Latest News: 02-22-2017 (Newsletter Issue 4/17)Effective Date for Rule Relating to Proving Use or Continued Use of Registered Trademarks DelayedOn January 19, 2017, the USPTO issued a notice of final rulemaking entitled “Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases” in the Federal Register, 82 Fed. Reg. 6259. The effective date of this rule has been delayed until March 21, 2017, in accordance with the memorandum of January 20, 2017, from the Assistant to the President and Chief of Staff, entitled “Regulatory Freeze Pending Review.” See 82 Fed. Reg. 10273.
Latest News: 02-01-2017 (Newsletter Issue 3/17)Changes to Examination of Affidavits or Declarations of Continued Use or Excusable NonuseThe USPTO is changing its rules regarding the examination of affidavits or declarations of continued use or excusable non-use of trademarks filed under Section 8 of the Trademark Act, and on affidavits or declarations of use in commerce or excusable non-use under Section 71 of the Act, effective February 17, 2017.
The new rules will allow the USPTO to require additional proof of use to verify that a trademark is in use in commerce in connection with particular goods/services identified in the registration, unless excusable non-use is claimed in whole or in part.
The USPTO issued a notice of final rulemaking entitled “Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases" in the Federal Register, 82 Fed. Reg. 6259, on January 19, 2017.
Latest News: 01-25-2017 (Newsletter Issue 2/17)Official Fees Changed/TTAB Final Rule Effective On January 14, 2017, the Trademark final fee rule became effective. The new fee schedule will primarily impact trademark applicants and registration owners who use paper filings. The fee for filing a trademark application on paper increased e.g. from USD 375 to USD 600 per class.
More moderate is the increase of e-filings which will be now USD 400 per class using the regular Trademark Electronic Application System (TEAS Regular) option. The fees have been increased by USD 75. More information, see here
Further, the USPTO informs that the TTAB final rule became effective on January 14, 2017 too. The TTAB chart summarising the rule changes.
Latest News: 01-11-2017 (Newsletter Issue 1/17)11th Edition of Nice Classification AdoptedUSPTO informs that the Nice Classification, Eleventh Edition, version 2017 (NCL 11-2017), became effective as of January 1, 2017.
More information of the class headings and a link to noteworthy changes can be seen here
Latest News: 10-26-2016 (Newsletter Issue 19/16)TTAB Revisions to Rules of Practice ChangedOn October 7, 2016, the Trademark Trial and Appeal Board (TTAB or Board) of the U.S. Patent and Trademark Office (USPTO) published changes to its Rules of Practice.
The USPTO published a Notice of Proposed Rulemaking, suggesting extensive changes to the TTAB’s Rules of Practice on April 4, 2016. After undertaking numerous outreach efforts to effected members of the trademark bar and their clients, the TTAB published its package of the final Rules changes at 81 Fed. Reg. 69950. The revised rules take effect on January 14, 2017.
Some of the chief revisions to the Board’s Rules of Practice include:
1. All filings with the TTAB must be submitted electronically through its Electronic System for Trademark Trials and Appeals (ESTTA), unless excused via Petition to Director of the USPTO.
2. Instead of the Plaintiff, the TTAB will once again undertake the responsibility for service on the Defendant of the initial pleading in the proceedings (such as the Notice of Opposition or Petition for Cancellation), and service will be by e-mail.
3. Service of all papers (by the TTAB and by the parties on each other) must be by e-mail.
4. As is presently the limitation on interrogatories, requests for production and requests for admissions will be limited to 75 in number. One additional comprehensive admission request will be permitted for authentication of the adverse party’s produced documents. Parties may seek leave from the TTAB to exceed these limitations upon a showing of good cause.
5. Parties will have the right to submit trial testimony by declaration or affidavit. However, an adverse party shall have the right to take testimonial depositions to cross-examine each declarant/affiant.
6. The minimum character size for written submissions to the TTAB will increase from 11 point font to 12 point font.
7. All discovery must be completed during the discovery period. Therefore, discovery requests must be served sufficiently in advance of the discovery deadline so that the responses are due on or before the deadline.
8. The requirements for Notices of Reliance have been updated to reflect current TTAB practice (for example, printouts of Internet documents).
For further information, please click here
Source: Quarles & Brady LLP, USA
01-11-2017 (Newsletter Issue 1/17)Correction to Final Rule Revising the Rules of Practice On October 7, 2016, the USPTO published in the Federal Register a final rule revising the Rules of Practice before the Trademark Trial and Appeal Board (TTAB) that will become effective January 14, 2017: 81 Fed. Reg. 69950.
The USPTO has now issued a correction to the final rule, published on December 12, 2016, in the Federal Register: 81 Fed. Reg. 89382.
The rules affected by the correction are: 37 CFR 2.123(a), 2.124, 2.126(c), and 2.145(d)(1) and (d)(3).
11-09-2016 (Newsletter Issue 20/16)Comments on Proposed Rule Changes RequiredOn October 28, 2016, the U.S. Patent and Trademark Office published a Federal Register notice seeking written comments on proposed changes to the rules for revival of abandoned trademark applications, reinstatement of abandoned applications and cancelled or expired registrations, and other petitions to the Director. The Office proposed the changes "to provide more detailed procedures regarding the deadlines and requirements for petitions to revive an abandoned application" and to "codify USPTO practice regarding requests for reinstatement of applications that were abandoned, and registrations that were cancelled or expired, due to Office error".
The notice stated that these changes should help achieve the Office’s goal of promoting the integrity of the information in the trademark electronic records system by (1) providing an accurate reflection of the status of live applications and registrations, (2) clarifying the time periods in which applications or registrations can be revived or reinstated after abandonment or cancellation, (3) clarifying the deadline for requesting that the Director take action, and (4) facilitating the efficient and consistent handling of such requests.
Written comments must be received by December 27, 2016.
For more information, please see here
11-09-2016 (Newsletter Issue 20/16)Nice Classification Changes Soon AdoptedThe USPTO has issued a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The rule entitled "International Trademark Classification Changes" published in the Federal Register today (81 Fed. Reg. 76,867 (November 4, 2016)), and will become effective January 1, 2017.
10-26-2016 (Newsletter Issue 19/16)Official Trademark Fee AdjustmentThe USPTO is amending its rules to set, increase or decrease certain trademark fees, effective January 14, 2017.
USPTO informs that the fee adjustments will allow the Office to recover the aggregate estimated cost of the Trademark and Trademark Trial and Appeal Board (TTAB) operations and USPTO administrative services that support Trademark operations. The rule will further USPTO strategic objectives by:
1.) better aligning fees with the full cost of relevant products and services;
2.) protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings, and more efficient resolution of appeals and trials;
3.) promoting the efficiency of the process, in large part through lower-cost electronic filing options.
A notice has been issued of the final rulemaking entitled "Trademark Fee Adjustment" in the Federal Register, 81 Fed. Reg. 72694 on October 21, 2016.
For further information on the Trademark fee changes page, please click here
07-12-2016 (Newsletter Issue 13/16)Deposit Accounts and Electronic Funds Transfer Accounts Need to Be MovedThe Financial Manager is the USPTO’s new online fee payment management tool. USPTO informs that the deadline to move existing USPTO deposit accounts and electronic funds transfer (EFT) accounts to Financial Manager has been extended through July 2016. A new date will be announced later, and by that deadline all deposit accounts and EFT accounts must be stored in Financial Manager in order to be used for payments.
Customers may continue to pay as a guest (i.e. without logging in and using a payment method stored in Financial Manager), but will be limited to using only a credit/debit card. For an easy move, please click on the 'Financial Manager Quick Start Guide' here
06-28-2016 (Newsletter Issue 12/16)Comments to Changes of Use Requirements WantedOn June 22, 2016, the USPTO issued a notice of proposed rulemaking entitled "Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases" in the Federal Register at 81 Fed. Reg. 22. Comments are due on or before August 22, 2016.
The USPTO proposes to revise the rules in parts 2 and 7 of title 37 of the Code of Federal Regulations to allow the USPTO - during the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to sections 8 or 71 of the Trademark Act, 15 U.S.C. 1058, 1141k - to require the submission of information, exhibits, affidavits or declarations, and additional specimens of use as may be reasonably necessary for the USPTO to verify the accuracy of claims that a trademark is in use in connection with the goods/services listed in the registration.
This will benefit the public by helping the USPTO assess and promote the integrity of the trademark register by encouraging accuracy in the listing of goods/services for which use or continued use of the mark is claimed. The proposed rules also facilitate the cancellation of registrations by the USPTO of marks that were never in use or are no longer in use, and for which acceptable claims of excusable nonuse were not submitted.
05-31-2016 (Newsletter Issue 10/16)New Payment Tools Launched by USPTOThe USPTO launched two new online fee payment tools to the public: The Financial Manager and the Patent Maintenance Fees Storefront. For more information, please click here
05-31-2016 (Newsletter Issue 10/16)Comments to Proposed Fees Adjustment WantedOn May 27, 2016, the USPTO issued a notice of proposed rulemaking relating to trademark fee adjustment in the Federal Register. Comments are due on or before July 11, 2016 to the USPTO’s notice, which was published at 81 Fed. Reg. 103.
The rule proposes to set or increase certain trademark fees, as authorized by the Leahy-Smith America Invents Act. The proposed fees will allow the Office to recover the aggregate estimated cost of the Trademark and Trademark Trial and Appeal Board (TTAB) operations and USPTO administrative services that support Trademark operations.
05-18-2016 (Newsletter Issue 9/16)New Status Feature LaunchedOn May 7, 2016, the USPTO launched a new status feature in TSDR called the TM5 Common Status Descriptors. This feature provides status of applications and registrations at the USPTO using a uniform set of icons and terms that were cooperatively developed by the TM5. Please find more information here
03-02-2016 (Newsletter Issue 4/16)Courtesy Email Reminders by USPTOHolders of international registrations designating the United States of America receive courtesy email reminders of the requirement to file affidavits of continued use in commerce by the United States Patent and Trademark Office (USPTO).
To avoid invalidation of protection under the law of the US, holders of US registrations as well as holders of international registrations containing a designation of the US are required to periodically affirm, in an affidavit, the continued use in commerce (or claim excusable non-use) of a mark with respect to the goods and services for which the mark has been granted protection. This affidavit must be filed directly with the USPTO.
As of January 2015, holders of US registrations and of international registrations designating the US receive a courtesy email from the USPTO reminding them of the upcoming deadline to file an affidavit of continued use in commerce if the holders have:
- a “live” registration on the date the reminder is sent,
- provided a valid email address to the USPTO, and
- authorised email communication with the USPTO.
These reminders are sent on the start date of the period to file the affidavit of continued use to the email addresses on record with the USPTO. The reminders identify the mark and indicate, inter alia, the deadline to file the said affidavit, as well as the grace period deadline and the filing fee per class. No reminders are sent by regular mail and no follow-up emails are attempted for undeliverable emails. Any failure by the USPTO to provide the courtesy email reminders or any non-receipt of such reminders will not excuse a holder who fails to meet its statutory obligations.
Holders are encouraged to use the USPTO Trademark Application Electronic System (TEAS) Change of Correspondence Address Form to indicate, update, or delete the email addresses to which the USPTO can send courtesy email reminders. Holders need to enter the corresponding US application serial or US registration number which can be found in the statement of grant of protection. Holders cannot enter the international registration number.
For further information on the requirement to file an affidavit of continued use (or excusable non-use), please check here and here
01-20-2016 (Newsletter Issue 1/16)Nice Classification Tenth Edition, 2016 Version ImplementedAs of January 1, 2016, the Nice Classification, Tenth Edition, version 2016 (NCL 10-2016), became effective.
For further information, please click here. Changes to the class headings and a link to noteworthy changes are available here
11-25-2015 (Newsletter Issue 18/15)
New USPTO Regional Office Opened
The USPTO announced that a new Regional United States Patent and Trademark Office has been opened in Texas. The new office is located in the Terminal Annex Federal Building in Dallas.
It will provide outreach services for inventors and entrepreneurs in Alabama, Arkansas, Louisiana, Mississippi, New Mexico, Oklahoma, Tennessee and Texas. Further, the office will assist the USPTO in fostering and protecting innovation.
Services will be readily accessible to all applicants and the office will serve as a hub of education and outreach to the Southwest region.
11-11-2015 (Newsletter Issue 17/15)Trademark Manual of Examining Procedure UpdatedOn October 30, 2015, the USPTO issued the October 2015 Trademark Manual of Examining Procedure (TMEP), which incorporates USPTO trademark practice and relevant case law reported prior to October 1, 2015.
The policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict.
More information on the October 2015 TMEP Highlights can be seen here
07-14-2015 (Newsletter Issue 11/15)TBMP 2015 UpdateThe Trademark Trial and Appeal Board (TTAB) announces that the 2015 update to the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is available online in a searchable version and in pdf.
To access the TTAB website, please click here
06-30-2015 (Newsletter Issue 10/15)Changes in Requirements for Collective Trademarks and Service MarksThe USPTO has issued a final rule relating to Changes in Requirements for Collective Trademarks and Service Marks, Collective Membership Marks, and Certification Marks. The rule published in the Federal Register today (80 Fed. Reg. 33,170 (June 11, 2015)), and will become effective July 11, 2015.
This rule primarily codifies current USPTO practice and provides the public more transparent and detailed guidance regarding registering and maintaining registrations for these types of marks.
It contains a new requirement for owners of certification marks filing registration maintenance documents with the USPTO to include certification standards, in the event the standards were not previously provided or have changed. This rule will help ensure that the public record contains current information about what standards are being used to certify goods under the mark.
The rule also includes some amendments that do not specifically refer to certification or collective marks because, in adding detail regarding these types of marks, some broader changes were required to create consistency, to streamline the rules, and to consolidate text and add headings for ease of use. A link to the final rule is available under 'Recent Final Rules' at http://www.uspto.gov/trademark/laws-regulations
01-28-2015 (Newsletter Issue 2/15)Changes to Trademark Rules of PracticeThe United States Patent and Trademark Office (‘‘Office’’) is revising the Trademark Rules of Practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks to benefit the Public by providing greater clarity as to certain requirements relating to
- representation before the Office
- applications for registration
- examination procedures
- amendment of applications
- publication and post publication procedures
- appeals, petitions
- post registration practice
- correspondence in trademark cases
- classification of goods and services
- procedures under the Madrid Protocol
For the most part, the rule changes are intended to codify existing practice.
This rule is effective February 17, 2015.
For more information, please check the announcement and the Rules of Practice.
01-13-2015 (Newsletter Issue 1/15)Official Fees ReducedThe USPTO has issued a notice reducing certain trademark fees. As of January 17, 2015, the filing fee for new electronic applications will be reduced by USD 50 to USD 225 per class. The filing fee for a renewal application will be reduced by USD 100 to USD 300 per class.
For further information on reduced fees and TEAS application filing options, please click here
01-13-2015 (Newsletter Issue 1/15)The Nice Classification, Tenth Edition, Version 2015 Became EffectiveAs of January 1, 2015, the Nice Classification, Tenth Edition, version 2015 (NCL 10-2015), became effective. Changes to the class headings and a link to noteworthy changes are available here.
To see a comprehensive list of all the new or changed entries, on or after January 1, 2015, please use the following search strategy in the USPTO’s ID Manual: “20150101” or search by the “Effective Date” field in IDM-NG.
11-11-2014 (Newsletter Issue 17/14)Trademark Manual of Examining Procedure UpdatedThe USPTO issued the October 2014 Update of the Trademark Manual of Examining Procedure (TMEP) on 30 October 2014. It incorporates USPTO trademark practice and relevant case law reported prior to 1 October 2014. The policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict.
To access the October 2014 TMEP Highlights please click here
For a listing of all the changes, please access here
05-16-2014 (Newsletter Issue 8/14)Reduction of Application and Renewal Fees ProposedThe USPTO has issued a notice of proposed rulemaking relating to the reduction of certain application and renewal fees (79 FR 26664 (9 May 2014)). The notice proposes a new application filing option, to be known as TEAS Reduced Fee (“TEAS RF”= Trademark Electronic Application System Reduced Fee), which will reduce the fee for applications filed using the regular TEAS application form if the applicant authorizes e-mail communications and agrees to file all responses and other documents electronically during the prosecution of the application. In addition, the notice proposes to reduce the fee for TEAS Plus applications and the fee for a TEAS application for renewal of a registration.
The full notice is available under “Proposed Rules” here. Comments must be received by 23 June 2014 to ensure consideration.
03-04-2014 (Newsletter Issue 4/14)Notice of Proposed RulemakingThe USPTO has issued a notice of proposed rulemaking relating to changes in requirements for collective trademarks and service marks, collective membership marks, and certification marks.
These proposed rules primarily codify current USPTO practice and provide the public more transparent and detailed guidance regarding registering and maintaining registrations for these types of marks. A new requirement is proposed for owners of certification marks filing registration maintenance documents with the USPTO to include certification standards, in the event the standards were not previously provided or have changed. This proposed rule will help ensure that the public record contains current information about what standards are being used to certify goods under the mark. The notice also includes some proposed amendments to rules that do not specifically refer to certification or collective marks because, in adding detail regarding these types of marks, some broader changes were required to create consistency, to streamline the rules, and to consolidate text and add headings for ease of use.
The full notice can be viewed here. Comments must be received by 21 May 2014 to ensure consideration.
02-04-2014 (Newsletter Issue 2/14)Proposed Rule to Trademark PracticeThe USPTO has issued on 23 January 2014 a notice of proposed rulemaking relating to miscellaneous changes to trademark-related rules of practice. The notice proposes a variety of minor rules changes to modernize and clarify the trademark rules, update cross references, and eliminate requirements now deemed unnecessary. Comments must be received by 23 April 2014 to ensure consideration.
To access the full notice please click here
01-21-2014 (Newsletter Issue 1/14)Nice Classification UpdateOn 1 January 2014, the Nice Classification, Tenth Edition, version 2014 (NCL 10-2014), became effective. Changes to the class headings are available here and noteworthy changes to the Nice Classification System under the Nice Agreement, Tenth Edition, version 2014 can be seen here.
12-17-2013 (Newsletter Issue 18/13)
Submissions to TM ID Suggest Mailbox
On January 1, 2014, the USPTO will publish new and updated goods and services identifications and classifications in the USPTO ID Manual to reflect the Nice Classification, Tenth Edition, version in force effective January 1, 2014. In order to implement these changes, no additional entries to the ID Manual will be uploaded after December 12, 2013. Suggestions to the TM ID Suggest mailbox that are submitted and approved between Tuesday, December 10, 2013 and Monday, January 6, 2014 will be added to the Manual and become effective on Thursday, January 9, 2014.
10-15-2013 (Newsletter Issue 15/13)USPTO Operation StatusThe United States Patent and Trademark Office (USPTO) announced that during the general government shutdown which began October 1, 2013, the office will remain open, using prior year reserve fee collections to operate as usual for approximately four weeks. They continue to assess their fee collections compared to their operating requirements to determine how long they will be able to operate in this capacity during a general government shutdown. USPTO will provide an update as more definitive information becomes available.
Should USPTO exhaust these reserve funds before the general government shutdown comes to an end, the office would shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions. Should a USPTO shutdown become necessary, details of the agency’s plan for an orderly shutdown are available on page 83 of the United States Department of Commerce’s shutdown plan. Please check here
07-16-2013 (Newsletter Issue 11/13)Electronic Official Gazette ImprovedThe United States Patent and Trademark Office has posted a beta version of a new and improved electronic Official Gazette (eOG) at http://eog-test.etc.uspto.gov/. This version is in a tagged XML format and permits tailored searching, downloads and a variety of additional features.
USPTO appreciates feedback under https://www.surveymonkey.com/s/83BN9PK.
11-06-2012 (Newsletter Issue 16/12)New Version of TMEP OnlineThe United States Patent and Trademark Office (USPTO) issued the Trademark Manual of Examining Procedure (TMEP), with an effective date of October 31, 2012. The current version of the TMEP is now identified by the month and year in which it is issued. This is a change from prior versions, which were identified using edition and revision numbers.
USPTO informed that the new online interface, which was made available for preview in September, is now the exclusive interface and search tool for the TMEP. A Highlights document that includes some of the changes set forth in the October 2012 TMEP is also available on the USPTO website.
For more information on the TMEP, please click here
09-27-2012 (Newsletter Issue 14/12)
Trademark Manual of Examining Procedure Updated
The United States Patent and Trademark Office (USPTO) announced that a new online version of the 8th edition of the Trademark Manual of Examining Procedure (TMEP) with a new search tool is available. The new version replaces the current online version when the next revision of the TMEP is issued in October 2012.
The new online version is part of a system that will make it easier to revise, update, and publish the TMEP on a more frequent basis to ensure that the latest changes to statutes, rules, procedures, and examining practices are published and available to users.
The new online version features a redesigned user interface and a search system that enables users to conduct highly focused queries using advanced search syntax including Boolean, proximity, and wild-card search capabilities. A “search history” tool allows quick access to a record of searches conducted during a search session. And a flexible interface, whereby users can make various preference changes for browsing the Table of Contents, displaying and viewing search results, and adjusting font sizes and screen setups, makes it easier to navigate across content areas, search results, and viewed documents.
09-27-2012 (Newsletter Issue 14/12)
Patent Reform Now Implemented
The United States Patent and Trademark Office (USPTO) announced that numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation on September 16, 2011.
Some of the new rules are as follows:
- Three new administrative trial provisions - inter partes review, post-grant review, and the transitional program for covered business method patents - will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent.
- The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
- The inventors oath and declaration provision that for the first time allows assignee filing of a patent application.
- The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.
09-02-2012 (Newsletter Issue 13/12)
Release version 2.0 of Trademark Status and Document Retrieval (TSDR)
The United States Patent and Trademark Office (USPTO) has released version 2.0 of Trademark Status and Document Retrieval (TSDR).
The new features in TSDR 2.0 include:
- A new “Assignment Abstract of Title Information” section that allows users to both review trademark assignment details and filter assignment data by conveyance type.
- A TSDR document viewer that allows users to simultaneously review multiple documents (e.g., the Office action and subsequent responses) in separate windows.
- A listing of the application’s notice of allowance date.
- URLs featuring file-specific identifiers (serial number, registration number, etc.) that allow for direct access to specific case data and documents. These direct links to trademark application and registration data will make TSDR 2.0 function more like “old” TARR. Entry of the URLs shown in TSDR into the address bar of an Internet browser will result in the display of the requested status data or documents.
- Hyper-links to “parent” or “child” applications of cases that have divided.
On September 8th, all existing direct (static) hyper-links displaying TDR information will be redirected to TSDR. Soon thereafter, the web pages at http://tarr.uspto.gov/ and http://tdr.uspto.gov/ will no longer be accessible.
Questions can be send to TSDR@uspto.gov.
09-02-2012 (Newsletter Issue 13/12)Public Comment Period on TM Fees Announced The United States Patent and Trademark Office (USPTO) has issued a notice seeking public comment on the possibility of adjusting trademark application fees so as to lower the fees for all applicants willing to file and communicate electronically with the USPTO.
The efficiencies achieved by trademark electronic filing and communications have put the USPTO in a position to potentially reduce the overall collection of trademark application fees. The Office wishes to adjust the fees in a way that further promotes efficiency both for users and the USPTO.
Comments are also being sought on the possibility of increasing fees on applications based on paper, currently only 1% of trademark applications, given that these applications are more costly and burdensome for the USPTO to process.
For further information, please check the notice here. Responses can be sent to TMFRNotices@uspto.gov until October 15, 2012.
09-02-2012 (Newsletter Issue 13/12)
Direct Link to Trademark Official Gazette Page
The United States Patent and Trademark Office (USPTO) is committed to continuous improvement of its online systems. Beginning September 4, 2012, trademark applicants who have authorized communications by e-mail will receive a direct link to the page on which their mark in the “Trademark Official Gazette Publication Confirmation” notice issued on the date the mark publishes in the Trademark Official Gazette (TMOG). This will allow applicants to access the page in the TMOG where the mark publishes, rather than having to download the entire TMOG.
On the publication date or shortly thereafter, applicants should review the information that appears in the TMOG for accuracy. To request correction of any USPTO data-entry error after publication, applicants need to e-mail the requested correction to TMPostPubQuery@uspto.gov.
The post-publication amendment form is needed for applicant amendments or corrections after publication (but before issuance of a Notice of Allowance or registration, including if an extension of time to oppose has been filed). The form is available at http://teasroa.uspto.gov/ppa/.
06-25-2012 (Newsletter Issue 10/12)
New Patent and TM Resource Center
The United States Patent and Trademark Office (USPTO) announced that the University of New Hampshire School of Law Library, which was designated as the Concord Patent and Trademark Resource Center (PTRC.) on January 30, 2012, is now open to serve the intellectual property (IP) needs of the public.
Currently, PTRC designated libraries can be found in 46 states, the District of Columbia and Puerto Rico. This network of more than 80 public, academic, state and special libraries assists a variety of customers including inventors, intellectual property attorneys/agents, business people, researchers, entrepreneurs, students and historians.
In addition to offering free electronic services and resources designed to support the intellectual property needs of local and state patrons, the Concord Patent and Trademark Resource Center will employ USPTO-trained librarians to provide customer assistance on the use of the agency’s patent and trademark databases and public seminars on intellectual property topics for novice and experienced users. UNH was the first law school in the U.S. to offer a patent law and prosecution program and the recently opened Franklin Pierce Center for Intellectual Property offers a growing menu of academic, professional and practice programs and activities.
06-25-2012 (Newsletter Issue 10/12)
Assessment of Accuracy of Register
The U.S. Patent and Trademark Office (PTO) implemented a pilot study program in order to assess the accuracy and integrity of the register effective June 21, 2012. The two-year pilot study applies to use-based applications as well as maintenance filings or amendments made in connection with the registered marks. As a result of this pilot study program, your use-based application or existing registration in the U.S. may be subjected to additional proofs of use inquiries and/or requirements.
The study permits the random selection of up to 250 cases per year for further scrutiny insofar as marks that are actually in use in the U.S. and so as to verify the accuracy of identifications of goods and services. The PTO may require additional proofs of use per class and/or other information and materials to support use of mark. In such instances, the applicant/registrant will have at least six months within which to comply with the request.
Source: Silverberg Goldman & Bikoff, LLP, Washington, U.S.
06-25-2012 (Newsletter Issue 10/12)New gTLD Name Applications RevealedThe Internet Corporation for Assigned Names and Numbers (ICANN) has revealed the list of applicants for new generic Top-Level Domain (gTLD) names.
A total of 1,930 new gTLD applications were received during the application period of the new generic Top-Level Domain program. The applications will now be subject to a public comment, objection period and evaluation system.
A 60-day comment period has started, allowing anyone in the world to submit comments on any application, and the evaluation panels will consider them. Objection against an application needs to be filed until January 13, 2013.
To asscess the full list of the new applications, please click here
03-06-2012 (Newsletter Issue 4/12)
The United States Patent and Trademark Office (USPTO) has issued an official warning.
One or more private companies not affiliated with the USPTO but using a name which appears to be "official" or somehow related to the USPTO or the United States Government has been directly contacting trademark owners around the world.
These companies offer to provide (for a fee) (1) legal services, (2) trademark monitoring services, (3) recording trademarks with U.S. Customs and Border Protection, and (4) to “register” the marks in the company’s own private registry. The companies may appear to be using official government documents and they request payments. They may display your trademark and its serial number or registration number, or refer to a section of the U.S. Code or other government agencies. They may appear to be warning you that your trademark registration is going to expire.
The USPTO does not send any solicitations for payment of fees. All official USPTO correspondence will be from United States Patent and Trademark Office in Alexandria, Virginia. If it comes by e-mail, it will be from the domain “uspto.gov.” It is rare for the USPTO to contact a trademark owner represented by an attorney. Please read all such correspondence very carefully. If you have any doubts about correspondence you receive concerning your trademark, please do not send any payment without first asking us whether it is legitimate.
Misleading correspondence can be forwarded to the USPTO, at TMFeedback@uspto.go, subject=solicitations. When doing so, please let the USPTO know if you thought the letter was an official communication and whether you mistakenly paid any fees.
Source: Arnstein & Lehr LLP, USA
01-23-2012 (Newsletter Issue 1/12)TM Status Document Retrieval The USPTO introduced a new system, Trademark Status and Document Retrieval (TSDR 1.0) in December 2011.
The new system TSDR 1.0 redefines the way Trademark status data and all documents will be displayed to the public. It reengineers the existing functionality that the current systems TARR and TDR had provided and adds new features, providing access to one place for viewing, printing, and downloading snapshots of the data the USPTO stores about a trademark application or registration.
For more information on the new system, please click here
12-01-2011 (Newsletter Issue 14/11)New Patent Reform Act AdoptedPresident Obama signed the America Invents Act on September 16, 2011. The introduction of the new patent system is a historical event and an adjustment to the rest of the world.
The new system creates a “first- inventor-to-file” system, replacing the current “first-to-invent” system. The new law will continue giving inventors in the U.S. a “Limited Inventor Grace Period” of 12 months with the possibility to be granted patent of an innovation which is already disclosed in the U.S.
Improvements of the Law:
The new law will consider foreign priorities, even if these are in other languages than English. This will allow filing of so-called Provisionals redundant. Also, it is introduced a Post-Grant Review within 9 months of grant.
The new system is expected to reduce the process time for applications despite that the number of applications has increased. However, this remains to be seen, especially as both the old law and the new law will exist parallel for at least 20 years. Thus, new patent applications filed prior to the adoption of the new law will to be included and handled under the old system, whilst new patent applications filed after the adoption of the new law will be encompassed and examined under the new patent system.
Source: United States Patent and Trademark Office, www.uspto.gov
GROTH & CO KB, Sweden
United States National Trademark protection is governed by a federal law in force since 1946 commonly referred to as “The Lanham Act”. It applies throughout fifty U.S. states as well as any territory under United States jurisdiction and control, including the United States Virgin Islands (VI), American Samoa (AS), Guam (GU) and Puerto Rico (PR).
The individual states in the United States also have their own trademark laws but their registration system is more for purposes of notice to third parties of local rights and such registered rights have little substantive effect except to alert third parties of potential local uses that could be considered "common law" uses. Unregistered use of a trademark, known as common law use, whithout registration, may prevent junior conflicting rights in the geographic area of use.
If a mark is deemed “merely descriptive” (which includes geographic descriptiveness and descriptiveness as a surname) it is not registrable on the Principal Register unless it is shown to have acquired secondary meaning as a trademark; however, merely descriptive marks may be eligible for registration on the Supplemental Register, provided the mark is already in use in the United States. If a mark registered on the Supplemental Register can later prove to have shown acquired distinctiveness, it may then be registered on the Principal Register. While the Supplemental Register does not have all of the advantages of registration on the Principal Register, it can be advantageous in alerting third parties to claims of trademark rights. Further, it can be cited by an Examiner against a later filed application that would be confusingly similar. Moreover it allows the use of a registration symbol in connection with the trademark.
Once registered, a “federal trademark registration” is protected throughout all U.S. states and territories. Individual U.S. states also permit registration of a trademark under state law. Such registrations provide legal rights only within the boundaries of one state and, subject to the actual use of the mark, may be preempted by rights granted by a federal registration. The United States follows the first-to use system. Trademark law is based on the principles of "common law". The USA is a member of the Madrid Protocol.
Nice classification, 11th edition, with local exceptions for various goods and services (see http://tess2.usptos.gov/netahtml/tidm.html)
Registered marks may include fanciful, arbitrary, suggestive and distinctive words, names, symbols, acronyms, letters, numbers, devices, slogans, colours, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks, holograms, motion marks and smell marks and any combination of the mentioned signs. Further, taste and touch are theoretically registrable.
Colours alone, product design, and certain other marks, including surnames, geographic indications, and any “merely descriptive” mark must demonstrate secondary meaning (acquired distinctiveness) before being permitted to register. Marks deemed to be generic terms for the subject goods or services cannot be registered on either the Primary Register or Supplemental Register.
The following trademark types are registrable: trade marks, service marks, collective marks, and certification marks.
A federal trademark application is filed at the U.S. Patent and Trademark Office (USPTO), based on use or intent to use, or on a foreign registration or application. The USPTO expresses strong preference for electronic filing with reduced fees.
Multiple-class applications are possible.
Unrepresented foreign applicants filing directly in the U.S. do not need a local agent or representative; non-U.S. addresses are acceptable. Non-U.S.-licensed lawyers may not file applications on behalf of applicants. When a request for extension of protection under the Madrid Protocol is refused by the USPTO, a U.S.-licensed attorney must be appointed to respond to actions issued by the USPTO. An application based on use or an intent to use requires a signed declaration, under oath, by the applicant or its representative. An appointment of a US representative requires a simple power of attorney.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Applications that conflict with prior trademarks will be refused but the owners of cited earlier marks are not notified of this action. Marks deemed to be “merely descriptive” in the examination can be registered if distinctiveness is proven to have been acquired by use. This can typically be shown by five years’ use in commerce in the United States, by an existing registration of the same mark for closely related goods, or by market or consumer evidence.
The processing time from first filing to registration is approximately 9-16 months if no refusals occur. The processing time can vary depending on a variety of factors including the basis for the filing. The first examination occurs approximately three months after filing. The Office may issue an Office Action. Once these are resolved, or if none are issued, the application is approved for publication and published once in the “Official Gazette”. If the application was filed based on use in United States commerce (called Section 1(a)) or on a foreign registration (called Section 44(e)) and no opposition has been filed during the 30-day opposition period, the registration will be issued. Applications based on foreign registrations (via the Paris Convention) or under the Madrid Protocol do not require a specimen of, and Affidavit attesting to use until the sixth anniversary of the date of registration. For applications filed based on intent to use in interstate commerce in the United States or international commerce with the United States, after allowance will be given six months to provide speciment of use and an Affidavit attesting to use (extendible for five additional six-month terms) before. After the statement of use is submitted and accepted, the registration is issued.
The opposition period is 30 days from the publication date of the application. The period is extendable.
Opposition against designation of IR Mark
30 days starting from the national publication date
A trademark registration is valid for a full term of 10 years from date of registration, if an Affidavit of Use and specimen of use is filed between the 5h and 6th year after the date of U.S. registration.
After 5 years of continuous use of the mark in the U.S., the registrant can elect to claim an “incontestability” status, making the registration subject to fewer legal theories that could result in cancellation. An Affidavit of Use and proof of use must be filed between the 9th and 10th year post registration for trademark renewal. Then the registration can be renewed for subsequent 10-year periods.
The grace period for renewals is 6 months from the expiration date of the trademark.
Further practical details are available in our publication on this topic here
A statement of use (or excusable non-use) is required to complete the registration process for any application not based on a foreign registration or the Madrid Protocol. For all registrations, the USPTO requires a declaration of use (or excusable non-use) be filed between the 5th and 6th years after registration and again between the 9th and 10th year, 19th and 20th, year etc, calculated from the registration date. The declaration of use must be accompanied with current evidence of use in order to maintain the registration. If these documents are not filed and found acceptable, the USPTO will cancel the registration. Starting March 21, 2017, the USPTO will randomly select about 10% registrations due for maintenance, and for each of those selected, issue a post-registration Office Action requiring additional information and specimens in each class for at least two other goods/services selected by the USPTO from those listed in the Declaration. If the required use evidence cannot be provided, the registration may be subject to further scrutiny and the USPTO may require deletion of some of the goods. Use is defined under the Lanham Act as use that can be regulated by the United States Congress. Use of a mark outside of the United States is not relevant under the Lanham Act.
Third parties can attack any registration for non-use and abandonment at any time. If the mark has not been used for a period of three years, then the law presumes that it has been abandoned and the registrant has the burden of proving the contrary. Before three years of non-use have elapsed, the third party has the burden of showing that the mark has been abandoned with no intention to re-start use in commerce. If use of a mark ceases in the U.S. but then resumes before an intervening user begins use of a similar mark, then the rights in the original mark remain valid unless a third party can demonstrate abandonment (lack of intention to restart use) during the interim.
Further practical details are available in our publication on this topic here
The official fee for filing a trademark application in paper is USD 600 per class.
The official fee is USD 400 per class for a trademark application filed electronically using the Trademark Electronic Application System (TEAS Regular). The filing fee is USD 275 per class when using TEAS Reduced Fee (TEAS RF) and USD 225 per class when using TEAS Plus. This filing option applies to simplified applications using predetermined goods and services.
(Source for exchange-rates: bankenverband.de
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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here
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We thank the following law firms for their assistance in updating the information provided.
Further practical details are available in our publication on this topic here
02-23-2017Ladas & Parry LLP
, New York, NY, 10018, USA
12-17-2015Ladas & Parry LLP
, New York, NY, 10018, USA
Wolf Greenfield & Sacks P.C., Boston, MA, USA
Novak Druce Connolly Bove + Quigg LLP, Washington, DC, USA
Kirton McConkie, Salt Lake City, UT 84111, USA
07-23-2013Arrufat Garcia PLLC
, New York, NY, 10036, USA
Wolf Greenfield & Sacks P.C., Boston, MA, USA
Law Office of Roberto Ledesma, New York, USA