IP Law Bulletin

When last we met, you had successfully navigated the trademark-examination process and were gazing with pride and happiness upon your Certificate of Registration from the United States Patent and Trademark Office.

Following the conclusion of trademark prosecution, your certificate of registration has arrived in the mail. Now what? Some lawyers still advise their clients to keep the certificate “in a safe place,” but one wonders how much longer paper certificates will even be prepared and issued. Maybe they will last as long as (paper) newspapers. After all, the information contained on the paper certificate is readily available online at the web site of the U.S. Patent and Trademark Office (USPTO), and either a link to the USPTO web site or a printout of the online record will serve the same evidentiary purpose as the paper certificate.

The articles in our earlier editions of the IP Bulletin addressed eight of the most commonly asked questions that arise when completing a U.S. trademark application filing. Once the application has been filed with the USPTO, substantive examination by an examining attorney from the USPTO will commence in due course. In stark contrast to the long waits experienced by patent applicants, the average time between application filing and the issuance of a first Office Action is only 2.8 months at the time of this publication. The average total pendency for a trademark application is only 10.3 months, which indicates that the application is either accepted or rejected by the examining attorney in less than a year.

The article in our May edition of the IP Bulletin addressed four of the eight most commonly asked questions that arise when completing a U.S. trademark application filing. More particularly, we considered the trademark application form that should be used, the classes of goods or services to include in the application, the items included in the description of goods and services, and appropriate and acceptable specimen of use to be included as part of the application. The other four most commonly asked questions are tackled in this article, including: (5) should I include color or design features as part of my trademark application; (6) what is my filing basis; (7) what is my date of first use; and (8) what other considerations should I be making when preparing my U.S. trademark application?

Our last article in Nutter’s How-to Series on Branding contemplated various territorial considerations that go into deciding where to file a trademark application. Even when a trademark applicant desires protection in multiple countries, or one or more states, most often our readers in this situation will want to first start by filing a United States trademark application. To that end, in our next two articles we address eight of the most commonly asked questions that arise when completing a U.S. trademark application filing.

Once you’ve checked off the five “Cs” and decided on the trademark you want to protect as part of building your brand, you next must decide where you want to file for protection. You see, even though Thomas Friedman has been driving the globalization “Lexus” since before the 21st century, and the reaches of the geography-obliterating, all-encompassing Internet and Mother Web connects Afghanistan to Zimbabwe, trademark rights themselves remain territorial. A single trademark application will not provide global property rights. This fourth article of Nutter’s branding series explores a trademark applicant’s various options regarding where to file a trademark application.

After banging your head against the wall for weeks or even months, your team finally has come up with a name for your new product line. You can see it now—in big lights…on a billboard…in Times Square! Fire up the marketing team, call the printer, order t-shirts, fly banners.

In our first installment, we considered what a trademark is and its relation to a brand. To recap, a trademark is a source-identifier: (in the drugstore) “Ooooh, there’s my CREST toothpaste! I don’t know who makes it, but I do know it will always come from the same place and will always make my mouth feel minty-fresh!”