Why Should I Have A Trademark Attorney Answer My Office Action?
What Should I Do If Someone Files An Opposition Against Me? (See below)
Is your trademark important? Is it worth protecting? For many businesses, a trademark
is one of their most valuable pieces of property. Trademarks are property rights
that gain value by being used right but may be difficult to protect, maintain, and
enforce. Both big and small businesses have trademarks that suffer from misuse by
others since really good names and symbols may seem like good names to others too.
Trademarks are rights that depends on being out in plain sight rather than locked
safely away so looking at strategy and the big picture is really important. Gambling
with investor’s money may not be a great idea. The tools to protect trademark rights
take time to learn how to use properly; time that business owners should probably
be using on their business rather than on learning a part of law that is very specialized.
Why Should I Have A Not Just Patents®Trademark Attorney Answer My Office Action?
Not Just Patents® Legal Services has a very high rate of success on trademark applications,
even those that have already been refused. We look at a lot of other attorneys records
to see what their success rates are and many general practitioner attorneys don’t
seem to do well with trademarks. Neither do the big form services. We gets ads from
attorneys that call themselves trademark attorneys but their record only shows one
or few registered marks or no record at all. Even though there are a lot of ads for
all these form services that are supposed to help people do it cheaper for themselves,
the refusal and abandonment rate for trademarks is still very high and doesn’t seem
to be getting better even though the ads of some of these big firms seem to have
big numbers. One of the most famous form services has had multiple class action suits
filed against them because of the difference between what people think they are getting
and what they really end up with. The number of applications may be very high but
the outcome and success rates must not be very high. A lot of Not Just Patents® Legal
Service clients first come to us because they have been refused and need help, many
of our clients are former clients of form services. We are able to fix a lot of refusals
and overcome the descriptiveness refusals or identification problems or other common
problems with trademark applications. Often after fixing problems, we usually go
on to help the same businesses find better ways to protect other intellectual property
assets such as other trademarks, patents and copyrights. A lot of repeat business
is a sure sign that people are happy with our services. Call and ask us some questions
and we can help you find ways to protect your rights in very budget conscious ways.
We are sure that you have a lot of other things to spend your money on than paying
high rates for a trademark attorney. (Do you really want an attorney who generally
takes ‘whatever’ to take the time to learn trademark law at your expense?)
Can every trademark refusal or office action be overcome? Sometimes trademark applications
have such huge problems with them, such as a strong likelihood of confusion problem
with a competitive trademark, that no answer will overcome the refusal or should
overcome. Getting refused and starting over with a better mark should be a much better
strategy than getting sued for a likelihood of confusion or getting your web site
shut down because it has a likelihood of confusion with someone else’s site. The
law and general rules that a trademark attorney examiner uses to write a refusal
is based on the same trademark law that the owner of the other mark could use to
sue you. The trademark office and trademark examiners are generally trying to prevent
future liability problems when they refuse applications; changes in trademark rules
and procedure that affects applications come directly from lawsuits and other proceedings.
There are often other courses of action that can be taken than to just give up on
having a trademark. Maybe an agreement can be worked out between parties to allow
both businesses to use a mark. Maybe the refused trademark owner was the first user
of the mark but second to apply in which case a cancellation proceeding may be the
answer. Maybe the mark needs to be changed in a way to make it no longer confusingly
similar. The answers to refusals often require a knowledge of the appropriate strategy
as well as trademark law.
Why was my trademark application refused? Approximately 70% of trademark applications
are refused at least once. Mistakes are easy to make and lots of applicants make
them. An unanswered office action means that the mark will go abandoned after the
6 month period to file a timely answer is over. The overall failure rate on trademark
applications is very high, between 40 and 50% never register. In theory any business
could obtain a trademark if guided properly but not necessarily the trademark that
they are trying to register, one big objective of the USPTO is to protect the rights
of those who have already registered. The typical mistakes made on trademark applications
are selecting trademarks that are too descriptive or too similar to other’s trademarks
or not following the application procedures properly. Not Just Patents® Legal Services
success rate is very high and most people are surprised that we don’t charge high
fees compared to many others but especially compared to the cost of failure without
help. The reason why your particular application was refused is very specific to
your application and often answering office actions takes knowing the law well and
knowing how to apply the facts to the law and knowing the proper procedure for continuing.
Some do-it-yourselfers make errors when they try to answer themselves in non-final
refusal and end up in more trouble than they started with making it very difficult
to overcome the refusal in one final answer and request for reconsideration. Trademark
examiners are well trained in following the law and procedure and often give good
guidance on what can be done to correct problems but being able to follow that guidance
sometimes requires more expertise than a first or second time applicant would have.
Often the guidance that the trademark examiner gives is to hire a good trademark
Why isn’t trademark law common sense so anyone can answer their own office actions?
Trademark law isn’t based on just common sense, it is based on providing reasonable
protection for those who have built business in trade using unique ways to identify
their services or their goods and it is based on a system that incorporates practices
based on uniformity within a country and with other countries. Incorporating words
and concepts like reasonable, protection, trade, unique, identify, services, and
goods into laws and practice requires a lot of rules so that business are treated
equally and fairly. Trademark law is based on hundreds of years of case law (how
courts have ruled on issues) that have been incorporated in very specific laws with
very specific rules of practice. The principles of trademark law are very similar
between countries and most countries have incorporated methods of working with other
countries’ trademark laws. For instance, most countries do not allow trademarks to
register that are too descriptive because this would give individual registrants
the right to exclude others from using descriptive words to describe their own products.
If all of a sudden you couldn’t call an automobile an automobile without paying someone
licensing fees, it would be very difficult while at the same time if you spent a
lot of money to build the image of a Rolls Royce as being a quality automobile and
someone else could call theirs a Rolls Royce or a Rauls Royce or a Rolls Royze or
something else very similar, you would want to be able to stop them. Likewise, if
you built a quality product and wanted to be able to sell it outside your original
selling area but couldn’t because the laws were dissimilar somewhere else and wouldn’t
protect you even if you tried, it would stifle businesses ability to grow and succeed.
Trademark law exists in its present form in order to protect trademarks which in
turn helps businesses build and keep goodwill.
What do I do if someone files a trademark opposition against me? For many businesses,
a trademark is one of their most valuable pieces of property. Gambling with investor’s
money may not be a great idea. The tools to protect trademark rights take time to
learn how to use properly; time that business owners should probably be using on
their business rather than on learning a part of law that is very specialized. This
is time to decide what your trademark is worth to you. Is it worth defending? It
might be a good time to talk to an experienced trademark attorney about strategies.
There is no canned advice that will apply to all trademark application issues and
an attorney who has never practiced before the TTAB (Trademark Trial and Appeal Board)
is really just guessing. Call Not Just Patents at 1-651-500-7590 and ask questions.
The initial conversation is usually free. We have never had anyone say that someone
quoted them less to protect their mark and our success record is public record.
If a mark is ‘Published for opposition’ does that mean it was opposed? Under U.S.
Trademark law a trademark or service mark must be published for opposition before
it can be registered on the Principal Register. This does not necessarily mean that
it will be opposed or has been opposed. TSDR 2.0 is a new database (update of 1.0)
from the USPTO that integrates TDR and TARR, as Trademark Status and Document Retrieval
(TSDR). TSDR (TSDR is at http://tsdr.uspto.gov/) provides access to viewing, printing,
and downloading snapshots of the data the USPTO stores about a trademark application
or registration. There are several different status indications that may appear on
TSDR after a mark has been published for opposition.
If the mark is being opposed, this is the status: “Status: An opposition after publication
is pending at the Trademark Trial and Appeal Board. For further information, see
TTABVUE on the Trademark Trial and Appeal Board web page.” See Trademark Oppposition
Steps for more information.
If someone is considering opposing the mark but wants more time and has filed for
an extension of time to oppose, this is the status: “Status: A request for an extension
of time to file an opposition has been filed with the Trademark Trial and Appeal
Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board
If no one has opposed the mark (or no one has file for an extension of time to oppose),
this is the status: “Status: Application has been published for opposition. The
opposition period begins on the date of publication.” This is the status message
for several weeks after the opposition period (30 days) is over too until the Notice
of Allowance or Certificate of Registration are given.
What does ‘Notification Of Letter Of Suspension E-Mailed’ mean? A suspension letter
suspends the action on an application. An application may be suspended for a variety
of reasons [if a conflict exists between the applicant’s mark and a mark in an earlier-filed
pending application, the USPTO will notify the applicant of the potential conflict
and suspend action on the application pending final resolution of the earlier-filed
application.]. 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 have to respond to suspension letters.
What does ‘Examiners Amendment -Written’ mean? An Examiner’s Amendment is a written
confirmation of an amendment made to a trademark application. The trademark examining
attorney assigned to the application will make the amendment after consultation with
an applicant or the applicant’s attorney. The examiner’s amendment is merely a written
confirmation of the agreement between the examining attorney and the applicant as
to the amendment, and it is also a notice that the amendment will be made. The applicant
need not respond to the examiner’s amendment unless the applicant wishes to make
further changes to the application.
Only about 30% of TEAS PLUS applications go straight to publication without an office
action so don’t be surprised if you are one of the 70% who receive a refusal of some
type. Call us at Not Just Patents® Legal Services. We can help. See Why Should I
Have A Trademark Attorney Answer My Office Action if you have already applied and
Call: 1-651-500-7590 or email: firstname.lastname@example.org. This site is for informational
purposes only and is provided without warranties, express or implied, regarding the
information's accuracy, timeliness, or completeness and does not constitute legal
advice. No attorney/client relationship exists without a written contract between
Not Just Patents LLC and its client. Past performance is no guarantee of future results.
Call 1-651-500-7590 or email email@example.com or ContactTrademark.com for
Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent
or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.
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