Trademarks | Tucker Law

The USPTO’s Process for a Timely Amendment to Allege Use
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The USPTO’s Process for a Timely Amendment to Allege Use

Trademarks

The USPTO’s Process for a Timely Amendment to Allege Use

If you've filed an amendment to allege use for your trademark application, but the mark was published for opposition before the amendment was examined, you may be wondering what steps the USPTO will take next. According to the Trademark Manual of Examining Procedure (TMEP) §1104.04, the examining attorney will contact you (or your trademark attorney) by telephone or email and give you the option to withdraw the amendment. If you decide to withdraw the amendment, the examining attorney will advise you that a notice of allowance will be issued if the application is not opposed, and you'll need to file a statement of use or request an extension of time to file a statement of use within six months of the notice. You also have the option of requesting that the USPTO treat the amendment to allege use as a statement of use, which must be done within six months of the notice of allowance using the TEAS Post-Publication Amendment form. If you don't file a statement of use, request an extension, or request to treat the amendment as a statement of use within six months of the notice of allowance, your application will be abandoned. On the other hand, if you elect not to withdraw the amendment to allege use, the examining attorney will take one of two actions: If no notice of allowance has been issued, the examining attorney will withdraw the application from publication and examine the amendment to allege use. If a notice of allowance has already been issued, the ITU/Divisional Unit will cancel the notice and the examining attorney will examine the amendment to allege use. If the amendment to allege use can be approved after examination, the mark must [...]

Understanding the “Blackout Period” in USPTO Trademark Prosecution
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Understanding the “Blackout Period” in USPTO Trademark Prosecution

Trademarks

Understanding the “Blackout Period” in USPTO Trademark Prosecution

When it comes to obtaining a trademark registration from the United States Patent and Trademark Office (USPTO), there are certain rules and regulations that must be followed that are best to discuss with an experienced trademark attorney. One of these rules is known as the "blackout period," which is a specific time frame during which an applicant is not permitted to file an amendment to allege use or a statement of use. Under 37 C.F.R. §2.76(a)(1), the USPTO will not review an amendment to allege use that is filed after the date that the application is approved for publication by the examining attorney. Similarly, under 37 C.F.R. §2.88(a)(1), the USPTO will not review a statement of use that is filed before the date of issuance of the notice of allowance. These two rules combine to create the blackout period, which is a time when neither an amendment to allege use nor a statement of use may be filed. If an applicant attempts to file an amendment to allege use or statement of use during the blackout period using the Trademark Electronic Application System (TEAS), they will receive an error message indicating that the application is in the blackout period and advising them to wait until the status of the application changes to "notice of allowance issued" before filing the form. The applicant can monitor the status of the application on the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at https://tsdr.uspto.gov/. If an applicant submits a permitted paper-filed amendment to allege use during the blackout period, the USPTO will notify the applicant that the amendment is untimely and will not be reviewed, and any filing fee will be refunded. Intent-to-use applicants who [...]

Understanding the Definition of ‘Use in Commerce’ in Trademark Law
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Understanding the Definition of ‘Use in Commerce’ in Trademark Law

Trademarks

Understanding the Definition of ‘Use in Commerce’ in Trademark Law

Trademark law can be complex and confusing, especially when it comes to the requirements for obtaining and maintaining a trademark. One important concept in trademark law is the requirement for "use in commerce," which refers to the actual use of a mark in the sale or transportation of goods or services. The definition of "use in commerce" was amended by the Trademark Law Revision Act of 1988 (TLRA) to include the phrase "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." This amendment was primarily intended to eliminate the practice of "token use," or using a mark solely to reserve rights in that mark without any real intent to use it in business. The TLRA's legislative history makes it clear that the meaning of "use in the ordinary course of trade" will vary from one industry to another. For example, an industry that sells expensive or seasonal products may make infrequent sales, but these sales would still be considered "in the ordinary course of trade." Similarly, a pharmaceutical company that markets a rare disease treatment may make few sales, but these sales would still be considered "in the ordinary course of trade" because they are part of the company's business. There are several factors to consider when determining whether a mark is being used in the "ordinary course of trade." These include the amount of use, the nature or quality of the transaction, and what is typical use within a particular industry. For example, in the case of Automedx Inc. v. Artivent Corp., the sale of demonstration models of portable medical ventilators to the military was found to be a [...]

Understanding the Requirements for Use in Commerce in a Trademark or Service Mark Application
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Understanding the Requirements for Use in Commerce in a Trademark or Service Mark Application

Trademarks

Understanding the Requirements for Use in Commerce in a Trademark or Service Mark Application

If you are considering applying for a trademark or service mark, it is important to understand the requirements for use in commerce. According to the Trademark Act (15 U.S.C. §1051(a)), in order for a mark to be eligible for registration, it must be in use in commerce on or in connection with all the goods and services listed in the application as of the application filing date. This requirement is outlined in 37 C.F.R. §§2.2(k)(1) and 2.34(a)(1)(i). In order to satisfy this requirement, the application must include a statement that the mark is in use in commerce, verified in an affidavit or declaration under 37 C.F.R. §2.20. This verified statement must be filed with the original application, or the application must allege that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date (37 C.F.R. §2.34(a)(1)(i)). It is important to note that the requirements for verification can vary depending on the circumstances of the application. For more information on these requirements, see TMEP §§804-804.05. Overall, the use in commerce requirement is a critical aspect of the trademark or service mark application process. It is essential to ensure that your mark meets these requirements in order to move forward with your application. Contact a trademark attorney at Tucker Law to discuss the use of your trademark in commerce.

Navigating the Complexities of Trademark Seniority: Exploring the Rights and Responsibilities of Senior and Junior Users
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Navigating the Complexities of Trademark Seniority: Exploring the Rights and Responsibilities of Senior and Junior Users

Trademarks

Navigating the Complexities of Trademark Seniority: Exploring the Rights and Responsibilities of Senior and Junior Users

Trademarks are so important to a business. Trademarks identify the source of goods or services and distinguish them from others offering products in the market. As such, they can be valuable business asset, and it's important to understand the different rights and responsibilities that come with using a trademark, particularly when it comes to the concept of seniority. In our trademark world, senior users are often the ones who have been using the marks for a longer period of time. Thus, while a junior user is a newer entrant to the market, a senior user is the established user of the mark. These terms are relevant because they can determine who has priority in using the mark and in certain situations, who has the right to prevent others from using it. For senior users, the benefits of being the first to use a mark can be significant. They are often able to prevent junior users from using the same or a similar mark, even if the junior user was unaware of the senior user's prior use. This is known as "priority of use." Priority of use is based on the principle that the first person to use a mark in commerce has the right to continue using it, but so long as they continue to do so in a way that does not deceive consumers. However, senior users also have certain responsibilities when discussing trademark ownership rights. When it comes to maintaining their rights in the mark, senior users must continue to use the mark in a way that does not mislead consumers. They also must take steps to protect the mark from becoming diluted or generic. When a senior user fails to do so, [...]