IPfever

Atlanta law firm for global business

Tag: maintenance

  • Not sure if you have a registered trademark?

    Not sure if you have a registered trademark?

    There are many business owners who own registered trademarks but have no idea about it. How come?

    Possible scenarios:

    1. You’ve registered a trademark when you started up, and you never looked back.
    2. You thought having your business/brand name registered was a good idea one day, then you managed to get it registered. And now it feels like an ancient history.
    3. You hired someone for your trademark registration, and you don’t know where to find them now.

    Well, here comes what to do when that happens.

    First, see if you have “U.S. Serial No.” or “Registration No.” in your hands.

    If you have any of the following, you can find the number easily:

    1. Registration Certificate (for your trademark)
    2. USPTO Official Receipt (for your trademark application)
    3. An email from the USPTO regarding your application or registration

    If you don’t have any of those, you need to go to TESS and look up your trademark. See generally TESS Search Hacks.

    Second, you go to TSDR and access the current status of your application/registration.

    Just type the number you have in the box, and hit Status.

    If it reads “Registered” on your status as highlighted below, you have a registered trademark.

    If you don’t have a registered trademark, it’s obvious that you need to do something about it.

    However, even if you have a registered mark that’s issued and active, you might still need to something.

    Lastly, click Maintenance tab on the top.

    Then, you’ll see something like this.

    It will tell you if your maintenance is due. In other words, if you don’t act in time, your trademark registration will be canceled.

    Well, losing registration doesn’t mean you lose your trademark altogether. In some cases, you can even revive your registration. However, there will be at least a suspension of your statutory rights under the registration, so you do not want that to happen.

    If you didn’t do your application yourself, you may need help with maintenance as well, but not always.

    Maintenance chiefly comes in two varieties: (1) making sure the registrant is still using the mark and (2) impose reasonable fees for keeping the trademark Registers. The latter is, as you probably guessed, about paying the bill while the former requires some documentation to prove your use.

    Let’s talk about the former variety. This type of maintenance filing is often rejected for submitting a wrong specimen. So, you probably should check out Specimens | USPTO before filing.

    Other than that, I believe the maintenance filing is pretty straightforward as long as you read and follow instruction carefully. Just make sure you find a correct form on the Index of all TEAS forms | USPTO.

    Good luck!

  • Change Address on TM registration, DIY

    Change Address on TM registration, DIY

    Businesses move. And their trademarks should come along. Unfortunately, changing your address on your trademark registration(s) (also in your application(s) if it has not been registered) is not as straightforward as changing your profile on Facebook.

    First, understand what you’re doing.

    You actually have quite a list of addresses on your trademark registration/application.

    1. Owner’s (domicile) address (or principal place of business)
    2. Owner’s mailing address (USPTO permits you to have a different mailing address than your address over privacy concern; only mailing address is made public)
    3. Address of your Domestic Representative (Domestic Representative acts like a registered agent for a business. i.e. service of process can be made on a Domestic Representative)
    4. Correspondence address (this is either your mailing address or your attorney’s address)

    If you’re shaking your head in disbelief, maybe you shouldn’t do this yourself.

    Next, you need to find an appropriate form.

    You can find any TEAS forms here or on your MyUSPTO portal. But here’s a shortcut: Change Address or Representation (CAR) Form.

    If you don’t have a USPTO.gov account (MyUSPTO), you need to create one. It’s pretty much like creating an account on any website. So, I won’t go into details.

    Let’s fill out the form.

    Page 1

    You might find this first page familiar if you have filed a trademark application yourself.

    A noticeable difference is that you can enter multiple serial/registration numbers at a time. Yes, that means you can change your address on multiple registrations/applications in a single filing. How convenient!

    Put down your serial/registration number in the blank and hit .

    Page 2

    Now, it shows your mark and your information. Make sure you are looking at your registration/application.

    Then, you have this prompt.

    It’s actually asking who you are to this registration/application. You need to be the Owner or the Attorney of Record to make any change of address. Here, we’re assuming you’re doing it DIY, so Owner it is.

    When you press the Owner button, you might see the following message.

    You see this warning because you had an attorney file the application on your behalf. If so, you must “REVOKE” the authority of a currently appointed attorney to do this address change yourself. If revoked, the attorney will be out of picture in regard to the registration/application. Select “Yes” for the “REVOKE” question.

    Also, you might see the 2. “UPDATE” question above as the first question if you did not provide your email address in the registration/application. The USPTO now requires an email address information for every trademark registration, so if you haven’t done this, you must provide one now. Thus, select “Yes” for the “UPDATE” question. You see I’m referring the questions not by numbers but by keywords. The questions, in fact, may be presented in different orders.

    Furthermore, there could be a different set of questions at times. But I won’t go into further details. You need to “REVOKE” the power of attorney before you file anything with the USPTO yourself, but in so doing, you might also need to make some other changes or updates if necessary. But don’t worry, the form is pretty smart, if you, for example, do not revoke the power of attorney, the form will not let you proceed when you click .

    Following pages

    Depending on how many “Yes” you had on the Page 2, you would encounter many more pages for the necessary changes/updates. However, the address you want to change will appear in section as below.

    You see Mailing Address (top third) and Domicile Address (very bottom). If you want to have a separate mailing address to hide your actual address from the public, insert the address you want to receive your mail in Mailing Address field, and then uncheck the box next to Domicile Address as shown below.

    Then, you can type in your address in the blank field. Alternatively, if you don’t mind making your address public or don’t have a separate mailing address, then you should put down your address next to Mailing Address and leave the box next to Domicile Address (shown above) checked.

    Last page

    Now, you need to sign the form and Validate.

    I will assume you want to “Sign directly” here. Simply, select Owner/Holder as shown below.

    Then, fill out the bottom table. Remember, the USPTO recognizes your electronic signature only if it meets certain formality. I suggest you just fill the Signature box with your full name enclosed with / on each side.

    On the above shown, replace “your name” with an actual name of yours. If Tom Cruise was the Owner, it would look like:

    Don’t forget the slashes, and fill out the Signatory’s Position. In most cases, you can simply write down Owner, but as aforementioned, you may be an employee of an business entity Owner. In this case, you can write down your job title. I doubt a company would have a Temporary Worker to do this, but if that is the case, the supervisor should sign the form not the Temporary Worker.

    You’re now set to Validate the form.

    The rest will be breeze. Unlike when you filed a trademark application, this submission does not require fees. So, as soon as you submit the form, you’re done.

    Congrats! You’ve made the address change on your registration/application yourself.

  • Trademark Maintenance: does trademark registration expire?

    Trademark Maintenance: does trademark registration expire?

    Maintaining registration calls for both administrative and executive action.

    Administratively, you need to file with the USPTO a showing that you’re still using the mark after 5 years of the registration, and every 10 years, you need to file a request for renewal.

    On the business side, you must continue using your mark at all times, even after the registration. This requirement is often overlooked because your staff who handles trademark typically has no saying in continuing/discontinuing a product line.

    You need to monitor your registration status and enforce your trademark rights yourself.

    Trademark Status and Document Retrieval (TSDR) service offered by the USPTO is a good place to start. The USPTO recommends every trademark applicant to check TSDR regularly.

    The USPTO does not enforce registered trademarks for the owners. It’s your obligation to monitor infringing activities in the market and take actions to stop them. Often it involves writing a letter to notify the wrongdoer and ask for compliance/compensation, but you may need to bring a lawsuit if there’s a dispute.