smar(tm)ark® trademark newsletter from Erik Pelton

May 2018

Our work helping businesses build strong brands is tremendously rewarding. Watching businesses and their brands grow is incredibly fun and rewarding - whether the client is a restaurant, software company, real estate professional, craft beer store, or fitness studio.

But our most rewarding work comes supporting veteran (and military spouse) owned businesses. As part of this work, I am pleased to share that last week our firm was named to District of Columbia Courts' Capital Pro Bono Honor Roll for 4th year in a row. "We salute you for using your talents and expertise to help those unable to afford an attorney, to ensure that they too have equal access to justice."

Legal services are challenging for many to access, and the more businesses that are able to take part in the intellectual property protections our systems provide, the stronger those systems will be.

Using the Proper Trademark Symbols

Do you know the difference between TM, SM, and ® and when each one should be used?

Listen to my latest podcast episode for details

Trademark Registration Timeline

Each trademark application with the USPTO is unique. The application process is lengthy and complex, and features multiple stages or steps. For some applications it is much longer and features additional steps . For example, any one of the following will delay the application process:

Office Action
Requests for Reconsideration
Ex Parte Appeal
Extension of Time to Oppose
Notice Opposition
Suspension
Notice of Allowance

When an application is filed based on use of the mark in commerce and when there are no hiccups, the fastest an application can be issued today is seven months after the application filing. For example, see the record for Serial No. 5433300 for NETSCAN. The application was filed Aug. 30, 2017. The registration was issued March 26, 2018, two hundred and nine (209) days later. This "clean" application which involved no response or input from the applicant after the initial filing still went through various phases and procedures at the USPTO, as illustrated in the TSDR records:

	Aug. 30, 2017	TEAS Plus New Application
	Aug. 30, 2017	Specimen
	Aug. 30, 2017	Drawing
	Dec. 05, 2017	XSearch Search Summary
	Dec. 06, 2017	TRAM Snapshot of App at Pub for Oppostn
	Dec. 20, 2017	Notification Of Notice of Publication
	Dec. 20, 2017	Notice of Publication
	Jan. 09, 2018	OG Publication Confirmation
	Jan. 27, 2018	Teas Change of Owner Address
	Mar. 27, 2018	Registration Certificate

Most applications experience at least some delay or hiccup. Some experience many hiccups and delays. (One application of mine lasted nine years.) The uncertain and long process is just one reason that an experienced attorney is a great benefit to assist trademark applicants navigating the USPTO trademark application.

Popular phrases that come after tragedies

generally do not function as trademarks

While this headline is from a recent article takes place in Canada, similar tales have happened in the US in recent years: Humboldt Broncos president displeased by league's trademark application filings for #HUMBOLDTSTRONG and #sticksontheporch after tragedy struck the local minor league hockey team.

Can we just agree that catchphrases that develop organically should not be protected by anyone generally?

No one should commercialize these phrases or seek to exclude others from using them. Such marks are likely not be protectable as trademarks (they don't function to indicate the source of a product or service) and even if they did, asserting any exclusive claim to the phrase is in poor taste. Legally, the more commonly a term or slogan is used in everyday speech, the less likely the public will use it to identify only one source and the less likely the term or slogan will be recognized by purchasers as a trademark or service mark. See In re Hulting, 107 USPQ2d at 1177 (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.

See also my past posts on:

I'll be hosting a round table next week at the International Trademark Association's annual meeting on the topic of best practices for oral arguments in trademark cases. I will be sharing my experiences based on arguing dozens of cases in person at the Trademark Trial and Appeal Board and attending many other hearings.

If there are any topics or issues you would like to see covered here, let us know!

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This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.