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Patent and Trademark Attorney Sean Detweiler Discusses Possible Risks from Using Low-Cost Trademark Registration Services in New Article 03/21/2017

Posted by Morse Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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Sean D. Detweiler (SDD)In the past 5 or so years, there have been a number of online, low-cost, entrants into the trademark registration space. Companies like The Trademark Company, TTC Business Solutions, and others, promote low-cost trademark registration services. However, questions have surfaced as to whether such services are operating ethically.

Sean Detweiler discusses recent charges brought against low-cost trademark registration companies by the USPTO and the potential risks from using one of these services. He states that:

It is true that the counseling and advice will likely cost more than going it on your own, or using one of these low-cost services that claim an attorney is involved. However, there is clearly a substantial risk in skipping the advice and counseling that experienced trademark attorneys offer, and either filing trademark applications pro se (as an individual, on your own) or using some of the low-cost online trademark registration providers, such as The Trademark Company.

Read the full article, “Recent Developments Should Have Trademark Owners Thinking Twice About Using Low-Cost Registration Services” for more information.

Changes to Canadian Trademark Law 11/17/2015

Posted by Morse Barnes-Brown Pendleton in Intellectual Property, Legal Developments, New Resources.
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On June 19, 2014, Bill C-31, Canada’s Economic Action Plan 2014 Act, No. 1, received Royal Assent. The Bill contains a large series of amendments to Canada’s Trade-marks Act and will allow Canada to (among other things) accede to three key international treaties: (1) the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol); (2) the Singapore Treaty on the Law of Trademarks (the Singapore Treaty); and (3) the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (the Nice Agreement).

The new regime is expected to come into force by late 2016 or early 2017. Those already owning or considering registration of a Canadian trademark should be aware of these new changes to Canadian trademark law. Read the full article here.

For more information on trademark matters, please contact Thomas Dunn or Sean Detweiler.

USPTO Reduces Certain Trademark Filing Fees 01/29/2015

Posted by Morse Barnes-Brown Pendleton in Intellectual Property, Legal Developments.
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By: Tom Dunn

Trademark Attorney Thomas DunnOn January 17, 2015, the USPTO reduced certain trademark filing fees and introduced a new electronic application filing option.

The fee for both the TEAS Plus application and the TEAS Regular application are reduced by $50. The TEAS Reduced Fee (TEAS RF) application is a new filing option, and one may still submit a paper filing, as well:

Application for registration, per international class
(paper filing)
Application for registration, per international class
(electronic filing, TEAS application)
Application for registration, per international class
(electronic filing, TEAS RF application)
Application for registration, per international class
(electronic filing, TEAS Plus application)

Each of the three TEAS options comes with a set of requirements; the lower the fee, the higher the number of requirements. (TEAS is an acronym for Trademark Electronic Application System.)

For example, to take advantage of the $225 fee per class of goods/services in the TEAS Plus application, one must meet the following requirements: include an e-mail address and authorization for the USPTO to send application-related e-mail correspondence; agree to file related submissions, such as responses to Office actions, electronically via TEAS; select an identification of goods/services from the USPTO Trademark ID Manual; pay all fees at the time of filing; and provide certain statements regarding the mark in the application as-filed, if applicable (e.g., translation statement, claim of ownership, color claim and description).

Only a subset of the foregoing requirements pertains to the TEAS RF application, while none pertain to the TEAS application.

If one files a TEAS Plus or TEAS RF application but does not satisfy the relevant requirements the applicant will be required to submit an additional processing fee of $50 per class of goods or services, and the application will then be handled as a TEAS application.

The fee to electronically renew a trademark registration has been reduced by $100, to $300 per class of goods/services, as well.

Please see the Reduced Fee FAQs page for more information about the new filing fees and the Trademark Fee Information page for information on payment options and a listing of other trademark fees.

To discuss trademark filing options and related matters, please contact Tom Dunn by email at tdunn@mbbp.com or by phone at (781) 697-2248.

Protecting Your Trademark: Top 10 Reasons To Register Your Trademark In The U.S. 06/17/2014

Posted by Morse Barnes-Brown Pendleton in Intellectual Property.
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Trademark Attorney Thomas DunnBy: Tom Dunn

Trademark registration is not required in the United States, however, owning a federal trademark registration enhances rights in a mark.  Here are the top ten reasons why you should register your mark with the United States Patent and Trademark Office:

  1. Prevention:  Registering your mark can prevent potential conflicts from arising. Prospective applicants or their counsel often search the USPTO’s free online trademark registry to determine whether a proposed mark is available. Prospective applicants who encounter your mark might be deterred some from filing a mark that conflicts with yours.
  2. Priority (U.S.): Upon registration, the filing affords you nationwide priority over all others who filed after you, except: (1) parties who used the mark before your filing date; and (2) parties who are entitled to an earlier priority filing date based on a foreign application.
  3. Priority (Foreign):  You have six months from your U.S. filing date within which to file in many foreign jurisdictions and claim as a priority filing date the date of your first-filed application in the U.S. for the same mark for use with the same goods and/or services. For example, if you apply in the U.S. on May 15, you may apply for the same mark for use with the same goods and/or services in China up to November 15 and claim a priority filing date in China of May 15.  Your application in China will take priority over all others who filed in China during those six months.
  4. Presumption:  Once on file, it is presumed your rights extend throughout the United States and its Territories.  Nationwide presumptive rights, as contrasted with geographic limitations inherent in unregistered marks, can be critically important in avoiding confusion in domestic markets in which you currently operate and into which you intend to expand.
  5. Protection:  Registering your mark protects against the registration of a third party’s confusingly similar mark for related goods and/or services by leveraging resources of the USPTO, which is charged with refusing registration of marks that conflict with prior pending and registered marks.
  6. Presentation:  Registration affords you the right to use the ® symbol when displaying your mark. Use of the ® symbol communicates to your current and prospective clients you are serious about protecting your intellectual property rights.  Use of the ® symbol is required at the time an enforcement action arises in order to recover profits and damages in federal court.
  7. Property: Your Certificate of Registration constitutes prima facie evidence of your exclusive ownership of the mark for use with the goods and/or services identified in the registration. After five years of continuous use your property right becomes “incontestable” by operation of law and can no longer be challenged by any third party claiming your mark is likely to cause or is causing confusion with their mark.
  8. Plaintiff:  Federal trademark registration grants you the right to sue for trademark infringement under federal law. Other claims might be available depending on the facts, such as unfair competition, false advertisement, etc., but Section 32 of the Trademark Act, which governs infringement claims, expressly provides for relief to “the registrant” only.
  9. Profits:  When a violation of any right of the registrant of a mark registered in the USPTO is established in a civil action, the registrant may recover certain statutory damages, including defendant’s profits. If you do not register your mark, you cannot recover lost profits.
  10. Ports:  You may record your federal trademark registration with U.S. Customs and Border Protection to block imports that infringe your mark or are counterfeits of your goods.

For more information on trademark registration and other trademark topics, please contact Tom Dunn.

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