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The quest for the glorious ®

03/20/07
Ian M. Berkowitz

   The previous articles in this series on Trademark-s, Ser vicemarks and Tradenames addressed the purpose, reason, and de nitions of Trademarks, Servicemarks and Tradenames. In examining the purpose o-f obtain ing Trademark protection, I stated that if you have any desire- to pos sess any Intellectual Property for your business you must obtain the maximum protection, which is to le a federal application with the U.S. Patent and Trademark O ce. Simply put, no protection equals no ownership of the Intellectu- al Prop erty no matter how long you have been using the mark. How-ever, be fore you even le your application and seek protection I would highly recommend conducting a- compre hensive search with the U.S. Patent and Trademark O ce to make sure your mark is not similar to anything that is already protected.

    As the world has embraced the use of technology so too has the U.S. Patent and Trademark O ce provided an electronic platform to register and obtain protection for your Intellectual Property.- The sys tem known as the Tradem-ark Elec tronic Search System, known as “TESS”, is the portal used to search the U.S. Patent and Tradem- ark Of ce database, to determin-e wheth er a confusingly similar mark is already registered, or whether a pending application for a- confus ingly similar mark has been led, for related goods and/or services.

Check your mark

    When developing your mark it would be extremely bene cial to run your names, marks and ideas though the system in order to nix your choices of marks that- have al ready been taken. You surely don’t want to develop a logo, name or mark only to nd out tha-t some one else has developed it before you. Another word of caution is not to assume that it is available just because it is not listed. So-me reg istrations may not be on the system or may be in the processing stage. Unfortunately, the system does not operated in “real time”.

    Once you have reviewed the system and checked out TESS for any same or similar marks then you must make a determination of whether or not your mark can withstand the scrutiny.

    Is there anything similar and if so can you responsibly articulate the di erences so that the- U.S. Pat ent and Trademark Examin- ing At torney will grant your registration. The next step is to check out any potential con icts on the- Trade mark Application and Registration and Retrieval system, commonly referred to as “TARR”. TARR will give you information about any applications and registrations that might create a potential con ict obstacle for you to obtain- protec tion.

    Again look at the results and with a very detailed eye determine whether or not you are good to go or you need to modify your mark to avoid trouble.

Online application

    If you believe that you are ready then navigate back to “TEAS” which stands for the Trademark Electronic Application System. TEAS is a online system w-hich al lows you to ll out a form, check it for completeness, and then submit the form directly to the U- .S. Pat ent and Trademark O ce over the internet, making an o cial ling on-line. The system itself is very user friendly and will prompt you through the process especially if you choose to le using the online wizard.

    Once you begin a new -registra tion, you will be requeste-d to an swer questions such as lis-ting in formation about you, the ler, and the mark’s owner.

    You also need to identify the class of the mark, which i-s a nu merical description of the goods and/or services that the m-ark rep resents. A trademark application is incomplete without a statement identifying the goods an-d/or ser vices with which the mark is used or will be used. The U.S. Patent and Trademark O ce’s website has a link if you are running into problems identifying a class for you to use for registration. Beware that the identi cation must be speci c enough to identify the nature of the mark and its use.

    You will also need a JPEG of the mark and if you are already using it in commerce then you will need to attach a JPEG of it in use. There are speci c size requirements for the size of the JPEG so make sure to follow that requirement. As you move forward with the additional information be careful not to make any input errors. As you get to the end you will sign the application electronically and then proceed to validate the form. At this point it will highlight any errors for you and give you the opportunity to go back and make correction- s. Pay ments are made by credit cards and at the present time the registration fee is $325 per mark/per class.

Proof of ling

    Once done make sure that you print out your application- and re ceipt so that you have some proof of your ling. You will also get an email con rming receipt of your application and issuing yo-u a reg istration number.

    Afterwards, you simply just sit and wait for the U.S. Patent and Trademark O ce to contact you which is usually within six months of ling your application. Once you are contacted the process will start via email with an Ex-amin ing Attorney assigned to -your ap plication regarding your ability to obtain protection. If you a-re fortu nate you may get the green light on the rst try. If not you might have to heed the comments from the Examining Attorney, make some noted changes and respond accordingly.

    Overall the process is n-ot com plex but if you don’t feel con dent in your ability to evaluate existing marks and their a ect on your ability to register your mark, then seek professional advice. If you are looking to register multiple marks beware that it can be quite costly if you make mistakes or nd out that your marks are not eligible for registration. The best advice is to complete all of your research and review before your begin the process so you can ensure a trouble free registration.

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