Trademark Filing

Making Your Domain Your Trademark

Domains and trademarks are an issue for both existing businesses and new start ups. Most businesses and also individuals wantsto have their own domain.

A domain is a name which distinguishes IP addresses. For you to recognize a particular web page, domain names are needed. Every domain name has a suffix after it to indicate its category or what they call “top level domain,” (TLD). Some of the common categorical suffixes are:

.gov -denotes government institutions
.ca -denotes Canadian territories
.edu -denotes educational institutions
.net -denotes network associations
.mil -denotes the Military group
.com -denotes commercial establishments
.me – denotes personal use

A lot of people wish to secure their own domain name. While some wish to do this for personal use, the majority use a purchased domain as a marketing tool for their business.

If you are choosing a domain name for business use, you must first pick an identifier from the above-mentioned suffixes. For businesses – selecting the .com is the best choice, For personal use – select .me.

For the domain name you can:

Choose your own business name. For instance, your business name is “Fast Printing” then you can have it as a domain name. This is an essential first step to protecting your brand online.
Choose a domain name for every trademark you own.
Choose a new domain name (optional after steps 1 & 2) . If you decide to choose a new domain name, make sure that the name itself is “catchy” and your target market will easily remember it. In addition, your new domain name should have a link to the product or service you are offering. Most importantly, it should not have the same domain name as others.

You can have more than one domain name assocaited with your business – particularly if you have multiple product lines or services and these have separate trademarks.

Do not select a domain name that is the same as an existing trademark. For businesses, who have an existing business name, the chances are minimal (but still possible) that your proposed domain name conflicts with an existing trademark. Note – if you have an issue with the domain name you may also have an issue with your business name as well. In which case, this should be referred to a trademark attorney asap. A trademark online search is recommended

There are business owners who are not satisfied with having their own domain names. Some want their domain name to be trademarked.

Who says you cannot make your domain a trademark?! You can.

While some people argue that it is difficult to make your domain a trademark, there are those who disagree. With proper rules to follow you can make your domain a trademark. If your doman name is a personal name then you may be able to trademark a name.

Select a domain name that is distinct. By doing so, you will not encounter much difficulty in protecting your domain name as trademarks. Additionally, domain names that employ geographic identifiers or surnames are not likely to be given trademark protection.

You need to verify your domain name. There should not be two of the same domain name, if this is the case then your domain name trademark application will be disapproved. Hence, it is highly recommended that you undertake a thorough trademark search to see if your domain name has not yet been taken.

After you have gone through with your “domain name search,” and you found out that your domain name is exclusive for your use only, then the next step is to trademark your domain name

Some say that it is not necessary to have a domain name trademarked and registered. However, the majority of entrepreneurs recommend that you trademark and register your domain name. By doing so, you will have authority to implement your rights when someone attempts to use your domain name.

To help you with the registration process, it is recommended that you can seek professional help from a trademark attorney who specializes in trademarking and who is also knowledgeable about the domain name registration.

A domain name can be trademarked with the United States Patent and Trademark Office (USPTO). You need to obtain an application from the said office or better do the trademark filing online. Once you have completed an application form and complied with the requirements given by the office then you can submit it for evaluation.

The evaluation may take months after you will be given a result. As you wait for the decision, you may temporarily use the TM symbol to notify the public that you have rights over the domain name. Once the decision has been out and your application was approved then you can now lawfully use the trademark symbol, “®”.

Once you have registered for your domain name as a trademark, you will have ten years protection. However, during the fifth or sixth month you will be asked to file an affirmation to continue the registration. If you do not file within the specified time, then your registration may be withdrawn.

There is no problem if you want to trademark your domain name; all you need to do is undertake the necessary steps to research both trademarks (a trademark search) and a domain name search. Having a domain name that is trademarked provides protection from others who may seek to register domains for their own benefit that rely on the brands, marketing and goodwill of your business.

Trademark Filing Basis – Summary

Over the last period I have written six (6) posts describing the basics of Trademark Filing.

This post links to all six, providing a directory about these basic steps.

Part 1 – Introduction

Part 2 – Hiring an Attorney

Part 3 – Application Fees

Part 4 – Trademark Filing and Specimens

Part 5 – Signature and after filing

Part 6 – Getting your trademark and maintaining registration

These are just the basics, and as always you should ALWAYS consult a Trademark Attorney or trademark professional for advice and information particular to your circumstances.

For a useful guide to trademark filing go get the full e-report Trademark Filing in 10 Easy Steps.

Trademark Filing Basics – Part 6: Getting your Trademark and Maintaining your Registration

Certificate of Registration or Notice of Allowance
If the Mark is published based upon the actual use of the Mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the Mark and issue a registration certificate in about twelve (12) weeks after the date the Mark was published.

If the Mark is published based upon the applicant’s bona fide intention to use the Mark in commerce, the USPTO will issue a Notice of Allowance about twelve (12) weeks after the date the mark was published, if no party files either an opposition or request to extend the time to oppose.

The applicant then has six (6) months from the date of the Notice of Allowance to either:

use the mark in commerce and submit a Statement of Use; or
request a six-month Extension of Time to file a Statement of Use.

Both forms are available at http://www.uspto.gov/teas/index. html.

If the Statement of Use is filed and approved, the USPTO will issue the registration certificate.

Additional requirements for “Intent to Use” applications

Before the USPTO will register a mark that is based upon a bona fide intention to use the mark in commerce, the owner must:

use the mark in commerce; and
file an Allegation of Use.

Allegation of Use

An “Allegation of Use” is a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With the Allegation of Use, the owner must submit:

a filing fee of $100 per class of goods/services; and
one specimen showing use of the mark in commerce for each class of goods/services.

A form for filing the allegation of use is available at http:// www.uspto.gov/teas/index.html.

You may file the Allegation of Use only

on or before the day the examining attorney approves the mark for publication in the Official Gazette (an Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use); or
on or after the day the USPTO issues the Notice of Allowance (an Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use).

The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when it is filed. If you file an Allegation of Use between the period after the mark is approved for publication but before the Notice of Allowance is issued, the USPTO will return it.

Deadlines for filing the Statement of Use after the Notice of Allowance

Once the USPTO issues the Notice of Allowance, you have six (6) months to file the Statement of Use. The six-month period runs from the date the USPTO issues the Notice of Allowance, not the date you receive it.

If you have not used the mark in commerce, you must file a Request for an Extension of Time to File a Statement of Use (Extension Request) before the end of the six-month period, or the application will be declared “abandoned.”

Request for an Extension of Time to file a Statement of Use

An Extension Request is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner, stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce.
A filing fee of $150 per class of goods/services must accompany the Extension Request.

The form for filing the Extension Request is available at http://www.uspto.gov/teas/index.html.

The Extension Request, if granted, gives the owner an additional six (6) months to either:

use the mark in commerce and file a Statement of Use;

file another Extension Request.

You may continue to file Extension Requests every six (6) months. However, you must use the mark and file a Statement of Use within three (3) years of the date the Notice of Allowance issues. The USPTO will not register a mark if, after thirty-six (36) months of the mailing date of the Notice of Allowance, no Statement of Use has been filed.

Maintaining a Federal Trademark Registration

Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times.

In general, the owner of a registration must periodically file:

Affidavits of Continued Use or Excusable Nonuse and
Applications for Renewal.

Forms for filing these documents are available at http://www. uspto.gov/teas/.

Trademark Filing Basics – Part 5: Signature and What happens after filing

Signature
Authorised signatories

A person who is properly authorized to sign a verification on behalf of the applicant is:

a person with legal authority to bind the applicant; or
a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or
an attorney as who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.

Signing a TEAS application
In a TEAS application, you do not apply a conventional signature. Instead, you enter a “symbol” that you have adopted as a signature. The USPTO will accept any combination of letters, numbers, spaces and/or punctuation marks placed between two forward slash (“/”) symbols. Examples of acceptable signatures for TEAS applications include /john doe/, /drl/, and /544-4925/.

After filing a trademark application

Legal and Procedural review of the application
Search for conflicting marks
Publication for Opposition

Legal and Procedural review of the application
After the USPTO determines that you have met the minimum filing requirements, the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes and includes all required fees.

A complete examination includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail).

If the examining attorney sends an Office action, the applicant’s response to the Office action must be received in the Office within six months of the mailing date of the Office action, or the application will be declared abandoned.

If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO.

Search for conflicting marks

After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO.

The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application.

The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

the similarity of the marks; and
the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/ or services related.

If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

Search before filing

You should search the USPTO records before filing your application to determine if any party is already claiming rights in a particular mark. You may conduct a search on-line at http://tess2.uspto.gov/ or by visiting the USPTO Public Search Facility – Madison East, 1 st Floor, 600 Dulany Street, Alexandria, Virginia. The library is open between 8:00 a.m. – 8:00 p.m., Monday through Friday. Both on-line searching and use of the Public Search Facility are free.
Additionally, registered and pending trademarks may be searched at a Patent and Trademark Depository Library (PTDL). PTDLs are located throughout the U.S. See PTDL for a listing of their locations, or http://www.uspto.gov/products/ library/ptdl/locations/index.jsp.
Private trademark search firms will conduct a search for a fee. A listing of search firms can be found in the Yellow Pages of local phone directories or through an Internet search. The USPTO does not assist you in selecting a search firm.

We recommend Trademark Express (affiliate link) or comprehensive trademark search services.

You can check the status of any pending application or registration through the Trademark Application and Registration Retrieval (TARR) database, available on-line at http://tarr.uspto.gov. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1800-786-9199, to request a status check.

Other reasons the examining attorney might refuse my mark

In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:

primarily merely descriptive or deceptively mis-descriptive of the goods/service
primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/ services;
primarily merely a surname; or
ornamental.

This is not a complete list of all possible grounds of refusal. See Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP), available at http://tess2.uspto.gov/tmdb/ tmep/, for a complete discussion of the grounds for refusal of registration of a mark.

Publication for Opposition

If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.

The USPTO will send a Notice of Publicaton to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.

Using Registered Trademarks Online: Real Estate Marketing on the Internet in Australia

A recent Federal Court case demonstrates how effective trade mark registration can be in providing a competitive edge in the marketplace. The case, Mantra Group Pty Ltd v Tailly Pty Ltd, considered the use of trade marks on the internet in the context of the real estate industry….

For more information demonstrating… that owners who register building name trade marks essentially have monopoly rights, as they are entitled to prevent competitors from using the name, even if the competitor also deals with property located in the building, See more (external link). Patrick

Trademark Filing in 10 Easy Steps

Making Your Domain Your Trademark

Trademark Filing Basis – Summary

Trademark Filing Basics – Part 6: Getting your Trademark and Maintaining your Registration

Trademark Filing Basics – Part 5: Signature and What happens after filing

Using Registered Trademarks Online: Real Estate Marketing on the Internet in Australia

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