Trademark Deadlines That Fall on a Saturday, Sunday, or Federal Holiday

Posted on by Bruno Tarabichi

A common question that we receive from unrepresented trademark applicants relates to due dates that fall on weekends or holidays.  When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office (“USPTO”) falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding secular or business day.

Any action or fee that is due on a date falling on a Saturday, Sunday, or a Federal holiday within the District of Columbia is considered timely if the action is received, or the fee paid, on the following day that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia. This applies to all documents, whether filed through TEAS or on paper.

The following days are Federal holidays in the District of Columbia, under 5 U.S.C. §6103:

· New Year’s Day, January 1.

· Birthday of Martin Luther King, Jr., the third Monday in January.

· Washington’s Birthday, the third Monday in February.

· Memorial Day, the last Monday in May.

· Independence Day, July 4.

· Labor Day, the first Monday in September.

· Columbus Day, the second Monday in October.

· Veterans Day, November 11.

· Thanksgiving Day, the fourth Thursday in November.

· Christmas Day, December 25.

· Inauguration Day (January 20 of each fourth year after 1965), except when it falls on a Saturday (see Note below).

As to the observance of holidays that fall on Saturday, 5 U.S.C. §6103 also provides:

(b)(1) Instead of a holiday that occurs on a Saturday, the Friday immediately before is a legal public holiday….

NOTE: If Inauguration Day (January 20 of each fourth year after 1965) falls on a Saturday, the preceding Friday is not a legal public holiday for purposes of 35 U.S.C. §21. When Inauguration Day falls on Sunday, the next succeeding day selected for the public observance of the inauguration of the President is a legal public holiday. 5 U.S.C. §6103(c).

A Clear Drawing of the Trademark Must Be Provided With the Application

Posted on by Bruno Tarabichi

A §1 or §44 applicant must submit “a clear drawing of the mark” to receive a filing date, except in applications for registration of sound, scent, and other non-visual marks. A separate drawing page (or digital image of a separate drawing page in an application filed through the Trademark Electronic Application System (“TEAS”)) is not mandatory, but is encouraged.

A “drawing” is simply a depiction of the mark for which registration is sought.  A drawing that includes multiple elements that do not comprise an identifiable mark, or that consists of wording describing the mark, does not constitute a clear drawing of the mark.

An application that includes two or more drawings displaying materially different marks does not meet the requirement for a “clear drawing of the mark.” Therefore, an application is denied a filing date if it includes two or more drawings displaying materially different marks.

A specimen showing the mark does not satisfy the requirement for a drawing. If the only depiction of the mark is on a specimen (e.g., an advertisement, a photograph of the goods, or the overall packaging), then there is no drawing, and the application will be denied a filing date.

Constructive Use and Trademark Regsitrations

Posted on by Bruno Tarabichi

Under 15 U.S.C. §§1057(c) and 1141f(b), filing any application for registration on the Principal Register, including an intent-to-use application, constitutes constructive use of the trademark, provided the application matures into a trademark registration. Upon registration, filing affords the applicant nationwide priority over others, except: (1) parties who used the trademark before the applicant’s filing date; (2) parties who filed in the USPTO before the applicant; or (3) parties who are entitled to an earlier priority filing date based on the filing of a foreign trademark application under 15 U.S.C. §1126(d) or §1141g.

What are the Official Gazette and Trademark Official Gazette?

Posted on by Bruno Tarabichi

The Official Gazette is a publication that is issued every Tuesday by the United States Patent and Trademark Office (“USPTO”).  It is also available for free on the USPTO’s website.  USPTO notices are posted separately in the general information section of the Official Gazette. This section includes such general information as notices of changes in rules or Office procedures for both patents and trademarks; notices to parties who cannot be reached by mail; and indices of trademark registrations issued, renewed, cancelled, amended, or corrected on the date of the particular issue in which the marks appear.

The Trademark Official Gazette contains an illustration of each mark published for opposition on the Principal Register, marks registered on the Principal Register, and marks registered on the Supplemental Register on the date of the particular issue in which the marks appear. The USPTO publishes the Trademark Official Gazette only in electronic form.

Searching Trademarks with the Pseudo Mark Field Code

Posted on by Bruno Tarabichi

The United States Patent and Trademark Office (“USPTO”) uses a field code called “Pseudo Mark.”  The Pseudo Mark field code is used to help users identify relevant trademarks related to their search.  Pseudo Marks contain spellings that are similar or phonetically equivalent to the word trademark.  For example, if “4U” appears in the trademark, the term “for you” would be added to the pseudo-mark field. This provides an additional search tool for locating trademarks that contain an alternative or intentionally corrupted spelling for a normal English word.

Users can search trademarks using the Pseudo Mark field code by using either the structured search or free form search on the USPTO’s website.

Systems and Databases Available On The U.S. Patent and Trademark Office’s Website

Posted on by Bruno Tarabichi

The Trademark Electronic Business Center on the U.S. Patent and Trademark Office’s (“USPTO”) website contains all the information needed for the entire registration process. A customer may search the trademark database for conflicting marks using the Trademark Electronic Search System (“TESS”), file applications and other trademark documents online using the Trademark Electronic Application System (“TEAS”), check the status of applications and registrations through the Trademark Applications and Registrations Retrieval (“TARR”) database, or view and print images of the contents of trademark application and registration records through the Trademark Document Retrieval (“TDR”) portal at http://www.uspto.gov.

Sources of Trademark Law

Posted on by Bruno Tarabichi

There are several sources of federal trademark laws that apply to, among other things, the trademark registration process.  These include the following:

  • The Constitution – The authority of Congress to provide for the registration of trademarks stems from the commerce clause of the Constitution.
  • The Lanham Act – The Trademark Act of 1946 (commonly referred to as the Lanham Act) forms Chapter 22 of Title 15 of the United States Code.
  • Code of Federal Regulations – The rules governing the practices and procedures in the U.S. Patent and Trademark Office (“USPTO”) as they relate to trademarks are set forth in Title 37 of the Code of Federal Regulations.
  • Director’s Orders and Notices – From time to time, the Director of the USPTO issues Orders and Notices relating to specific situations at the USPTO.  These are available on the USPTO’s website.
  • Cases – Federal Courts and the Trademark Trial and Appeal Board issue decisions on trademark matters.
  • Trademark Manual of Examining Procedure – As discussed in yesterday’s post, this manual provides instruction on the trademark registration process.
  • Trademark Trial and Appeal Board Manual of Procedure – This manual provides guidance on practice before the appellate body of the USPTO, the Trademark Trial and Appeal Board.

What is the Trademark Manual of Examining Procedure?

Posted on by Bruno Tarabichi

The Trademark Manual of Examining Procedure (“TMEP”) is a manual published by the U.S. Patent and Trademark Office (“USPTO”).  The purpose of the TMEP can be summarized as follows:

The Manual is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO.  The Manual contains guidelines for Examining Attorneys and materials in the nature of information and interpretation, and outlines the procedures which Examining Attorneys are required or authorized to follow in the examination of trademark applications.

The TMEP can be accessed or downloaded free of charge from the USPTO’s website.  It is the best resource for learning how the trademark registration process works.

Maintaining Your Trademark Registration

Posted on by Bruno Tarabichi

After your trademark application registers, you will need to file documents in order to maintain the trademark registration.  The U.S. Patent and Trademark Office (“USPTO”) does not remind you that such documents must be filed.

A Section 8 Declaration of Continued Use or Excusable NonUse is due before the end of the six year period after the registration date or within the 6 month grace period thereafter.

A Combined Section 8 & 9 Declaration of Continued Use and Application for Renewal must be filed before the end of every 10 year period after the registration date or within the 6 month grace period thereafter.

If these documents are not filed, your trademark registration will be cancelled.

The Difference Between First Use Anywhere and First Use In Commerce In Trademark Applications

Posted on by Bruno Tarabichi

When you file a use based trademark or later file an amendment to allege use for an intent to use trademark, you will need to provide the U.S. Patent and Trademark Office (“USPTO”) with two dates: (1) date of first use anywhere and (2) date of first use in commerce.  The date of first use anywhere is the date on which goods were first sold or transported or services were first provided under the trademark – even if the use was just local and not in interstate commerce.  The date of first use in commerce is the date when goods were first sold or transported or services were first provided under the trademark between more than one state or U.S. territory or between the U.S. and another country.