Why Get Help On Filing Your Statement of Use to the USPTO?
Frequently Asked Questions About Statements of Use (SOU)
What does ‘Allowed for Registration -
What does ‘Approved For Pub -
What does ‘Notice of publication’ mean? This means the final review prior to publication has been completed and the application will be published for opposition (but this is not the publication date).
What does ‘Published for opposition’ mean? Under U.S. Trademark law, 15 U.S.C. §1062(a), a trademark or service mark must be published for opposition before it can be registered on the Principal Register. This Publication and [short] time period (30 days) give someone who may be harmed by a registration of a federal trademark a way to oppose (or object to) the registration. Not just anyone can object/oppose, only any person or entity who believes that he/she/it would be damaged by the registration of the mark and can prove both Standing and Grounds.
What does ‘New Application Entered In Tram’ mean? This means that the USPTO has accepted the new application and has put it into TRAM, the USPTO database. What is TRAM? The Trademark Reporting and Monitoring (“TRAM”) System. For applications filed through TEAS, the data provided by the applicant is loaded directly into the USPTO’s automated TRAM System. For applications filed on paper, the application documents are scanned into the Trademark Image Capture and Retrieval System (“TICRS”), and the data is manually entered into TRAM. TRAM is used by USPTO employees to obtain information about the location and status, prosecution history, ownership, and correspondence address for applications and registrations. This information is available to the public through the Trademark Status and Document Retrieval System (“TSDR”) database, available on the USPTO’s website at http://tsdr.uspto.gov.
What does ‘Allowed for Registration -
What is a ‘NOA Mailed -
What does ‘Statement Of Use Processing Complete’ mean? This means that changes have been made to the trademark record to show that the SOU has been received but not yet approved.
Help From the USPTO
The USPTO offers new (22Feb2013) general purpose advice from http://www.uspto.gov/trademarks/law/specimen.jsp:
"Specimen Refusal" and How to Overcome This Refusal
What is a "Specimen Refusal"?
The USPTO issues a specimen refusal when your sample of how you use your applied-
How Can I Overcome This Refusal?
Below are the two possible response options for overcoming a specimen refusal.
(1) Submitting a different specimen (a verified “substitute” specimen) that was in use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use; or prior to the expiration of the deadline for filing a statement of use) and that shows proper trademark use of the same mark for each international class identified in the application, notice of allowance, or allegation of use.
NOTE: You may have to amend the dates of use if the substitute specimen was in use in commerce on different dates than those in the application or amendment to allege use/statement of use.
Examples of the type of specimens normally acceptable for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages are acceptable specimens for goods when they include a picture or textual description of the goods closely associated with the mark and sufficient information to order those goods (e.g., a visible weblink to order the goods, an offer to accept orders via phone or e-
For more information on substitute specimens, see 37 C.F.R. §§2.59(a), 2.71(c); TMEP §§904.05,§904.03 et seq.
Federal Registration of Trademarks
Why is registering a smart choice? To capture goodwill into a protectable asset and to keep newcomers to the market from using your name and jeopardizing your success. Federal Registration of a Trademark with the USPTO expands existing trade rights or common law rights in a name, logo, symbol, trade dress or other type of trademark or service mark so that a trademark owner can capitalize on the goodwill and customer recognition associated with the mark. A federal registration on the Principal Register can be used to stop others from taking your name or names confusingly similar to it to sell similar products and can be used to stop counterfeiting imports or state or local counterfeiters.
About 50% of trademark applications never register and many are because the newcomer’s or junior’s trademarks are too similar to marks that are already registered (prior users or seniors). For someone with a federal registration, the USPTO stops new similar junior applications by issuing Likelihood of Confusion refusals (the most common refusal) without additional cost to the senior user every time they do it. A senior user without a registered mark has to try to stop all these newcomers themselves at their own cost each time. If the USPTO trademark examiner uses your registered trademark to stop even just one newcomer from registering a trademark very similar to yours, your investment may have already paid off.
SUPERCHARGING YOUR RIGHTS: The list below compares the Principal Register and Supplemental Register and Common Law Rights. Principal Registration of a trademark gives the most rights because it takes the basics of trademark rights from common law and boosts it by adding features. (All the YES rows are the extra features.)
Common law rights are based on prior use, distinctiveness, ownership, using a trademark as a trademark, and other principles that have helped trademark owners to protect their trademarks in the geographic areas that they trade in. Federal registration of trademarks on the Principal Register takes all these common law rights and adds a few more benefits that were added by the statute (the Lanham Act), called statutory rights. Under common law, a trademark is only protected in the geographical area where sales or marketing have actually occurred (“in trade” and “in commerce”). Federal registration spreads rights throughout the U.S. even if a registrant has only sold in a small geographical area.
EVEN MORE BOOSTING: Third parties like Google, Yahoo, Bing, Twitter, Facebook, and others boost registration rights even further by offering their own protection to trademark owners that can clearly prove their rights to a mark and a Principal Registration works best.
The table below lists the rights that the federal government gives you if your federal trademark application matures into a registration (see the YES rows) but there are more rights that third parties grant to federal trademark registrants. Third parties such as Google, Yahoo, Microsoft, Bing, Twitter, Facebook and others will help trademark owners to protect their rights. For examples of increased rights provided by third parties to trademark owners, see GOOGLE ADSENSE TRADEMARK COMPLAINT FORM, MSN TRADEMARK SUPPORT, MICROSOFT ADVERTISING GUIDELINES, TWITTER TRADEMARK POLICY.
PROTECTING YOURSELF MEANS GETTING THE RIGHT HELP: At the end of the day, a trademark owner is responsible for protecting their own rights. A owner must claim and enforce their rights in order to receive the benefits. Online medias, advertisers, social networks and others will help you to protect your rights if you can prove those rights clearly to them with a federal registration of a trademark and only if you take the initiative to do so.
Not Just Patents® Legal Services is the right help. Our success rate with registering trademarks is very good and our costs are not high which can turn out to be a great investment. Our success rate with answering office actions is also very good but unfortunately, many refusals given to junior users for Likelihood of Confusion stick because the junior user really is jeopardizing the success of someone else who used the trademark first and registered their trademark first. But not always. Sometimes the one who registered first was not the first to use the trademark and enforcing rights requires going further and opposing or cancelling the trademark of the owner who registered first but didn’t use first. We can help with this too.
BUT WHAT IF THE SERVICE YOU BOUGHT DIDN’T DO A GOOD JOB ON YOUR TRADEMARK REGISTRATION? A bad application or no registration or even Supplemental Registration means less rights and rights that are harder to enforce. But more expensive doesn’t necessary mean more rights, a Not Just Patents ® Federal Registration of a Trademark is NOT expensive. A lawyer that lists trademarks as one of many, many services that they provide may be just as bad as a service that doesn’t use any lawyers/experts at all and disclaims that their service does not replace competent advice. Call us in the U.S. at 1-
This web site is supposed to be enough information to let you know that you would rather succeed than not and that a trademark can be an incredible tool and investment. But this web site, or any web site short of USPTO.gov, is not enough information to make up for knowing all the rules and exceptions in the USPTO trademark guide, the TRADEMARK MANUAL of EXAMINING PROCEDURE (TMEP) (over 1500 pages), and the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) (over 1300 pages). Knowing these rules is really important; being able to apply these rules to facts is even better.
Federal USPTO Trademark Registration
There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:
A few of these advantages apply for marks on the Supplemental Register as well. See Comparison of Principal Register with Supplemental Register for more information.
Not Just Patents ® Legal Services provides a very economical package for other Trademark Registration services. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark. We can provide each step individually or as a trademark registration package. A trademark registration (or trademark application) package includes: a ‘right to register’ step (which includes a distinctiveness analysis step and a function as a mark analysis), a trademark search (federal, state and common law search) and conflict analysis step, a goods and services identification step, a specimen review step, a state registration step, a federal registration step, and a federal Office Action response step. Our fixed price per classification for the whole package may be less than what you might pay to another attorney or law firm to answer a USPTO Office Action Refusal at an hourly rate. Call us at (651) 500-
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