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Welcome to the second call in our 2011 Trademark Teleconference Series. My name is Erik Pelton. I'm here with Mark Donahey. We are of Erik M. Pelton & Associates in Falls Church, Virginia and we are happy to be talking to you today about common trademark application mistakes. Trademark application mistakes are very common among all types of applicants, whether they are individuals, corporations, attorneys who practice a lot in the field trademarks or attorneys who are dabbling in trademarks without a lot of experience. A lot of these mistakes can be easily avoided as you can see and avoiding such mistakes helps your application have a better chance getting approved, a better chance of getting approved quickly, a better chance not losing your filing fees and several other benefits. Before we jump into the rest of the content, I just want to remind everybody that call is being recorded and that nothing presented today should be construed as legal advice. If you have a specific question that relates to your trademarks or to your application, please consult an experienced trademark attorney.
We announced this topic last month to cover common on trademark application mistakes and then a well-known celebrity and politician actually was in news in the last two weeks having made mistakes in her trademark application and actually it is a para-celebrity, Sarah Palin and her daughter Bristol Palin. They filed last year to register their names as trademarks for speaking and other services and the applications were denied. No big deal, applications are initially denied all the time. However, these were denied for very basic reasons that could easily be avoided and easily reduce the amount of time it will take the applications to get approved and eventually registered assuming they go ahead and correct those errors. For example, in the Sarah Palin application, proper evidence of using the name was not provided and a lack of the consent of the individual since obviously the name ‘Sarah Palin’ identifies an actual specific person. Her consent is necessary explicitly in the application process and that was not provided so these mistakes could easily have been rectified at the time of filing. They were not. She now has six months from the time the USPTO offered its refusal, its rejection to go ahead and responded and correct those mistakes or further explain or respond to the refusal. But this really highlights that there are a lot of simple things that the I’s need to be dotted and the T’s need to be to be crossed and a little bit of foresight into planning an application and knowing all the ins and outs makes the process a lot smoother.
Mark is going to jump off on our first common trademark application mistake.
Mark Donahey speaks: So the first of these mistakes that we are going to be talking about happens even before the application starts and it’s the failure to conduct a search to see who else is using similar marks on similar goods or to see if someone else using the same mark or something that is likely to be confused with your mark before you apply. Knowing that someone else’s mark is going to be a conflict for your own is something that will help you save a lot of money. It could help you know in advance and invest in building another mark that you will have stronger rights in.
Now, a comprehensive search of many database all over the countries is always the best idea. That’s something you can obtain through a trademark attorney and the attorney will help you figure out which marks are close enough to cause a problem, which marks may not be an issue at all and that sort of guides or help you decide whether or not to go through that application or whether to select another mark. At minimum though, it’s a very good idea to search the records of the United States Patent Trademark Office itself. It is a very easy website to use. You'll be searching there through the other registrations that have already existed and the other applications that have already been filed with the Patent and Trademark Office. Other places to search, of course, are the Internet. Get on a search engine and figure out if other companies are out there with websites that are using similar marks for similar products or services. But of course, the ultimate judgment about whether or not what you find will be a conflict with your mark is a difficult one and it's something that obviously is useful to have professional guidance to analyze.
The second common trademark mistake is failed to include the proper drawing of your mark in the application and the important thing is in filing a trademark application, you submit a drawing that is a picture of the mark. If it is just words, it’s how the words appear. If it’s a logo, it’s a picture of the logo. That drawing defines what is protected by the trademark application and it has to match how you use the mark and often times people make mistakes and don't … and are not as careful as they should be about making sure that they're using it, using their mark the same way it appears in those drawings. So for example, if someone is applying for a mark that is just text, they might apply for, “The Hammock Company, Inc.”, which would be the name of their company but maybe they use the mark as “The Hammock Company” on the top their website, then later in the application process or immediately depending on what kind of application you have, you will have to prove to the Patent and Trademark Office that you are using it with an example of views and if that example doesn’t match your drawing, it may cause a serious problem depending on how different they are and some of those differences can be corrected and some can’t.
Erik Pelton Speaks: I have a nice logo that you can use here as an example as well.
Mark Donahey speaks: Yeah, this is the logo that has been registered for Erik Pelton & Associates and so here we have the words in this nice stylized font but then underneath is the “Erik M. Pelton & Associates, PLLC”. If the firm applied to register just the logo up here but always use the words underneath it in conjunction with it, never use the logo separately, that might cause a problem. Likewise, if the drawing on the application had both the logo and the words but the firm only used it with the just the logo, that would be a problem. Or perhaps the image that's put in for the logo has as a box around it, but the logo was never used in the box, these things would cause problems and it … again sometimes it is something that can be fixed, sometimes it will be something that will require an abandonment of an application, you will lose your filing fees and you have to start all over. So it is an important thing to be careful and make sure you dot all your ‘I’s’ and cross all your ‘T’s’ like Erik said.
Our next common application mistake is properly identifying who owns the trademark. In a small business particularly, this can be complicated. Is it a person, is it a partnership, are their joint owners, is it an LLC, is it a corporation? It is very critical to properly identify who owns the trademark and the trademark application hopefully at registration. A mistake in the ownership is likely to void the application and basically make it waste of time, a waste of money and loss right because you are missing out on the opportunity to properly register and if you are registering in a name that doesn't exist or an improper. So if it is a small business without a corporation formed, it may all be owned by an individual. That’s completely acceptable. You don’t even have to be a United States citizen. If you are an individual, you just have to provide your name, your address and your citizenship from anywhere throughout the world and you could own a US trademark application/registration. However, if there are documents that show that this name or logo is owned by a joint partnership or was created for a corporation, if you improperly identify the owner as individual, again that application could very well be null and void and worthless. So it’s important before you file to you figure out who the owner is, put all your ducks in a row, if there's any paperwork that backs that up, to just put that in your own internal file. The Patent and Trademark Office really doesn't require much or any evidence to prove who the owner is. They take you at your word but is it becomes obvious later or someone challenges it later and the ownership is called into question and was wrongly identified in the application, that’s when you have a problem. So, very important initial step again even really before you file the application, is figure out who's the owner, get all your ducks in a row, how you're going to identify the owner or the owners, make sure that if possible you have some sort of paperwork that supports that even if that is just for you internal files if that is ever a question later.
Another common mistake is not knowing whether a trademark is actually in use in commerce in the United States. The United States trademark system is a little bit peculiar compared to the rest of the world. Here, you cannot get a trademark registration unless your mark is actually being used on goods and services. So if you had … there are ways if you haven't started using your mark to acquire some rights in it. It is called an Intend to Use Application and it is a special application you can file with the USPTO but it doesn't turn into registration until you show the Patent and Trademark Office that you started using the mark. Now, a common mistake though is where someone files a Use-Based Application, an application that actually requires you to be using the mark the day you file it or earlier.
And people sometimes file Use-Based Applications for marks they have used yet. And that is a problem that can be remedied, must be remedied in fact, because if it isn’t, it could jeopardize the validity of your registration later if it even registers. But also making that mistake will add, if it doesn’t make your registration invalid, will make you start all over. It will add extra time. It will require you to file additional fees and it will be a burden you could have easily avoided. The other error is filing an Intent to Use Application for a mark that you have been using and, in that situation, the Intent to Use-Based Application has an extra hundred dollar fee on it when you ultimately show that you are using it that could be avoided if you went for the actual Use-Based Application. Finally, the critical issue here is what counts as a use and what doesn’t. It has to be a use on the mark on the goods and services listed in the application itself and it doesn't count if it is just one sales to your cousin, it’s got to be a genuine use on the product in commerce were you are actually are trying to make legitimate sales of it, not just some token sale that you have made to someone so that you can say I qualify for a Use-Based Application.
Knowing what to do, when to do it and which ones you qualify for is again a very important thing to figure out before you file that Application.
Erik Pelton speaks: And that leads very well right into the next topic because often times, the Applicant may be using that remark on some goods or services, have an intent to use it other goods and services but not properly define those two things within one application or place them in two separate applications and the next topic is an improper description of goods and services because the description goods and services is the scope of the registration. There is two boundaries to the registration. One is what the trademark or drawing is and then the other is that description of goods or services goods. And it is very important to have an accurate detailed, description of goods and services at the same time it's beneficial to make that scope as large as possible within the limits of the law. Meaning that it's still accurate and it's not covering things that you are not doing or it’s not misleading how using mark. So a proper identification sometimes can be updated and corrected once the application is filed but only within the scope of the initial application. Changing the scope entirely is not permitted and will results in a loss of your original filing fee and the need to refile the Application in order to correct it. Very common mistake made by Applicants all the time is if they're operating a store describing what they use their trademark on as the products they sell in the store. Let’s say coffee mugs and coffee beans, but if what they really are is a café that provides a service of selling coffee mugs, coffee beans, coffee drinks, they're not really selling their own brand of coffee beans or coffee mugs, then the proper way to identify the services will be a retail store and cafe services, not the physical products themselves. If physical products were identified in the application and were inaccurate, that would result…that would be a void application. Again, an application error that you could not fix and would need to refile and restart and replay the government filing fee. So, properly nailing the description of the good services and proper and then having a proper scope that gives you as much protection as possible while being accurate as to what you are doing with the mark is very significant both to getting a registration and to the rights granted in that registration.
Mark Donahey speaks: Another comes mistake is filing in the wrong type of trademark application or not designating what kind of trademark you’re seeking. There is the standard trademark application
for trademarks and service marks, but then there are also some specialized kinds of registrations that are available and sometimes it is not always clear which one trademark it will qualify for. And these other kinds of trademark registrations or certification marks, collective trademarks and service marks or collective membership marks and it’s a complicated question sometimes which of those categories a mark fits into. So while it’s always a good idea to obtain legal advice from an attorney when you're filing your trademark application if these specialized forms of trademarks are what you are seeking, it’s even more important to get an expert opinion. And so just kind of running through what these are, the certification mark is used by authorized parties to show that the goods or services being offered meet some standard that is monitored by the owner of the certification mark. So, for example, Idaho potatoes and are made in the USA are both certification marks that the owner of those marks isn’t the company that sells you the potatoes, its somebody who certifies that potatoes came from Idaho for example or that the goods came from the United States. Another example is that little ‘ul’ in a circle on all of your electronics is from the Underwriters Laboratory, which is responsible for making sure electronics meet certain safety standards and so those examples certification marks. Then there is collective trademarks and service marks which are marks that are owned by kind of a central organization but then are actually used by affiliated organizations. And so a good example there is like FTD Florists. You might buy flowers from your local ‘Bob’s Flower Shop’ but he might also have the mark up there that says he is an ‘FTD Florist’ and that means he's part of this broader network and that he can send flowers all over the country and through all other FTD Florists. And so while FTD Florist isn’t the name his of business, he is allowed use that mark because he's part of that collective group that is allowed to use that mark. The last one is a collective membership mark and that really isn't so much a business or a situation where someone is using mark in a businesses, it’s really used to designate a membership in an organizations. For example, fraternities often file collective membership marks for there for their fraternity names and so their members can say I'm a member of such-and-such fraternity. Religious organizations do it too. Scientologist is a registered collective membership mark that is used by people who are members of the Church of Scientology, and likewise civic organizations and an educational organization. Future Farmers of America is another collective membership mark that is available for use by people who are members of the FFA.
Erik Pelton speaks: The next common application mistake is the actual type of filing used via the USPTO website, which is www.uspto.gov and that stands for United States Patent and Trademark Office and in addition to these special types of applications, collective membership, certification marks, etc., all basic application can be filed in two different ways electronically. One is just called a TEAS Form, which I think stands for Trademarks Electronic Application System, and one is a TEAS P1us Form. There are some small differences between the two in practice that may they have an effect on the application process. There is very little effect substantively, hopefully if right, there's no effect substantively, but in practice the two main differences are the TEAS Plus Form has fifty dollar lower filing fee. So obviously there is an advantage to using TEAS Plus for that reason. However, the trade-off to get that filing fee is that you agree that all submissions during the application process will be made electronically or else you will pay an additional fee and the most significant trade-off is that you agree to only choose a description of the goods and services, which we just spoke about a few minutes ago, from a list, a database of descriptions that Trademark Office has already generally deemed to be acceptable. So basically you have to put your proposed description within their choices, within their particular boxes that you can frame it as, as opposed to being able to in a regular cheese application with the additional fifty dollar filing fee to write your own description that may be more thorough, more comprehensive, more broad or just more complex because there are limitations to the choices in TEAS Plus Application. So we strongly advise using the TEAS Application, because as I said before, having a good proper thorough identification is critical to protecting your rights and getting your application approved and register. So we believe that rate of up to fifty dollars is worthwhile to be able to take advantage of the open-ended flexible identification form through the TEAS Application. When filing an application either electronically or on paper, only, I believe it’s less than one percent of applications are actually filed on paper now, but however it is filed, it’s important that it’s properly signed. Now what does this mean? Electronically it means, in order to sign it through their web signature process, you have to read their instructions as to how you actually write your name electronically to make it signed. It’s not a digital stamp or e-signature through third-party. It’s simply is a blank box above your typewritten name where you put slash your name or however you want to be identified and slash again. You have to read the rules very carefully to follow their format or else it will electronically will not even accept your signature and the application will not even be filed. Just as important is who does the signing? Number one is obviously whoever states they're doing the signing is stating so under declaration of perjury and must actually be that person doing the signing and they must be authorized to sign on behalf of whoever's been identified as the owner. Again, going back to another issue we raised earlier in this discussion, the owner must be identify properly and if the owner is LLC or corporation or another entity, somebody who has the actual authority to bind that identity has to sign the application. Generally, any officer or director of the company will automatically be assumed to have that authority and the Trademark office's rarely, if ever, is going to ask for proof that you have the authority, but if somebody whose title would tend to indicate that they might not have the authority, it could be called into question either by the Trademark Office or later in a dispute and it could void the application. You know, an example, again if you sign it or if it's signed as CEO or president or officer, assuming those titles are accurate, that's going to be acceptable. But if it's signed as bookkeeper or friend, those are not titles that are going to be presumed to have the authority. Now perhaps you or that person does have written legal authority to bind the company or the person then maybe the Trademark Office would ask for it and it could be submitted but you must … it is much easier if you just make sure that somebody really does have the authority signs it in the first place then there are no questions asked and no problems. Mark is going to cover our last common trademark application mistake.
Mark Donahey speaks: As Eric said, only about one percent of trademark applications are filed on paper anymore. The USPTO has a great electronic system and both for filing trademark applications and also monitoring them and responding to problems that come up along the way, and so is great idea to elect to receive all your notifications from the USPTO by email. But a problem is you need to make sure that you receive all the emails. You need to make sure that the mail doesn't go into your spam filter, you need to make sure that your monitoring the email box on a regular basis because there are very stringent timelines for responses when there are problems from the USPTO and so that’s … making sure that you are in good touch with the USPTO and available to be reached when they need you is a critical factor for a successful application. If you have an attorney who is filing on your behalf, they take care of that. The person who the USPTO contacts and they keep track of the application’s progress and respond when something is needed. If you are doing it yourself, that is something you need to be very careful about. And one last warning is, when you put your contact information in your registration, you put your email address there as the person the USPTO should be corresponding with, all that information becomes a public record and there are people out there who scour those records to send out advertisements and spam and even some scams, so it's important to just keep that in mind when you're putting your information in on the application.
Erik Pelton speaks: I'll just add a practiced tip perhaps to consider on having a good email address that the USPTO can correspond with. Create a separate email account, even if you only found one application for yourself. Create a free account through one of the free services and call it ericstrademark@whatever” or something similar to that and how to count forward automatically to your main email account but then if somehow your main email can is broken or if you change jobs or you decided, you know, change your main email address, you could always go back to that account you set up and check your emails there or have them forwarded to the other account so that it’s not tied to some other account that you might lose control of. I think that is a useful way to deal with the situation. So, to conclude, you can see there is a lot of potential hurdles to having a proper trademark application that gives you solid legal rights in your trademark, which obviously are very important and very valuable, and which is more likely to get approved and to get approved quickly if the situations are addressed in advance or dealt with when they arrive. So, I view it as our as sort of a marathon because trademark application process does general take eight months to a year on average even when it's done by an attorney, even when there are minimal responses or changes/amendments to the application. It is a long process. There are a variety of stages that it has to go through at the USPTO no matter what, so it is like a marathon but there are hurdles in it, or potential hurdles, as if it’s a hundred yard hurdle sprint, but if you're aware of those hurdles or potholes, or whatever you want to call them, call in advance and you take steps to minimize the odds of hitting them, your applications has a much better chance of sailing through the process and getting to the finish line quicker.
Next month, I hope you join us again. We're going to talk about choosing a brand name. There is a lot to cover there. Legal issues in terms of doing a search and considering potential conflicts in the strength of the name. We are also going to cover practical tips on how to brainstorm for a new name, what makes a creative or a catchy brand-name and so I think that there is going to be a lot of really valuable content in that, our third teleconference series. You can follow our blog or website or Facebook feed. Just do a search for Erik Pelton, E-R-I-K-P-E-L-T-O-N, to find any of our contact information online.
And to conclude, I just want to remind everybody that this is not formal legal advice. If you have particular questions, you should consult an attorney and that the content provided here is copyright 2011 Erik Pelton and Associates, PLLC.
Erik: Thank you.
Mark: Thank you.