Transcript: USPTO Trademark Process. How does it work? In this video, we're talking about 1B or Intent to Use applications. These are applications that you file because you want to have your trademark registered, but your goods and services are not in use in commerce yet. Remember, you have to have your goods and services in commerce before your trademark will be registered, but you can file the application before the specimens are ready.
Today, we'll follow a 1B or Intent to Use application and what the process is. Go to the USPTO. gov website, click on this trademark tab. And it's going to take you to timeline to process an application.
1A we did in a different video. This is where your services and goods are currently in use in commerce. And you file the trademark application that way. Here, we're going to click on this. What this means is that it's not in use yet, but you plan on having it in use in commerce soon. But you want to protect it and start the process.
Remember, everything in red is what you do, everything in blue is what the USPTO does. You file your application; they're going to tell you it's going to take about 8 months right now. Here is the current time frame right now, they're reviewing things from last September Right now, it's May 28th, so it's about 8 months, a little bit less than 8 months.
This is the current wait time that we're looking at here. USPTO will review the application, and then they'll take one of two actions. They'll either approve the trademark application and publish it for opposition, or they'll issue an office action. Let's say they approve it. What they'll do is go down to publication assuming no one has filed an opposition to the trademark registration, they'll issue a notice of allowance.
This is when they say, "Okay, everything in this whole process is good, we just need to see proof of use." Here, you see all the red actions that you need to do in order to take the next steps. You can either file an extension saying, we're not ready, we need another six months before our specimens are ready or you file a Statement of Use, which is saying these specimens are currently in use right now, here is my declaration and the documents and the proof that they are currently in use in commerce. Or you don't do any of that, which in that case, if you don't file anything timely, your application will abandon.
And so, you could revive it, but it costs you money to revive it. But let's say you do file an extension. You can have up to five extensions of six months each. Once the notice of allowance is issued, you have approximately three years if you file five extensions to provide your statement of use.
Let's say you run out of extensions. What do you do? Well, you don't have any more options at that point. Unfortunately, if you don't file a statement of use by the end of that period, your application will abandon. You will have to file a new trademark application.
And you can file a new trademark application.
Let's say you do file a timely statement of use. The USPTO will review it, remember everything in blue, they will do. They will either approve the statement of use or they'll issue an office action saying this does not comply or this the specimens do not match the drawings.
And if it's approved then your application will be registered, and this goes on to filing the section 8 at the 5th year mark and Section 8 and 9 at the 10-year mark.
Let's say you do file the application and it doesn't go quite well and the USPTO issues you an office action, then you have two options. You can either submit a timely response. If it's approved, everything's resolved, then it moves on to publication for opposition. Assuming nobody opposes it, then it goes on to the notice of allowance and it follows that loop.
If they issue you a final office action, you can either respond to the final office action and/or file an appeal to the TTAB, Trademark Trials and Appeals Board.
Or if you do not fix it, then the application will be abandoned. Let's say you do file the TTAB appeal, TTAB will review it, either confirm the refusal, maintain the refusal, or reverse it.
That is, in a nutshell, the 1B application. As I mentioned previously, this nutshell is not so small, but you can go follow the same path and hover over these different elements and the USPTO will tell you a little bit more detail on what's required of each step.
HOW TO PROTECT YOUR TRADE SECRETS
The Non-Compete Clause Rule follows on the heels of several states effectively “outlawing” non-competition agreements. It prohibits, as “an unfair method of competition,” all non-competition clauses or agreements between workers and employers as of the effective date. Many fear that this rule means the end of protecting a company’s trade secrets.
This is Week 14 and Chapter 14 of our 20-part Atomic Habits by James Clear weekly read through! Get the book and join us every week!
Transcript: Hello! Welcome to week 14, chapter 14 of James Clear's Atomic Habits in this chapter, it states how to make good habits, inevitable and bad habits, impossible. He gives a story about Victor Hugo in the summer of 1830, where his publisher reminded him that he was committed to finishing a book by February of next year
What Victor Hugo did was he told his assistant put all his clothes away in a chest and lock it up that way He only had a shawl that he had available and because he didn't have any proper clothes to go outside with. He forced himself to stay inside and finish writing his novel because he couldn't access his clothes because he told his assistant to lock it away.
That is what psychologists call a commitment device. Victor Hugo, while he was in proper mindset, created a commitment device. In a moment of temptation, he would be committed to that event.
A commitment device that James Clear uses is when he goes to a restaurant, he tells the waiter before the food is served to split it in half and put half of it in a to go container while he eats the other half.
He notices that if he doesn't apply that commitment device prior to eating it, he says he's going to eat only half of it, but ends up eating a lot more. One example of this for nutrition is to buy smaller plates so you have smaller portions. Alright, that's it for week 14. We'll see you next week for week 15, chapter 15.
Have a great day. If you would like to follow along with the series, here is our Atomic Habits by James Clear playlist:
Thank you for being a part of our community, and we look forward to helping you safeguard your brand's identity and thrive in the world of trademarks!
Warm regards, J.J. Lee and the Trademark Lawyer Law Firm Team!
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Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
What are Disclaimers for Trademarks?
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights. A good example of this is disclaiming “café” if your services are for a café.
What is the Supplemental Registry?
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry. In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
What is the Date of First Use?
Two dates must be specified in a trademark application: Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade. Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
What is the Renewal Timeframe for a Trademark?
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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Founded by J.J. Lee, the Trademark Lawyer Law Firm, PLLC has successfully registered more than 6,500 trademarks with the USPTO. Dedicated to ensuring that your mark is protected from misuse or theft, our attorneys and staff work closely with clients, taking the time to understand the specific needs of their businesses. Professionally handling each matter with integrity, efficiency, and the personalized attention it deserves, you can rest assured that you have a team on your side who is committed to safeguarding your unique brand.
