can tell if there would likely be an overlapping of potential customers.

To deter anyone in bad faith claims all the goods/services within an IC, the trademark examiner at the USPTO may require you to submit more than one specimen per international class. (see below for further discussion of specimen) Potentially, a specimen for each and every goods and services listed. Also, you should know that you trademark registration can be cancelled for your false statement.

The TEAS allows you to search the Trademark ID Manual while you are filling in the trademark application. So, do a thorough search and find descriptions that cover all the goods and services you provide. Sometimes, you may find just one description covers it all. Other times, you find two descriptions that more or less cover the same goods and services. You do not need to include all descriptions that apply to your goods/services. If one covers it all, select it and move on. If one does not carry all the way, find another one. Just keep going till everything is covered.

Statement of Use (Allegation of Use)

Whether you are currently using the trademark or you only intend to use it later, at some point you must prove that you are actually using it. That proof is a specimen. A specimen is usually a photography of a good that bears the trademark. The specimen should show the entirety of the product not just the trademark, which is obvious because you already provided how the trademark looks in the earlier stage of the application. Also, it should show the trademark as it is filed, meaning if you have claimed colors in the application, you photo cannot be a black-and-white one. When it comes to services, you need to find a way to show that your mark is used in association with your service/business. Nowadays, a screenshot of your business website should be your first consideration. Simply find the page that actually selling the services, meaning customers can place an order or find contact information. A screenshot of the webpage, which obviously should show your trademark as well, would be a good and convincing specimen.

How many specimens do you need? I would go for one specimen for one IC by default. Just think about how extensive your list of goods/services, and you feel you should show more than just one, then feel free to go ahead and include more specimens. The thing is if the examiner wants to see more specimen, they will simply ask you in an office action. You would have 6-months to add more specimen, and once you upload your specimens in the system using the Response to Office Action form, which can be found here, you are all set. You would face some delay depending on how quickly your examiner re-visit your application, but if your goods/services are cohesive and reasonable, it is unlikely that your examiner asks for more specimen.

Categories
Intellectual Property Trademark

TM Int. Classes (11-2018)

Class 1

Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.

Class 2

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.

Class 3

Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.

Class 4

Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.

Class 5

Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6

Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes.

Class 7

Machines, machine tools, power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.

Class 8

Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 10

Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.

Class 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12

Vehicles; apparatus for locomotion by land, air or water.

Class 13

Firearms; ammunition and projectiles; explosives; fireworks.

Class 14

Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.

Class 15

Musical instruments.

Class 16

Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers’ type, printing blocks.

Class 17

Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.

Class 18

Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.

Class 19

Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20

Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.

Class 21

Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.

Class 22

Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor.

Class 23

Yarns and threads, for textile use.

Class 24

Textiles and substitutes for textiles; household linen; curtains of textile or plastic.

Class 25

Clothing, footwear, headgear.

Class 26

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.

Class 27

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28

Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.

Class 29

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; oils and fats for food.

Class 30

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice (frozen water).

Class 31

Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt.

Class 32

Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33

Alcoholic beverages (except beers).

Class 34

Tobacco; smokers’ articles; matches.

Class 35

Advertising; business management; business administration; office functions.

Class 36

Insurance; financial affairs; monetary affairs; real estate affairs.

Class 37

Building construction; repair; installation services.

Class 38

Telecommunications.

Class 39

Transport; packaging and storage of goods; travel arrangement.

Class 40

Treatment of materials.

Class 41

Education; providing of training; entertainment; sporting and cultural activities.

Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 43

Services for providing food and drink; temporary accommodation.

Class 44

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45

Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.

Categories
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.

Categories
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.

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

TEAS Plus vs. Standard 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 Standard 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.

Updated on 7/10/2020 to reflect name changes in USPTO TEAS forms (from Reduced Fees to Standard Fees). This change was made because non-electronic filing (which required a higher “standard” fee) is not available anymore.

Young Jeon, Esq.
Categories
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.

Categories
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.

Categories
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.

Categories
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.

Categories
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.

Categories
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.

Categories
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

Categories
Intellectual Property Trademark

Trademark Basics

Categories
Intellectual Property Trademark U.S. Trademark

Outline – Trademark

Categories
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.