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PRESENTATION BY PAUL F GAST TRADEMARK FILING TIPS.

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Presentation on theme: "PRESENTATION BY PAUL F GAST TRADEMARK FILING TIPS."— Presentation transcript:

1 PRESENTATION BY PAUL F GAST TRADEMARK FILING TIPS

2 READ THE STATUTE!

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4 THE ROLE OF THE TRADEMARK EXAMINING ATTORNEY

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7 READ THE FORM, READ THE FORM, READ THE FORM!

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9 TEAS PLUS This stands for Trademark Electronic Application System Plus. The Trademark Office has a three tiered structure for charging fees per class for filing a Trademark application fee. If you file using a paper file by regular mail, the fee is $375 per class. If you file online using a computer to file the application, the fee drops to $325 per class. If you file using a computer with the TEAS PLUS system, the fee drops to $275 per class. If you sign onto the Trademark System online at www.uspto.gov, it automatically defaults to TEAS PLUS. Using TEAS PLUS, you agree to use the online filing system to identify your goods or services, or both. You also agree to file using an online system to carry out all your business with the Trademark Office. What this does for the Trademark Office is to carry out your business in a much quicker and more direct manner that makes it easier to determine in what classes your goods or service belong and to determine that they are correctly identified.

10 When you use TEAS PLUS, you are routed to the online manual to properly identify your goods or services. To use the system, go to http://tess2.uspto.gov/netahtml/tidm.htm. Then key in the general item for which you are looking and place a dollar sign after the item. This will generate a listing of all the goods or services with that term along with the appropriate class to identify it. For instance, for consulting or consultation, key in consult$. Use the root of the term followed by the dollar sign. This will give you the plural of the term and will identify the correct classes. If you identify it using the entire format for the term, for instance consulting, this will not provide the identification for consultation. Likewise, if you key in purses, it will not get you all the identifications using purse$. Therefore, always use the singular and the root of the involved word. You may also use a combination of terms, for instance, tennis shoe$ to identify particular items rather than just to obtain the large overall terms. http://tess2.uspto.gov/netahtml/tidm.htm When you use the TEAS PLUS system, make sure that you also include translations, consent statements, claims of prior registrations owned, and any other appropriate items that may be involved with your filing. These items are listed in the form when you file. If you do not include these items, you will be removed from the TEAS PLUS system and be charged an additional filing fee of $50 per class when the examining attorney reviews your file.

11 AMEND YOUR GOODS

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14 FILE A COMPLETE RESPONSE OR THE APPLICATION IS SUBJECT TO A RULING OF ABANDONMENT

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16 FILE A GOOD AND APPROPRIATE SPECIMEN

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18 CONDUCT AT LEAST A DEAD ON CITE SEARCH BEFORE YOU FILE

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20 NEGOTIATING CONSENTS

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22 ARGUING DILUTION OR NON DISCRIPTIVENESS

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24 CLAIM OWNERSHIP PROPERLY

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26 HAVE YOU SEARCHED CLASS 42?

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28 CONSENT STATEMENTS: WHAT ARE THEY AND WHEN ARE THEY REQUIRED?

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30 TITLE OF A SINGLE WORK:

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33 SHOULD YOU FILE A MULTIPLE CLASS APPLICATION?

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36 REMEMBER YOU CAN GET IDENTIFICATION HELP:

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38 A WORD ABOUT PROVIDING TRADEMARK ADVICE:

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