4 Terms You Should Know When Filing A Trademark
Posted on: 21 November 2014
Do you have a business name, slogan, or logo that you are using to brand your company? Are you thinking about obtaining federal trademark rights over your mark? If so, there are some commonly used terms that you will need to become familiar with. This article will describe 4 of those terms.
Infringement
Trademark infringement occurs when another party does business using a mark that is the same as or similar to yours. If someone infringes on your trademark rights, it can cause confusion among the consumers of your product. It could actually cause you to lose business.
Typically, trademark infringement is not done intentionally. Usually, if you send a simple cease and desist letter, it will make the infringing party aware of their actions, and they will stop.
In some cases, stopping an infringer isn't easy. They are knowingly piggybacking on your brand. In this case, further legal action may be necessary.
Examining Attorney
The examining attorney is the USPTO representative who will be assigned to your trademark application. They are responsible for making sure that your trademark complies with the criteria laid out by the USPTO.
If the examining attorney finds that your mark does not comply, they will issue you an office action which details the reasons why your mark is being initially refused. From that point, you will make a response to the examining attorney that rebuts their argument.
If the attorney agrees with your arguments, then they will continue processing your application. If there is another issue, or if more information is needed, they can send you another office action.
While it may seem that the examining attorney's role is more combative and policing, this is not the case. Their job is to make sure that there is no potential infringement with your mark. They also are helping to prevent you from having legal issues later on as a result of using a mark that you should not have the rights to.
Office Action
After submitting your trademark application, it will be assigned to an examining attorney. The attorney will look over your application to determine whether or not it meets the criteria for registration.
If there is an issue with your trademark application, the examining attorney will send you a document known as an "office action." Office actions are arguments made against the registration of your mark.
This does not automatically mean that will not be able to receive trademark rights. What it means is that you need to respond to the office action in a way that address the United States Patent Office's concerns.
Sometimes the response can be providing information that the USPTO is asking for. In this case, responding is easy. At times, you may need to provide a lengthy legal argument if the examining attorney believes there is a likelihood of confusion with another mark. In either case, it's best to consult with an intellectual property attorney who can help you respond effectively.
Specimen
One of the main criteria the USPTO uses in judging whether or not trademark rights should be issued is whether or not the mark is actually being used in commerce. When you submit your trademark application, you will need to provide a specimen.
A specimen is an example of how your mark is being used to do business. It is proof that you are actually using the mark and not sitting on it just to prevent others from using it.
Here's an example. You own a beverage company and you just had a logo made. A proper specimen would be a picture of your logo on the label of your drink. This will show the USPTO that you are actually doing business using the mark.
If you are thinking about registering a trademark with the USPTO, you will become very familiar with these terms. However, the trademark process can be very complex. For more information, contact Altman & Martin or a similar firm.
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