USA (US)
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
Source: www.uspto.gov 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.
Source: www.uspto.gov
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.
Source: www.uspto.gov
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.
Source: www.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.
Source: www.uspto.gov 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/.
Source: www.uspto.gov
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.
Source: www.uspto.gov
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
Source: www.icann.org 03-06-2012 (Newsletter Issue 4/12)
Official Warning
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 to all fifty U.S. States as well as any territory under United States jurisdiction and control, including the American Virgin Islands (VI), in American Samoa (AS), Guam (GU) and Puerto Rico (PR).
The USA is a member of the Madrid Protocol. Trademark protection is obtained by registration.
An unregistered trademark may be protected due to prior use in United States commerce (common law).
If a mark is deemed descriptive, but capable of becoming distinctive, it may be registrable in the Supplemental Register. The Supplemental Register does not have all of the advantages of registration on the Principal Register. It can, however, be advantageous in seeking foreign rights, can be cited by an Examiner against a later filed application that would be confusingly similar, and allows the use of a registration symbol in connection with the trademark.
“Federal trademark registrations” are protected throughout the country. A separate system of trademark registration extends only to the particular state in which the registration issues and is governed wholly by the law of that state.
The United States follow the first-to use system. Trademark law is based on the principles of “common law”.
Nice classification, 10th edition
Registered marks may include fanciful, arbitrary, suggestive and distinctive or at least non-generic 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 and olfactory marks and any combination of the mentioned signs.
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.
Multiple-class applications are possible.
Unrepresented foreign applicants filing directly to the U.S. do not need a local agent or representative. However, when an application is extended to the U.S. via foreign counsel, then a U.S. domestic representative must be appointed to respond to any actions issued by the USPTO.
A simple power of attorney is sufficient.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration is approx. 16 months. The first office action is issued after approx. 5 months. Before registration, the trademark application is once published in the weekly “Official Gazette”. If the application is based on use in United States commerce or on a foreign registration and no opposition has been filed during the given period, the registration will be issued. Applications with an alleged intent to use in United States commerce will be given six months to prove use (extendible for five additional six month terms) before the registration is issued.
National:
The opposition period is 30 days from the publication date of the application or within limited extensions previously obtained.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
30 days
A trademark registration is valid for 10 years from date of registration, if an Affidavit of Use is filed between the fifth and sixth year of registration.
An “incontestability” status may have been acquired after 5 years of continuous use. The registration is renewable for periods of 10 years.
If the trademark has not been used for a continuous period of 3 years, it may be subject to cancellation proceedings if an abandonment claim is brought demonstrating 3 years continuous non-use with intent not to resume use. Non-use for three consecutive years is considered prima facie evidence of abandonment. Subsequent use of the trademark can restore protection as long as there has not been an intervening adopter.
The official fee is USD 325.00 per class for an application filed electronically using the Trademark Electronic Application System (TEAS).
Trademark Licence Agreeement
Licensing a trademark requires a contract, which may be oral, which grants defined rights, and obligations of the parties. A written contract is strongly recommended. It is permitted to license the use of unregistered trademarks. The sale of a registered trademark does not automatically terminate the licence. There are statutory provisions prescribing the terms of licensing: Quality control is a required term in all U.S. trademark licensing agreements. Controlling and monitoring the quality of the licensed products ensures that the goodwill (“reputation”) is maintained for those products or services. Insufficient quality control over the products or services, also called “naked licensing,” will result in abandonment of the mark.
Recordal
There are provisions in law for the recordal of a licensee with the Trademark Office. The recordal of a licence is voluntary. There is usually no substantial review of the information recorded and there is no time frame for a recordal. A licence agreement should be within a contract which defines the rights, licence, and obligations of the parties. The agent should address issues such as allowed trademark use, the trademark filings, the right to sub-license and other typical provisions. Only quality control is a necessary provision.
Effectiveness
The agreement becomes effective and enforceable against third parties depending on the terms of the licence agreement. Issues such as reputation and enforcement should be addressed, including commencement of these rights. The licence is not required to be published.
Infringement Proceedings
There is no evidentiary presumption that use by a recorded user is permitted use. The licensee may join the proprietor in infringement proceedings. It depends upon the terms of the licence agreement, whether the licensee can call upon the trademark owner to institute infringement proceedings and whether the licensee is entitled to institute proceedings on his own or has to cite the proprietor as co-defendant in any such proceedings
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
|
|
| - Federal File |
290,00 € |
80,00 € |
| - State Files |
210,00 € |
70,00 € |
| - Common Law |
340,00 € |
110,00 € |
| Word Mark Search (identical) |
|
|
| - Federal File |
140,00 € |
30,00 € |
| - State Files |
140,00 € |
30,00 € |
| Device Mark Search (availability) |
|
|
| - Federal File |
490,00 € |
330,00 € |
| Trademark Owner Search |
190,00 € |
|
| Company Name Search |
|
|
| - All State Files |
490,00 € |
|
| Domain Name Search (extended) |
36,00 € |
|
| i-Search (word mark availability + legal opinion) |
|
|
| - Federal File, State Files plus Common Law |
1.195,00 € |
325,00 € |
The Prices above are S.M.D. Markeur Search Fees
American Samoa (AS)A national United States (US) registration automatically covers American Samoa. Companies doing business in American Samoa can protect their trademarks by obtaining Federal trademark registrations, since the US Trademark Act extends protection of registered trademarks to all territories which are under the jurisdiction and control of the United States of America. A Federal trademark registration can be obtained on the basis of use of a mark within American Samoa or use of a mark in commerce between the US and American Samoa. A Federal trademark registration will protect a mark in American Samoa although injunctive relief against an infringer will not be available unless the plaintiff’s mark is in use in American Samoa or has a reputation there. An International Registration designating the United States automatically covers American Samoa.
Guam (GU)International Registrations designating the United States (US) automatically cover Guam. No further action is required. Companies doing business in Guam can protect their trademarks by obtaining Federal trademark registrations since the US Trademark Act extends protection of registered trademarks to all territories which are under the jurisdiction and control of the United States of America. A Federal trademark registration can be obtained on the basis of use of a mark within Guam or use of a mark in commerce between the US and Guam. A Federal trademark registration will protect a mark in Guam although injunctive relief against an infringer will not be available unless the plaintiff’s mark is in use in Guam or has a reputation there.
Northern Marianas (MP)International Registrations designating the United States (US) automatically cover the Northern Marianas. No further action is required. Companies doing business in Northern Marianas can protect their trademarks by obtaining Federal trademark registrations since the US Trademark Act extends protection of registered trademarks to all territories which are under the jurisdiction and control of the United States of America. A Federal trademark registration can be obtained on the basis of use of a mark within the Northern Marianas or use of a mark in commerce between the US and the Northern Marianas. A Federal trademark registration will protect a mark in the Northern Marianas although injunctive relief against an infringer will not be available unless the plaintiff’s mark is in use in the Northern Marianas or has a reputation there.
Puerto Rico (PR)A federal United States (US) trademark registration extends to Puerto Rico, which is a Commonwealth of the United States. The relationship under trademark law is similar to the states of the country. A trademark registration in Puerto Rico requires use in that territory. Although a national US registration extends to Puerto Rico, Puerto Rico also has its own independent trademark law. A Federal trademark registration will protect a mark in Puerto Rico, and injunctive relief against an infringer will be available even if the plaintiff’s mark is not in use in Puerto Rico, but elsewhere in the United States. An International Registration designating the United States automatically covers Puerto Rico.
United States Minor Outlying Islands (UM)International Registrations designating the United States (US) automatically cover the United States Minor Outlying Islands. No further action is required. Companies doing business in United States Minor Outlying Islands can protect their trademarks by obtaining Federal trademark registrations, since the US Trademark Act extends protection of registered trademarks to all territories which are under the jurisdiction and control of the United States of America. A Federal trademark registration can be obtained on the basis of use of a mark within the United States Minor Outlying Islands or use of a mark in commerce between the US and the United States Minor Outlying Islands. A Federal trademark registration will protect a mark in the United States Minor Outlying Islands although injunctive relief against an infringer will not be available unless the plaintiff’s mark is in use in United States Minor Outlying Islands or has a reputation there.
United States Virgin Islands (VI)International Registrations designating the United States (US) automatically cover the United States Virgin Islands. No further action is required. Companies doing business in United States Virgin Islands can protect their trademarks by obtaining Federal trademark registrations, since the US Trademark Act extends protection of registered trademarks to all territories which are under the jurisdiction and control of the United States of America. A Federal trademark registration can be obtained on the basis of use of a mark within United States Virgin Islands or use of a mark in commerce between the US and the United States Virgin Islands. A Federal trademark registration will protect a mark in the Unites States Virgin Islands although injunctive relief against an infringer will not be available unless the plaintiff’s mark is in use in the United States Virgin Islands or has a reputation there.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey
12-15-2011
Wolf Greenfield & Sacks, P.C., Boston, MA, USA
08-02-2011
Law Office of Roberto Ledesma, New York, USA
Dependent Territories
08-02-2011
Law Office of Roberto Ledesma, New York, USA
Wolf Greenfield & Sacks, P.C., Boston, MA, USA
Licensing
12-15-2011
Wolf Greenfield & Sacks, P.C., Boston, MA, USA