TRADEMARK REGISTRATION PROCESS
Premise-Trademark rights are established based upon usage NOT registration. This is important to understand that you do not select a brand, name or mark and then own the Mark. It’s the opposite-you must check to see if your name or brand is available before spending money by marketing the name and building its value. You search first to see if you are the exclusive owner of the mark and so you do not infringe upon someone else’s mark.
The USPTO has a database of all trademarks that were registered, applied for, abandoned, not renewed or the like. This database is only a portion of the possible Trademarks that exist. That’s why you need to expand your search to see if the name or brand is available for you.
Trademarks cannot be confusingly similar to other marks. This means that phonetics is valuable-meaning that a homonym may prevent your mark that’s spelled differently. Marks cannot be generic to be a trademark. Marks cannot be descriptive of the product or service offered. This means if your mark is copy it cannot be a copier. Most people do not understand this concept. Most people will name their trademark whatever service or product they offer. This is why Xerox used to have a slogan “You can’t Xerox a Xerox”. If you could xerox a xerox the trademark would be lost.Asprin and Elevator used to be trademarks but lost their status as they became part of the language.
TESS SEARCH WITH THE USPTO
There are a few ways to search at the USPTO. The USPTO does not have a simple way to search phonetically.
An exact match is easy to search. You select Word and/or design Mark Search (Free Form). This is best when the trademark is one word. If the mark is more than one word, then use the Word and/or design Mark Search (Structured). The structured search allows you to search more than one word and allows you to search that word by Mark, owner, attorney or many other options.
See Appendix 1 for search and Appendix 2 for Structured searches. Once you run the search you need to know how to interpret the results. Is the mark confusingly similar to another mark? This is the first analysis.
ELECTRONIC TRADEMARK APPLICATION SYSTEM (“ETEAS”)
You have two (2) main options when applying for a trademark. You can file the mark as “Actual Use” meaning you are claiming you are currently using the mark in commerce or business. You can file the mark as “Intent to use” meaning you are claiming you have a bona fide intent to use the mark in the near future. There are other options related to foreign trademarks or prior trademarks but that’s beyond the scope of this course.
You can select a TEAS standard or TEAS PLUS application. The difference is the goods and services in TEAS PLUS are limited to specific goods and services. The filing fee for the TEAS PLUS IS $350 per class. The TEAS STANDARD allows you to be more specific and customized for your goods and services.
UNDERSTANDING THE APPLICATION
Currently you must file your trademark application online through the United States Patent and Trademark Office (www.uspto.gov). Mail in service is no longer available.
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