1. Trademark Protection Process Selection and US Registration 2006

2. Trademark Protection Overview Selection –Choosing a mark that can be protected from use by others –Choosing a mark in which others do not already own rights Registration –Reserving the right to use the mark when the business is ready Protectability –Marks that describe the goods or services are more difficult and costly to protect –Marks that name a completely new category of goods should be paired with a new generic term to avoid losing control of the mark

3. Trademark Protection Overview Selection –Choosing a mark that can be protected from use by others –Choosing a mark in which others do not already own rights Registration –Reserving the right to use the mark when the business is ready Availability –Others can attain rights through either use or registration Search the USPTO Search other sources for “common law” rights –Assessment of risk depends on similarity of marks and goods, renown of the earlier mark, and other considerations

4. Trademark Protection Overview Selection –Choosing a mark that can be protected from use by others –Choosing a mark in which others do not already own rights Registration –Reserving the right to use the mark when the business is ready Registration –File a federal intent-to- use application ASAP Upon registration, rights date from filing Showing up in others’ searches may deter competing uses –Respond to objections and submit proof of use of the mark in order to secure your ®

5. Federal Registration Process Filing –Minimal requirements –Mark, goods, and ownership are key Examination Publication Opposition Allowance/Use Registration Filing –Must meet minimum requirements to secure the filing (priority) date –Mark usually cannot be changed after filing –Goods cannot be expanded after filing –Changes of ownership can be burdensome or even can invalidate the application

6. Federal Registration Process Filing Examination –Office Action typically issued after 6-7 mos. –Allowed 6 mos. to respond/appeal Publication Opposition Allowance/Use Registration Examination –Common issues: Clarifying the goods, esp. when technical Paying additional fees when goods cover multiple “classes” –Less common issues: Mark rejected as merely descriptive Mark rejected as likely to cause confusion with an earlier filed mark

7. Federal Registration Process Filing Examination –Office Action typically issued after 5-6 mos. –Allowed 6 mos. to respond/appeal Publication Opposition Allowance/Use Registration Examination –Response process: Business decision: fight for broader rights (more time and $) or take what the Office gives? Many legal strategy issues come into play (affects the range of $) Responses take 1 to several weeks to draft and file; Examiner reads within 2-3 mos.

8. Federal Registration Process Filing Examination –Office Action typically issued after 5-6 mos. –Allowed 6 mos. to respond/appeal Publication Opposition Allowance/Use Registration Examination –Tough cases: Examiner issues a final refusal, you have the option to appeal to the Trademark Trial and Appeal Board (cost varies depending on the complexity of the case) You also can (1) give in on any outstanding requirements or (2) drop the application and rely on common law rights

9. Federal Registration Process Filing Examination Publication –3-4 mos. after approval Opposition –Within 30 days after publication Allowance/Use Registration Publication –Mark is published for opposition after the Examiner approves it Opposition –30-day deadline is extendable –Can be based on common law rights –Mini-litigation, but no monetary remedies or injunction can issue

10. Federal Registration Process Filing Examination Publication Opposition Allowance/Use –Must respond to Notice of Allowance within 6 mos. with proof of use Registration Allowance –Notice issues a few mos. after the end of the opposition period (or post-opposition) –Deadline is extendable in 6-month increments up to a max. of 3 years (the fees can add up!) –Must use on all goods listed (or delete them) before ® will issue

11. Federal Registration Process Filing Examination Publication Opposition Allowance/Use –Must respond to Notice of Allowance within 6 mos. with proof of use Registration –Issues about 3 mos. after approval of the Statement of Use –Valid for 10 years but further proof of use is required after 6 years –May be attacked based on earlier rights, non-use or generic meaning, or, during the first 5 years, descriptiveness

12. File ITU Application Summary: Registration Process 6-7 Months: Examination No Objection: Publication Scheduled Opposition Deadline: 30 days from Publication If No Opposition: Notice of Allowance 6 Months from Allowance: Statement of Use Due Statement of Use is Examined and, if accepted, Registration Issues! If there are objections, have 6 months to respond. Potential Opposer can Extend Deadline 90 Days If Examiner Objects to Specimens or Statement of Use, have 6 Months to “cure.”