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TRADEMARK WORKSHOP. FILING APPLICATIONS IN THE UNITED STATES FILING APPLICATIONS INTERNATIONALLY UNDER THE MADRID PROTOCOL BEFORE YOU FILE: SEARCHING AFTER YOU FILE: PROSECUTION PITFALLS. MERYL HERSHKOWITZ MANAGING ATTORNEY TRADEMARK LAW OFFICE 116 TRICIA THOMPKINS SENIOR ATTORNEY

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Trademark workshop
TRADEMARK WORKSHOP

  • FILING APPLICATIONS IN THE UNITED STATES

  • FILING APPLICATIONS INTERNATIONALLY UNDER THE MADRID PROTOCOL

  • BEFORE YOU FILE: SEARCHING

  • AFTER YOU FILE: PROSECUTION PITFALLS

MERYL HERSHKOWITZ

MANAGING ATTORNEY

TRADEMARK LAW OFFICE 116

TRICIA THOMPKINS

SENIOR ATTORNEY

TRADEMARK LAW OFFICE 101


Why file for a trademark registration in the uspto
Why File for a Trademark Registration in the USPTO?

  • Constructive notice nationwide of TM owner's claim.

  • Evidence of ownership of the trademark.

  • Jurisdiction of the federal courts may be invoked.

  • Registration can be used as a basis for obtaining registration in foreign countries.

  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.


Three ways to file your application
Three Ways to File your Application

  • On PAPER

  • On line using TEAS

  • On line using TEAS PLUS


Filing on paper
Filing on Paper

Fee is $375 per international class

  • To order a printed form, call PTO's automated telephone line at (800) 786-9199

  • Mail to:

    • Commissioner for TrademarksP.O. Box 1451Alexandria, VA 22313-1451

    • You may NOT submit an application by facsimile.

  • Applications delivered by hand or courier should be taken to: Trademark Assistance Center, James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, VA.


Filing with teas
Filing with TEAS

  • Filing fee is $325 per international class

  • Help screens

  • 24 hour access

  • Instant receipt


Filing with teas plus
Filing with TEAS PLUS

  • Filing Fee is $275 per International Class

  • All the benefits of TEAS ---plus

  • Complete application minimizes procedural problems

  • Electronic communications allow more efficient processing


Teas plus requirements
TEAS PLUS Requirements

  • Trademark or Service mark applications for the Principal Register based on Sections 1 or 44

  • Application must be complete

  • Most communications must be filed on line

  • Must agree to receive USPTO communications via e-mail


What is a complete application page 1
What is a Complete Application? (page 1)

  • Applicant’s name, address, legal entity, citizenship, correspondence address

  • Filing basis or bases with documentation

  • Classification and Identification from USPTO manual

  • Filing fee for each class

  • Proper verified statement, dated and signed by authorized person


What is a complete application page 2
What is a Complete Application? (page 2)

  • Clear drawing of the mark with standard character or color claim

  • Claim of prior registrations for the same mark

  • Translation and transliteration

  • Consent to use name/portrait or not-a-living individual statement

  • Concurrent use claim

  • Email Address and Authorization

  • Description of the mark for all special form drawings


Requirement to file documents through teas
Requirement to File Documents through TEAS --

  • All TEAS PLUS applicants must file these through TEAS

    • Responses to Office Actions

    • Requests to change correspondence/owner addresses

    • Appointment/Revocation of attorney/domestic representatives

    • Preliminary amendments

    • Requests to delete a 1(b) basis

    • Amendments/Statements of Use

    • Requests for extension of time to file SOUs


Requirement to receive emails
Requirement to Receive Emails

  • All Teas Plus applicants must agree to receive communications from the USPTO by e-mail throughout the examination process


Why use teas plus
Why Use TEAS PLUS?

  • Its cheaper!

  • Its easy!

  • Its quick!

  • If anything goes wrong, you can always convert to a regular TEAS application by paying the additional $50.


Filings under the madrid protocol
FILINGS UNDER THE MADRID PROTOCOL

  • What is the Madrid Protocol?

    • An international trademark filing system that allows trademark owners to apply for an internationalregistration that extends trademark protection to multiple countries. The international registration is based on a single application.

    • Why is that significant?

      • The protection that flows from a national registration, that is, a registration issued by a particular country, does not extend beyond the borders of that country. The registration is territorial. For example, a United States registration has no effect in France.


Filings under the madrid protocol1
FILINGS UNDER THE MADRID PROTOCOL

  • How does the Madrid Protocol work for a US business that wishes to obtain an international registration?

    • First, the business applies for a United States registration, if it doesn’t already have one.

    • The business then determines:

      • Which country or countries it is or will be doing business in;

      • Which country’s markets are likely to feature pirated copies of the business’ goods;

      • Whether those countries are members of the protocol; and


Filings under the madrid protocol2
FILINGS UNDER THE MADRID PROTOCOL

  • What trademark rights, if any, the business has in those countries.

    • Every country has its own trademark laws: even if the business clearly has rights in a particular mark in the U.S., under U.S. law, it may not have the same, or any, rights, in another country, under that country’s laws.

    • The business should retain an attorney who is (1) trained to conduct trademark searches in each of the countries the business may wish to identify in the international application, and (2) trained to evaluate the results of those searches.

    • WIPO’s web site provides a worldwide a Directory of Intellectual Property Offices, but only some of the offices referred to in that list provide on line trademark databases.


Filings under the madrid protocol3
FILINGS UNDER THE MADRID PROTOCOL

  • One (of very many) examples of how U.S. and other trademark laws may differ.

    • Classification. In the U.S., classification does not confer or deprive a business of substantive trademark rights: two similar or identical marks can be classified differently and still be confusingly similar. Conversely, two similar marks can (occasionally) be classified in the same class and not be confusingly similar.

    • In certain countries, including China, if the goods or services associated with two identical or similar marks are classified in different classes, the national trademark office will not find that there is a likelihood of confusion, even if the goods and/or services are related.


Filings under the madrid protocol4
FILINGS UNDER THE MADRID PROTOCOL

  • Applying for an international registration:

    • use either the electronic application for registration, available at the USPTO’s web site, or;

    • a paper form provided by the World Intellectual Property Organization, (WIPO) the international organization that administers the Madrid protocol.


Filings under the madrid protocol5
FILINGS UNDER THE MADRID PROTOCOL

  • A recap of important matters just seen in the review of the international application.

    • Fees:

      • The USPTO charges a $100.00, non refundable certification fee per class if the international application identifies one US application or registration, and $150.00 per international class if the international application identifies multiple applications.

      • WIPO charges international fees. The total amount will vary depending on which, and how many, countries are designated: the more countries designated, the more expensive the application.

        • WIPO maintains a fee calculator and a fee schedule on its Madrid web site


Filings under the madrid protocol6
FILINGS UNDER THE MADRID PROTOCOL

  • Application recap, continued:

    • The international application cannot set forth information not provided in the underlying U.S. application or registration. Otherwise, the USPTO won’t certify the application.

      • Example: the international application cannot identify goods or services not listed in the U.S. application or registration.

        • The U.S. application identifies “computer software for creating dessert recipes, in international class 9” and the international application identifies “computer software for creating desert recipes, in international class 9” as well as“computer education training,” in international class 41. The international application includes something that the underlying U.S. application does not, and the USPTO therefore would not certify the international application.


Filings under the madrid protocol7
FILINGS UNDER THE MADRID PROTOCOL

  • Application recap, continued: special features of the electronic form:

    • If the “pre-populated” version of the electronic form is used, the form automatically “pulls” information form the underlying U.S. application or registration, and “imports” that information into the application. This saves time, and helps to prevent “mismatches” between the international application and the U.S. application or registration.


Filings under the madrid protocol8
FILINGS UNDER THE MADRID PROTOCOL

  • Payment is quick and easy. The form calculates the total of U.S. and international fees. The applicant pays that fee electronically, in U.S dollars. Once the fee is transmitted by the applicant, the USPTO systems automatically transmit the international portion of the fee to WIPO.


Filings under the madrid protocol9
FILINGS UNDER THE MADRID PROTOCOL

  • Payment of the international fee is much harder if the paper form is used. The payment must be made in Swiss Francs, by:

    (1) check;

    (2) establishing an account at WIPO and authorizing a deduction from that account;

    (3) by wiring money to a WIPO account; or

    (4) by payment in cash in Geneva.

  • The electronic application is reviewed and certified automatically and instantaneously, whereas the paper form requires review by USPTO staff.


  • Filings under the madrid protocol10
    FILINGS UNDER THE MADRID PROTOCOL

    • If the applicant nevertheless wishes to use the paper application, it:

      • Completes and prints that application;

      • Mails it to a special address at the USPTO

        • P.O. Box 16471, Arlington, Va. 22215-1471, Attn: MPU

        • Non-Madrid trademark correspondence cannot be sent to this address.

      • Paper applications must include the USPTO certification fee, and may include the WIPO international fees.


    Filings under the madrid protocol11
    FILINGS UNDER THE MADRID PROTOCOL

    • What happens after the international application is transmitted to the USPTO?

      • If everything is in order, the USPTO certifies the application, and forwards it to WIPO.

      • If WIPO finds that its requirements were met, it issues an international registration.

      • WIPO then sends the international registration to each of the countries that the applicant identified in the international application.


    Filings under the madrid protocol12
    FILINGS UNDER THE MADRID PROTOCOL

    • Each of those countries then determine whether, under their trademark laws, the U.S. trademark owner is entitled to an extension of protection, i.e., whether the international registration will be in force in their country.

    • The countries must issue any refusals within either one year, or eighteen months, from the day the international application was forwarded to the Office by WIPO, (depending on whether the country opted for the one year or eighteen month limit).

    • If the country decides to issue a refusal, it sends a refusal letter to WIPO, which then mails the letter to the applicant.


    Filings under the madrid protocol13
    FILINGS UNDER THE MADRID PROTOCOL

    • Some advantages and disadvantages of utilizing the Madrid system.

      • Advantages:

        • The business owner files only a single application.

        • Most countries require trademark owners to renew their registrations periodically, after the registration issues. If a business obtains an international registration, it renews that registration with a single renewal document. If it had multiple, national registrations, it would be required to file renewals for each of these registrations, and some or all of these renewals would be due at at different times.


    Filings under the madrid protocol14
    FILINGS UNDER THE MADRID PROTOCOL

    • If the owner of an international registration changes its name or address, it can update the record of its international registration with a single notification to WIPO. If it owned multiple, national registrations, it would be required to file separate notifications for each registration.

    • Many countries require trademark owners who file national applications to hire local counsel or local trademark agents. There is no such requirement if Madrid is used.

      • Nevertheless, the business may need the services of a local attorney or agent if the national office rejects the application.

    • If the international registration is assigned from one business to another, that assignment can be effected by filing a single document at WIPO.


    Filings under the madrid protocol15
    FILINGS UNDER THE MADRID PROTOCOL

    • Disadvantages to utilizing the Madrid system:

      • Five year dependence. If, within five years from the date of the international registration, the United States application identified in the international application abandons, or the United States registration is cancelled or expires, the international registration will also be cancelled.

        • One consequence of this: the international registration is vulnerable to a central attack. Another party can initiate a proceeding - - for example at the Trademark Trial and Appeal Board - - to cancel the U.S. registration, or to oppose the issuance of a registration. If that party is successful and a registration is not granted or is granted and then cancelled, the U.S. application or registration, as well as the international registration, are all cancelled.


    Filings under the madrid protocol16
    FILINGS UNDER THE MADRID PROTOCOL

    • Identification requirements. The information provided in the international application - - including the description of the goods and services - - must be identical to the information in the underlying U.S. application or registration. U.S. requirements for specificity in descriptions may be more stringent than the requirements that other countries impose.


    Filings under the madrid protocol17
    FILINGS UNDER THE MADRID PROTOCOL

    • As just seen, an advantage of the Protocol is that application and other costs are less than the costs of filing individual national applications. But the international application process can nevertheless be expensive. For example, a business may incur significant costs if it:

      • Conducts searches in, and obtains legal opinions regarding protection in, numerous protocol countries:

        • Recall that it is unwise to do anything but a “knock-out” search without attorney assistance;

      • Designates each of those countries in its international application;

      • Is issued refusals by some or many of those countries; and

      • Retains attorneys in some or many of those countries to assist in challenging the refusals.




    Questions you need trademark assistance

    Questions? You need Trademark Assistance!

    Trademark Assistance Center:

    1-800-786-9199

    Local: (571) 272-9250

    TrademarkAssistanceCenter@uspto.gov


    Trademark assistance center cont
    Trademark Assistance Center (cont.)

    WHAT TAC DOES…

    • Receives incoming calls and personally answers general inquiries regarding Trademark Office procedures

    • Responds to requests for Trademark forms and materials

    • Assists walk-in applicants with general trademark inquiries on Office policy and procedures


    Trademark assistance center cont1
    Trademark Assistance Center (cont.)

    • Responds to telephone status inquires by providing prosecution history and a procedural explanation

    • Answers queries about informal applications

    • Issues duplicate filing receipts

    • Reconstructs “lost” files


    Trademark assistance center cont2
    Trademark Assistance Center (cont.)

    Customer Problem Resolution

    Via E-mail:

    CustomerProblemResolution@uspto.gov

    Will respond within 24 hours


    Trademark assistance center cont3
    Trademark Assistance Center (cont.)

    WHAT TAC DOESN’T DO…

    • Provide LEGAL ADVICE

    • Conduct pre-filing search for potentially conflicting marks

    • Advise applicants how to respond to an Office action

    • Advise applicants on what are types of specimens are or are not acceptable or on what goods/services are or are not acceptable


    Trademark assistance center cont4
    Trademark Assistance Center (cont.)

    • Pre-approve documents before they are filed

    • Review or correct contents of application before filed

    • Provide advice on how to act on accusations of infringement and oppositions

    • Advise on whether a given example of use of a mark does or does not constitute use in interstate commerce


    Trademark workshop

    THANK YOU!

    Please visit us at

    www.USPTO.gov