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Search: After a trademark application is
filed, the USPTO will conduct a search of USPTO records for conflicting
marks as part of the official examination process. The official search
is not done for the applicant but rather to determine whether the mark
applied for can be registered. The USPTO advises applicants and/or their
representatives to search the records before filing the application. A
search may be conducted through TESS, or by visiting the Trademark
Public Search Library, between 8:00 a.m. and 5:30 p.m. at 2900 Crystal
Drive , 2nd Floor, Arlington , Virginia 22202 . Use of the Public Search
Library is free to the public. Also, certain information may be searched
at a Patent and Trademark Depository Library. These libraries have
CD-ROMS containing the database of registered and pending marks, and
Internet access to the Trademark Electronic Search System (TESS).
(However, the CD-ROMS do not contain images of the design marks.)
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Secondary Meaning: Secondary meaning
arises when consumers have come to identify a trademark over time 15 U.S.C. §1052(f). “except as expressly excluded in paragraphs (a), (b),
(c), (d), and (e)(3) of this section, nothing herein shall prevent the
registration of a mark used by the applicant which has become
distinctive of the applicant's goods in commerce. The Commissioner may
accept as prima facie evidence that the mark has become distinctive, as
used on or in connection with the applicant's goods in commerce, proof
of substantially exclusive and continuous use thereof as a mark by the
applicant in commerce for the five years before the date on which the
claim of distinctiveness is made. Nothing in this section shall prevent
the registration of a mark which, when used on or in connection with the
goods of the applicant, is primarily geographically deceptively
misdescriptive of them, and which became distinctive of the applicant's
goods in commerce before the date of the enactment of the North American
Free Trade Agreement Implementation Act. |
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Section 8 Declaration of Continued Use: A
sworn statement, filed by the owner of a registration that the mark is
in use in commerce. Section 8 of the Trademark Act, 15 U.S.C. §1058. It
must be filed by the current owner of the registration and the USPTO
must receive it during the following time periods: 1) At the end of the
6th year after the date of registration (or the date of publication
under 15 U.S.C. §1062(c) for registrations issued under the Acts of 1905
or 1881 that have claimed the benefits of the Act of 1946),and 2) At the
end of each successive 10-year period after the date of registration.
There is a six-month grace period. If these rules and deadlines are not
met, the USPTO will cancel the registration. |
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Section 8 Declaration of Excusable Nonuse:
A sworn statement, filed by the owner of a registration, that the mark
is not in use in commerce due to special circumstances that excuse such
nonuse and is not due to any intention to abandon the mark. Section 8 of
the Trademark Act, 15 U.S.C. 1058. It must be filed by the current owner
of the registration and the USPTO must receive it during the following
time periods: 1) At the end of the 6th year after the date of
registration (or the date of publication under 15 U.S.C. §1062(c) for
registrations issued under the Acts of 1905 or 1881 that have claimed
the benefits of the Act of 1946), AND 2) At the end of each successive
10-year period after the date of registration. There is a six-month
grace period. If these rules and deadlines are not met, the USPTO will
cancel the registration. Once the USPTO accepts the Section 8
Declaration of Excusable Nonuse, the owner of the registration is not
required to file another Section 8 Declaration until the next statutory
filing period. |
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Section 9 Renewal Application: A sworn document, filed by the owner of a
registration, to avoid the expiration of a registration. Federal
trademark registrations issued on or after November 16, 1989, remain in
force for 10 years, and may be renewed for 10-year periods. Trademark
registrations issued or renewed prior to November 16, 1989 remain in
force for 20 years, and may be renewed for 10-year periods. Trademark
owners have a total of 18 months to file a §9 Renewal Application. The
§9 Renewal Application may be filed one year prior to the registration
expiration date or during the 6-month grace period immediately after the
date of expiration. If the §9 Renewal Application is not filed or is
filed after the grace period ends, the registration will expire.
Because the due date of the 10-year §8 Declaration coincides with the
due date of the §9 Renewal Application, the USPTO created a form
entitled "Combined Declaration of Use in Commerce and Application for
Renewal of Registration of a Mark Under Sections 8 & 9". |
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Section 15 Declarations: A sworn
statement, filed by the owner of a mark registered on the Principal
Register, claiming “incontestable” rights in the mark for the
goods/services specified. An “incontestable” registration is conclusive
evidence of the validity of the registered mark, of the registration of
the mark, of the owner’s ownership of the mark and of the owner’s
exclusive right to use the mark with the goods/services. The claim of
incontestability is subject to certain limited exceptions set forth in
§§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). 15
U.S.C. §1065. Filing a Section 15 Declaration is optional. However,
there are certain rules governing when one may be filed. A §15 Affidavit
may not be filed until the mark has been in continuous use in commerce
for at least five consecutive years subsequent to the date of
registration for marks registered under the Act of 1946 (and subsequent
to the date of publication under §12(c) of the Trademark Act, 15 U.S.C.
§1062(c), for marks registered under the Acts of 1905 and 1881 for which
the benefits of the Act of 1946 have been claimed). The §15 Affidavit
must be executed and filed within one year following a 5-year period of
continuous use of the mark in commerce. Marks registered on the
Supplemental Register are not eligible for claims of incontestable
rights under §15. |
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Service Mark: A word, name, symbol or
device that is to indicate the source of the services and to distinguish
them from the services of others. A service mark is the same as a
trademark except that it identifies and distinguishes the source of a
service rather than a product. The terms "trademark" and "mark" are
often used to refer to both trademarks and service marks. |
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Source of Origin: Trademark indicate
source of origin. Consumers buy goods or obtain services under a
trademark or brand name because they expect to receive a certain quality
of goods or performance. It is this assurance or expectation of
repeatability of quality that causes customers to return. Consumers feel
at ease buying a nationally-known product having a trademark from the
dealer which offers the lowest price because they expect consistent
quality.
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State Trademark: All of the states have
trademark laws. There is a uniform state law that many states have
adopted. Other states have trademark laws with their own spin. The state
registration process is not very substantive and the rights generally
granted are not any more significant than what the party possessed at
common law. Also, since there is no examination except for form,
validity is left for the courts. |
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Statement Of Use: (SOU) - A sworn
statement signed by the applicant or a person authorized to sign on
behalf of the applicant attesting to use of the mark in commerce. With a
statement of use, the owner must submit: (1) a filing fee of $100 per
class of goods/services; and (2) one specimen showing use of the mark in
commerce for each class of goods/services. Statements of use must be
filed within 6 months from the date the USPTO issues a notice of
allowance. Failure to submit the statement of use in a timely manner
results in abandonment of the application. The Amendment to Allege Use
and the Statement of Use include the same information, and differ only
as to the time when it is filed.
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Standard Character Format: An applicant
may submit a standard character format representation of a mark if (1)
All letters and words in the mark are depicted in Latin characters; (2)
all numerals in the mark are depicted in Roman or Arabic numerals; (3)
the mark includes only common punctuation or diacritical marks; and (4)
the mark does not include a design element. |
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Stylized Mark: One type of depiction of
the mark sought to be registered. Another name for this type of mark is
“special form.” If the mark includes a particular style of lettering, or
a design or logo, the mark is considered to be stylized or in special
form. Therefore, applicants must select the "stylized or special form"
mark format when applying for these types of marks. The representation
of the mark's page should show a black and white image of the mark, no
larger than 3.5 inches by 3.5 inches (8 cm by 8 cm). The mark in special
form must be a substantially exact representation of the mark as it
appears on the specimen or on the foreign registration, as appropriate. |
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Subsequent Designation: A request by the holder of an international
trademark registration for an extension of protection of the
registration to additional Contracting Parties.
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Substantive Reasons For Refusal: There are
several substantive reasons for refusing registration of a mark. These
include: likelihood of confusion; primarily merely descriptive or
deceptively misdescriptive of the goods/services; primarily
geographically descriptive or primarily geographically deceptively;
misdescriptive of the goods/services; primarily merely a surname; or
mere ornamentation. This is not a complete list of all possible grounds
of refusal. |
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Suggestive Mark: A mark that, when applied
to the goods or services at issue, requires imagination, thought or
perception to reach a conclusion as to the nature of those goods or
services. |
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Supplemental Register: Secondary trademark
register for the USPTO. It allows for registration of certain marks that
are not eligible for registration on the Principal Register, but are
capable of distinguishing an applicant’s goods or services. Marks
registered on the Supplemental Register receive protection from
conflicting marks and other protections, but are excluded from receiving
the advantages of certain sections of the Trademark Act of 1946. The
excluded sections are listed in 15 U.S.C. §1094. If the applicant seeks
registration on the Supplemental Register, the application should state
that registration is requested on the Supplemental Register. If no
register is specified, the Office will presume that the applicant seeks
registration on the Principal Register. To register a mark on the
Supplemental Register, applicants must either be using the mark or
filing under Trademark Act Section 44 based on a foreign registration.
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Suspension Inquiry Letter: An Office
action inquiring as to the status of the matter that is the basis for
suspension of an application. The examining attorney will issue a
suspension inquiry letter after an application has been suspended for
six months or more, unless the information is available to the examining
attorney in the Office’s databases. If the applicant does not respond to
the suspension inquiry letter, the application will be abandoned. |
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Suspension Letter: Suspends
the action on an application. An application may be suspended for a
variety of reasons. These include waiting for the disposition of a cited
prior pending application to be determined or waiting for an assignment
of ownership to be recorded. Applicants do not need to respond to
suspension letters. |
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