We really love registering service marks. Trademarks, too. (Mentioning service marks in the title of this post better served our alliterative inclinations.) What’s even more fun is finding new ways to register trademarks as quickly and cost-effectively as possible – which frees up time and money we can use to…register more trademarks. Hooray!
In case you are of a similar mindset, here are some things to ponder while you work on a new US application.
- Application signature. As soon as you are asked to file a new application, find out who will be available to sign the application form, and when. This can help minimize delays in getting the application filed. If the responsible party is away for a few weeks, maybe you will want to file the application unsigned, and submit the signed form later (in which case, don’t forget to include language on the application form confirming the applicant’s use of, or bona fide intent to use, the mark in the USA as of the application filing date).
- Is the mark a coined term, or does it have a meaning in a foreign language? You’ll want to tick the corresponding boxes on the application form. This information is also helpful when you’re assessing the availability of a mark.
- Claim ownership of prior US registrations for similar marks. Skip this step and you’ve just earned yourself a refusal!
- Consistent ownership and contact information. If your mark contains a previously-registered element, be sure the new application names the same owner as the prior registration – or be prepared to explain the relationship between the companies. While you’re at it, make sure the company address is up to date.
- Include a detailed description of your proof of use. If you were the Examining Attorney, which specimen description would you like more: “catalogue,” or “catalogue excerpt displaying the mark on page 3 in proximity to photograph of the goods and containing information enabling readers to place an order”?
- File an Amendment to Allege Use prior to publication. If you do get an Office action (boo! hiss!), take that opportunity to determine if the brand has been put into use. If so, you’ll turn your frown upside down when you shave a few months off the registration process by filing an Amendment to Allege Use at the same time as your response to the Office action.
- Swift responses to Office actions. If you do get refusals, try calling USPTO Examining Attorneys right away, while the matter is still fresh in their minds. You’ll get a clearer understanding of their rationale, and you might be able to dispose of some issues by phone.
Of course, Office actions are sometimes unavoidable – but implementing the above tips during the filing process can minimize the number of administrative issues raised in the refusal – thus allowing you to concentrate on the substantive aspects. Happy filing!
The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.
