So if tm office is trying to make a determination is going  to be registrable, they go through the 5 things below and  use them to evaluate the situation.

1) Strength of the mark

2) Similarity of Marks

3) Similarity of goods

4) Similarity of channels of trade

5) Degree of care exercised by the consumer (is it expensive and they likelihood of care would be low or is it cheap and they level of care is low)

6)  ACTUAL Confusion NOT required

7) Intent of 2nd adapter NOT relevant

Both six and 7 are helpful in determining  if it’s confusing but it’s not required. If you have actual confusion there is a good indication of a likelihood of confusion.

If it’s obvious that the junior party is in bad faith, that can also help in deciding to not allow the registration.

Goodwill- Good will is the consumer loyalty or customer loyalty. It is the value or the reason why a trademark has market place valuation. This is because there are people who will buy a product simply because it has a certain trademark on it. The good will is the value attached to it. It’s the repurchase power of a trademark.

A trade name is a company name and it is not a trademark.

The trade name can be used as a trademark.

So when Sony is being used to refer to the company, it is not being in a trademark capacity. It only becomes a tm when it is used to describe the goods and services it sales, it is a trademark.

the look and feel of the mark)- is NOT registrable. Certain aspects of trade dress might be registrable (i.e. colors).

You can sue for infringement of trade dress but you could not register, for example, the layout of a restaurant.

The layout of a restaurant can function as trade dress and could be sued for infringement.

Can start with the USPTO web-site (TESS) and search to see if there are any similar tms?

When you are trying to sale goods and services, we should try and brainstorm different  kinds  services and we would pick out a bunch of different tm s that we like.

And then we would go through the process of seeing if the mark is registerable.

When doing and analysis , run the list  of what is registerable and what is not registerable (is it immoral, is it functional, etc.

Once we complete the process of tm selection and searching

We can render an opinion on the registrability of a trademark. Paras can’t render the ultimate conclusion but they can render the analysis and possibly the conclusion but the atty would need to sign off on the opinion.

What is the tradmark registration process called?

How does it start and how does it end?

Trademark Prosecution

It starts with filing an application and finishing when you obtain a registration

Takes about 9 months for examination and then you have 30 days after publication for and should register shortly thereafter.

1) the applicant’s name (and individual, a company, etc.) – we must identify some party that has the rights once the tm issues.

2) Identify the goods or services that it is being applied to. (helps to determine if something is confusingly similar)- we must  also pick a class that we are registering in. Provide a detailed description of the goods and services being used.

3) Fee (per class) (currently $325 per class).

4) The basis of the registration. a)  Use-1a, b) ITU 1b c) Foreign appln  44d D) Foreign registration 44 e

5) Identify the mark- what is the mark literally (McDonalds, Campbells, etc.)

6) specimen of use. (or a drawing of the mark if there is no use and it’s a design/stylized mark).

7) Identify which of the register we are seeking to have our tm on. If it’s going to be on the principal, it either needs to be inherently distinctive or that we have acquired secondary meaning.. Otherwise we can apply for supplemental register.

Office  Action can occur after filing.

An Office Action describes an official refusal to allow the trademark is registerable.

What can you do in response to an Office Action?

How long do you have to take action?

When we get an OA we can:

1) Respond

2) we can abandon application (will happen automatically if you fail to respond within six months from the date of the action).

3) Appeal (and we can appeal to the TTAB) under certain circumstances.

Betsy's comments about this in green:

(N.B. The way this was worded in class was a bit confusing. You can amend the application to do certain things, like narrow the specification of goods (i.e. go from clothing to jeans) delete a class or goods/services, switch classes if you filed in the wrong class  (I.e. file class 18 (the calss reserved bags) for jeans, you could switch to the correct class (25 for clothing)).

Basically you can amend your application to make it more specific. You cannot amend it to make it more general. If this confuses you just ignore this.)

However as he was saying in class, you CANNOT amend the actual trademark you are filing for b/c the examiner has only searched for the mark exactly as it was applied for.

  In certain circumstances you can amend it within a really narrow focus (i.e. you maybe might be able to pluralize of singularize the mark or mess with publication).

If you want to change it significantly, you can start the process over with an entirely new mark.

What can you do in an Office Action Response?

How long do you have to repsond?

What happens if you fail to respond in the time period specified?

What happens if you are successful in your office action response?

In your OAR, you can start making arguments that the mark is not confusingly similar to any marks cited against it and then you use the criteria for confusingly similar marks to show that your mark overcome the test. If do it successfully, you can  get the examiner to agree and then you get your registration (if it passes to publication).

You get six months to respond to the Office action. If you fail to respond, the mark will be deemed abandoned.

Under the lanham act, we get 10 years for registration. The registration will expire 10 years after the date of registration. Once registration occurs, must file a Statement of Continued Use (Sec 8 affidavit) at the five-year mark  that you submit a Statement of Continued Use. If you don’t file it, then your registration is cancelled because not filing means that the  registration is cancelled.

At fie years you can also file your Incontestability (Sec 15 Affidavit). This must be filed any time after five years from the registration. You can combine these to file them at  Secs. 8 and 15  Affidavits at the same time.

When filing Sec. 8 affidavit, you must provide a specimen of use to prove that you are using the tm.

Trademarks change over time. So if you have Standard Oil but you’re using SO so then you would probably abandon Standard Oil and then also apply for SO. Once you change a mark, you should file new appln and not file the application.

It is a special status that reduces the ability for someone to challenge the registration and reduces the grounds to challenge the trademark to a just a few. They may still challenge it on:

1)  that the mark is Generic (genericide)

2) Challenge that the mark has been abandoned

3) Fraud in obtaining the tm

4) that there was some misrepresentation for the goods or services.

If a mark has been declared  incontestable these are the only four grounds  that it can be challenged.

Filing the section 15 means your tm is stronger and there is no way challenge it on the basis of being confusingly similar or for descriptiveness. Those are the two main challenges that are removed..

Section 9- renewal request.

Sections 8 (must again prove use and submit a specimen) and 9 are due in between the ninth and the tenth years. 

If you apply for section 8 and 9 then you cannot have changed the tm and when  you request renewal, some fees are going to be due and it’s the same as the application fee per class.

So you have two sections 8, one nine and one 15 to make if through the post registration process.

(Anything I've highlighted in Yellow is stuff I know from work and just added as incidential detail. Not stuff we went over in class).

1) By law if there is 3 years of continuous non-use then the mark is abandoned.

2) You may always expressly abandon a mark (often happens as part of a settlement agreement)

3) If you fail to submit a required form or respond to an Office Action communication (i.e. fail to file a Statement of Use after a Notice of Allowance)

If you have an itu appln, and you pass publication, you get the NOA (Notice of Allowance) and then you get three years to prove use. You can get eots in six-month increments (up to five).