How Thick is the Ice? Be The First To File

Sometimes being a small business owner seems like walking on a frozen river with water rushing below you and the ice just waiting to break. Being a small business owner is an inherently dangerous situation. If you succeed, you become a business model for others who may go after your market and use your name to do it if you haven’t protected it yourself. Protecting yourself, keeping ahead of the competition, and offering unique and protectable benefits to your customers are more than just buzz words, they are ways to strengthen where you stand.

If someone else sees your success and registers your trademark FIRST, trying to stop them is much harder and more expensive than if you had just gotten good advice and registered the trademark FIRST yourself.


Protect Your Trademark on the Principal Register

Principal Registration has more rights. Trying to stop someone from using your unregistered (common law) or pending mark or Supplemental Register mark is difficult. Be The First to File!




















Why is registering a smart choice? To capture goodwill into a protectable asset and to keep newcomers to the market from using your name and jeopardizing your success. Federal Registration of a Trademark with the USPTO expands existing trade rights or common law rights in a name, logo, symbol, trade dress or other type of trademark or service mark so that a trademark owner can capitalize on the goodwill and customer recognition associated with the mark. A federal registration on the Principal Register can be used to stop others from taking your name or names confusingly similar to it to sell similar products and can be used to stop counterfeiting imports or state or local counterfeiters.

About 50% of trademark applications never register and many never register because the newcomer’s or junior’s trademarks are too similar to marks that are already registered (prior users or seniors). For someone with a federal registration, the USPTO stops new similar junior applications by issuing Likelihood of Confusion refusals (the most common refusal) without additional cost to the senior user every time they do it. A senior user without a registered mark has to try to stop all these newcomers themselves at their own cost each time. If the USPTO trademark examiner uses your registered trademark to stop even just one newcomer from registering a trademark very similar to yours, your investment may have already paid off.


HELP FROM  SOCIAL NETWORKING: Third parties like Google, Yahoo, Bing, Twitter, Facebook, and others respect registration rights and give protection to trademark owners that can clearly prove their rights to a mark and a Principal Registration works best.

The table below lists the rights that the federal government gives you if your federal trademark application matures into a registration (see the YES rows) but there are more rights that third parties grant to federal trademark registrants. Third parties such as Google, Yahoo, Microsoft, Bing, Twitter, Facebook and others will help trademark owners to protect their rights. For examples of increased rights provided by third parties to trademark owners, see GOOGLE ADSENSE TRADEMARK COMPLAINT FORM, MSN TRADEMARK SUPPORT, MICROSOFT ADVERTISING GUIDELINES, TWITTER TRADEMARK POLICY.


PROTECTING YOURSELF MEANS GETTING THE RIGHT HELP: At the end of the day, a trademark owner is responsible for protecting their own rights. A owner must claim and enforce their rights in order to receive the benefits. Online medias, advertisers, social networks and others will help you to protect your rights if you can prove those rights clearly to them with a federal registration of a trademark and only if you take the initiative to do so.

Not Just Patents® Legal Services is the right help. Our success rate with registering trademarks is very good and our costs are not high which can turn out to be a great investment. Our success rate with answering office actions is also very good but unfortunately, many refusals given to junior users for Likelihood of Confusion stick because the junior user really is jeopardizing the success of someone else who used the trademark first and registered their trademark first. But not always. Sometimes the one who registered first was not the first to use the trademark and enforcing rights requires going further and opposing or cancelling the trademark of the owner who registered first but didn’t use first. We can help with this too.



Trademark Rights

Principal Register

Supplemental

Register

Common Law

Bring infringement suit in federal court based on the federal registration

YES

YES

NO

Can be used by trademark examiner against future applications of confusing similar marks

YES

YES

NO

Mark is easy to find for search reports

YES

YES

NO

Owner can use ® to symbolize federal registration

YES

YES

NO

Incontestability of mark after 5 years

YES

NO

NO

Statutory presumption of validity

YES

NO

NO

Statutory presumption of ownership

YES

NO

NO

Statutory presumption of distinctiveness or inherently distinctive

YES

NO

NO

Statutory presumption of exclusive right to use the mark in commerce

YES

NO

NO

Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods

YES

NO

NO

Ability to bring federal criminal charges against traffickers in counterfeits

YES

NO

NO

Use of the U.S. registration as a basis to obtain registration in foreign countries

YES

NO

NO

©2008-2014 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: info@notjustpatents.com. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us See us at NotJustPatents.com

Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

info@notjustpatents.com


Aim Higher®

Facts Matter

Search Not Just Patents® sites:


FederalRegistrationTrademark.com

Tie It Up

Securing the Right IP

Call 1-651-500-7590 or email info@notjustpatents.com or ContactTrademark.com for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Patents

Trademarks

Steps to a Patent    How to Patent An Invention

Patent Search Steps

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal  Standard TTAB Protective Order

Patent Field of Search

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

Patent search-New invention

Merely Descriptive Trademarks   Merely Descriptive Refusals

Patent Search-Non-Obvious

Register a Trademark-Step by Step   Trademark Fixer

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Shop Rights

Section 2(d) Refusals   ApplyToTrademark.com

Patent Pending see also Patent Marking

Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What is a Small or Micro Entity?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

Trademark Clearance Search   DIY Trademark Strategies

Provisional Patent Effect on Patentability

Samples of Responses to Office Actions

ID of Goods and Services see also Headings (list) of International Trademark Classes

Broad Patents

Geographically Descriptive or Deceptive

Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose