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
Transcript
Slide 1
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
Slide 2
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.
Slide 3
Three Ways to File your Application On PAPER On line using TEAS
On line using TEAS PLUS
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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 Trademarks P.O. Box 1451 Alexandria, 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.
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Filing with TEAS Filing fee is $325 per international class
Help screens 24 hour access Instant receipt
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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
Slide 7
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
Slide 8
What is a Complete Application? (page 1) Applicants 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
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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
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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
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Requirement to Receive Emails All Teas Plus applicants must
agree to receive communications from the USPTO by e-mail throughout
the examination process
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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.
Slide 13
FILINGS UNDER THE MADRID PROTOCOL What is the Madrid Protocol?
An international trademark filing system that allows trademark
owners to apply for an international registration 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.
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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 doesnt already have one. The business then
determines: Which country or countries it is or will be doing
business in; Which countrys markets are likely to feature pirated
copies of the business goods; Whether those countries are members
of the protocol; and
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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 countrys 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. WIPOs 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.Directory of Intellectual Property
Offices
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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.
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FILINGS UNDER THE MADRID PROTOCOL Applying for an international
registration: use either the electronic application for
registration, available at the USPTOs web site, or;electronic
application for registration a paper form provided by the World
Intellectual Property Organization, (WIPO) the international
organization that administers the Madrid protocol.paper form
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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 Madrid web
site
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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 wont 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.
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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.electronic form
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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.
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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.
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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.
Slide 24
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.
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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.
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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.
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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.
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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.
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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.
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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.
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MADRID FEE CALCULATOR
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MADRID APPLICATION
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Questions? You need Trademark Assistance! Trademark Assistance
Center : 1-800-786-9199 Local: (571) 272-9250
[email protected]
Slide 34
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
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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
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Trademark Assistance Center (cont.) Customer Problem Resolution
Via E-mail: [email protected] Will respond within
24 hours
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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
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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
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THANK YOU! Please visit us at www.USPTO.gov www.USPTO.gov