U.S. Trademark Docketing Basics & Beyond
U.S. Trademark Docketing Basics & Beyond • Presenters: o Ann McCrackin, President, Black Hills IP, LLC o Shelley Cape, Quality Control Manager, Black Hills IP, LLC o Patti Giuliano, Trademark Paralegal, SLW
Wh What t is a tr trademark? k? • A word, name, phrase or symbol used to identify the source or origin of a good or service provided through commerce Ø Trademark vs. Service Mark Ø Patents protect the product or method itself
Wh What t is a tr trademark? k? • Duration Ø Continues forever unless abandoned • Trademark rights are established upon use Ø Common Law rights • Federal Registration
Wh What t makes a good tr trademark? k? • Strength of the mark • Similarity to other marks • Produces the desired mental connection • Ability to protect
Obtaining Federal Registration and Related Dock cketing • Application is filed with USPTO Ø Class based registration system • Multi-class applications allowed • Intent to Use (ITU) application vs Use Based application • Docket Actions o 3-6 month status check o Foreign filing priority date, if applicable
Obtaining Federal Registration and Related Dock cketing • Application is assigned to Examiner and examined • Office Action is issued o Priority Action versus standard Office Action • Docket Actions o Two Month Priority Deadline o Six Month Final Deadline o Docket 3-2-1 Reminders
Obtaining Federal Registration and Related Dock cketing • Response is filed o Due any time within 6 months o No fees associated with filing • Docket Actions o Confirm docketing of the status check • Final Office Action may be issued • Docket Actions o Early Response Deadline o Request for Reconsideration Date o Notice of Appeal Date
Obtaining Federal Registration and Related Dock cketing • Responding to Office Action may include o Divisional Ø Separates classes Ø Not the same thing as a patent divisional o Request for Reconsideration Ø In response to Final Office Action o Notice of Appeal Ø In response to Final Office Action • Docket Actions o In the situation of a divisional, all the dates carry to the child application, so be sure all deadlines and proper status checks are on your docket.
Obtaining Federal Registration and Related Dock cketing • Notice of Publication • Docket Actions o 30 day opposition period • Notice of Allowance o If application is ITU, then Applicant files Ø Statement of Use Ø Extension Request for filing Statement of Use • Docket Actions o Statement of Use is due 36 months from the Notice of Allowance o Extensions available in six month increments o Be sure you keep the extension deadline open if you file a Statement of Use before the deadline.
Ma Maintaining a Federal Registr trati tion • Combined Declaration of Use and Incontestability (Sections 8 & 15) o Filed between 5 and 6 years of registration • Docket Actions o Section 8 (or 71) must be filed by the 6 th year of registration o Section 15 may be filed any time after the 5 th year of registration o Six month grace period available for a fee • Combined Declaration of Use and Application for Renewal (Sections 8 & 9) o Filed every 10 years • Docket Actions o Section 8 (or 71) and Section 9 must be filed by the 10 year anniversary of the registration o Six month grace period available for a fee
Questions • Questions on Today’s Program o Please submitted your questions using the Q&A button on the control bar on your screen. • If you have questions regarding Black Hills IP’s services or processes, please contact: Jim Brophy Ph. 612-867-4018 jbrophy@blackhillsip.com
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