News 2018-08-16T04:40:43+00:00

PHILLY LOVES A WINNER Trademark Application Filed by SugarHouse Casino

PHILLY LOVES A WINNER Trademark Application Filed by SugarHouse HSP Gaming, L.P., to register the phrase for use in Casino Services.

About SugarHouse Casino

SugarHouse Casino, Philadelphia’s very first Casino, is a state of the art complex located along the Delaware River in Philadelphia, PA. The Casino opened in 2010, on the site of what used to be the Jack Frost Sugar Refinery, hence the name “SugarHouse”. SugarHouse is home to 3,000 slot machines and tables, and a variety of retail and dining centers. In 2014, the Casino initiated renovation plans to expand the casino floor, add a parking garage, and bring more amenities such as a health spa and event center.

Guests can choose from multiple dining options to satisfy their cravings. People looking for more upscale restaurants can head over to Hugo’s Frog Bar and Chop House or Mian. If you’re looking for something quick to eat so you can get back to gambling, The Marketplace offers grab and go meals from Saxby’s coffee, Tacconelli’s Pizza, Geno’s Steaks, and Revolution Grill.

PHILLY LOVES A WINNER Trademark Application

Find Out Why PHILLY LOVES A WINNER – Visit SugarHouse Casino

Located at the Delaware River water front, guests can visit SugarHouse Casino on the SEPTA Route 15 Trolley, and the SEPTA Bus route 43 at the Frankford and Delaware Avenue station.

Guests also have the option of purchasing a Casino Bus Trip Package. The Bus Trip Packages range from “Game On” experiences to dining experiences on the Mosholu or Spirit of Philadelphia. The packages offer a variety of incentives such as:

  • Free craps or gaming lessons
  • Customized menus & drink specials
  • Property Tours
  • Personalized Welcome Service

SugarHouse appeals to both locals and visitors from out of town as a space fit for corporate gatherings, game nights, and special events. Upcoming events include live performances featuring Chris D’Elia, Jon Dorenbos, George Lopez, and The Robert Cray Band.

Find out more information about the Trademark Application timeline and process here. 

By | September 13th, 2018|

MEEK MILL Trademark Application Filed by Dream Chaser Records, Inc.

MEEK MILL Trademark Application Filed – Philadelphia, PA

Dream Chaser Records, Inc. has filed a trademark application to register MEEK MILL for use in musical, apparel, and entertainment services.  The trademark application was filed on May, 23, 2018.  The trademark office typically examines the application within 4-6 months from the application date.  For more … visit trademark application process and timeline.

MEEK MILL Trademark Application Details

Dream Chaser Records, Inc., is Meek Mill’s very own record label imprint that launched in October 2012. On May 23, 2018, about a month after his release from prison, Dream Chaser Records, Inc., applied to register MEEK MILL as a trademark for use in Compact discs, digital music downloads, audio and video recordings, and musical video recordings. In addition to, athletic apparel such as shirts, pants, jackets, footwear, hats and caps, athletic uniforms, and entertainment services in the nature of live musical performances.

MEEK MILL Trademark Appliation

About Meek Mill

Meek Mill, legally known as Robert Rihmeek Williams, is an American rapper and songwriter whose prison sentence fueled many protests and discussions about wrongful convictions, racial profiling, and police misconduct. Meek Mill was born and raised in South Philadelphia, and served 5 months at the State Correctional Institution in Chester, Pennsylvania. Following a five-month campaign by his supporters, he was released on bail in April 2018 for the duration of his trial.

“Although I’m blessed to have the resources to fight this unjust situation, I understand that many people of color across the country don’t have that luxury … I plan to use my platform to shine a light on those issues … I plan to work closely with my legal team to overturn this unwarranted conviction and look forward to reuniting with my family and resuming my music career.” – Meek Mill, 24 April 2018

For his first public appearance, Meek Mill celebrated by ringing a replica Liberty Bell before a 76ers’ playoff win against Miami Heat.

By | August 31st, 2018|

What is a Trademark Disclaimer?

What Is a Trademark Disclaimer?

If you are reading this, you likely have an office action that is requiring a trademark disclaimer.  The Examining Attorney at the Trademark Office will not allow your trademark application until you enter a disclaimer of a portion of the trademark or service mark.  A trademark disclaimer is a written statement that “disclaims” “exclusive rights” to “unregisterable content” in a “trademark registration”. 

what is a trademark disclaimer

A trademark disclaimer is a written statement that “disclaims” “exclusive rights” to “unregisterable content” in a “trademark registration”.

Disclaimers protect the public’s First Amendment right to use generic or descriptive words.  Disclaimers deny trademark owners from claiming exclusive rights to these generic or descriptive words.

1. To Disclaim – disavow – deny ownership of Exclusive Rights to Unregisterable Content

In other words, a disclaimer is an affirmative declaration, made of public record, that trademark registration does not cover “exclusive rights” to the disclaimed content.  It’s an affirmative denial of ownership to rights in the particular word, phrase, or graphic (the unregisterable content) disclaimed in the registration.

2. Exclusive Rights

A registered trademark is a government granted monopoly.  It provides the owner with an exclusive right to use the mark in connection with the goods/services listed in the registration.  A disclaimer is an exception to this exclusive rights monopoly of the entire mark.  The exception being the unregisterable content.  The disclaimer carves out from the grant of exclusive rights parts of the trademark that are deemed generic and /or descriptive.

3.  Unregisterable Content Is Generic or Descriptive Content, or Content that Does not Function as a Source Identifier.

Typically, portions of a mark that are not registrable and require a disclaimer include the following:

  • Merely Descriptive Words/Designs – CARBONATED for beverages
  • Laudatory Words – BEST for practically any goods or services
  • Generic Words/Designs – ASPRIN for pain releavers
  • Geographic Words/Designs – PHILADELPHIA for cheese steaks
  • Business Type Designations – CO. or INC. or LLC
  • Informational Words – net weight, package contents, ingredients
  • Well-known Symbols – $ for financial services

4.  A Disclaimer Only Limits Rights Conveyed by the Trademark Registration – Common Law Trademark Rights Are Unaffected.

Trademark law is a two-part system of laws that operate in parallel.  One system involves rights obtained through registration of a trademark with the U.S. Patent & Trademark Office.  The other system involves common law trademark rights. Common law rights exist irrespective of whether the trademark is registered or not.  A plaintiff may proceed under either system or both systems.  A trademark disclaimer limits only statutory rights granted by the trademark registration – not common law trademark rights.  15 U.S.C. 1056.However, because the disclaimer does not deprive plaintiff of common law rights it may have in the disclaimed content, plaintiff may assert infringement of those rights.  There is no guarantee, although, that plaintiff will fare any differently by proceeding with common law rights to the disclaimed content.  After all, the Trademark Office (an expert in the field) found the disclaimed content unregisterable.  A court looking at the common law issue, likely will find the content equally unprotectable.  The substance of the rules for finding unprotect able / unregisterable content do not change.

Disclaimer:  This information is for educational purposes, and is not intended to be legal advice. Each case turns on its own facts.  Please consult with an experienced trademark attorney

EsquireTrademarks.com – Online Trademark Attorneys – What We Do:

  • Our trademark attorney, prepares and files trademark applications for clients throughout the United States and abroad.
  • We prosecute and defend trademark infringement and unfair competition actions in the Federal Courts throughout the United States and abroad.
  • We also prosecute trademark office actions and appeals before the United States Trademark Office.
  • We handle internet based trademark disputes and trademark, DMCA, and copyright takedowns.
  • We draw on our experience as trademark litigators to guide you through the trademark process.
  • We support businesses, law firms, and individuals by providing top notch legal services in intellectual property matters.
By | August 16th, 2018|

The City of Philadelphia Applies to Register LOVE Park Trademark

Trademark Application Filed for LOVE Park

The City of Philadelphia has applied to register the iconic LOVE Park as a trademark with the United States Patent and Trademark Office (USPTO). The LOVE Park trademark application was filed for use in promoting tourism and recreation in Philadelphia, Pennsylvania.

Photograph of Love Park

Love Park Trademark Application City of Philadelphia

LOVE Park Trademark – About LOVE Park:

LOVE Park, officially recognized as John F. Kennedy Plaza, is located in the heart of the city, at the corner of 15th street and JFK Boulevard. In 1965, city planner Edmond Bacon, father of actor Kevin Bacon, designed the public space over an underground parking garage as an entrance to the Benjamin Franklin Parkway. The plaza’s nickname “LOVE Park” did not surface until 11 years later when the Love sculpture was brought to Philadelphia for the United States Bicentennial.

In 1970, American pop artist Robert Indiana designed the Love sculpture that soon became one of Philadelphia’s most symbolic artifacts. To the public’s dismay, the sculpture was removed two years after the Bicentennial. However, as a response to the negative reactions of the people of Philadelphia, the Chairman of the Philadelphia Art Commission, F. Eugene Dixon, Jr., decided to purchase the sculpture to be returned to the Plaza.

In order to better reflect Indiana’s original vision, the statue was recently restored to highlight the colors purple, red, and green. In May 2018, the new and improved LOVE Park was officially unveiled to the public and now includes greenery, walking paths, and seating areas that attract tourists and locals alike.

EsquireTrademarks.com – Philadelphia Copyright Attorneys – What We Do:

  • Our Philadelphia trademark attorney, prepares and files trademark applications for clients throughout the United States and abroad.
  • We prosecute and defend trademark infringement and unfair competition actions in the Federal Courts throughout the United States and abroad.
  • We also prosecute trademark office actions and appeals before the United States Trademark Office.
  • We handle internet based trademark disputes and trademark, DMCA, and copyright takedowns.
  • We draw on our experience as trademark litigators to guide you through the trademark process.
  • We support businesses, law firms, and individuals by providing top notch legal services in intellectual property matters.
By | August 2nd, 2018|

Trademark Application Filed for Philadelphia’s “Trust the Process”

Trademark Application Filed for Locally Praised Mantra “Trust the Process”

In the midst of Philadelphia’s most successful year for professional sports, the nationally recognized and locally praised mantra Trust the Process was applied for as a trademark with the United States Patent and Trademark Office (USPTO).  On May 8, 2018, an Intent-to-Use trademark application was filed by applicant Michael Curry for “Trust the Process” used with Sports Camp and Entertainment Services Featuring Appearances by Sports Celebrities. 

The Origin of “Trust the Process”

The evolution of the phrase began in 2013, when the former General Manager of the Philadelphia 76ers, Sam Hinkie, emphasized the importance of minor victories and patience during the team’s rebuilding period. It wasn’t until 2015 that the phrase surfaced, spreading rapidly through the NBA and following the Sixers’ success as they made it to the second round of playoffs in 2018.

Trust The Process Trademark Application

Will the Trademark Register?

The trademark application will be examined 4-6 months from the filing date.  If no-one previously registered a similar mark for similar services, the application will be published for opposition by third parties.  Then, if no-one opposes the application, the applicant must begin using the trademark with the services described in the application.  Follow this link for more about the Trademark Application Timeline and Process.

By | July 10th, 2018|

The Trademark Process – Trademark Application Process and Timeline

What Is the Trademark Process and Timeline for Your Trademark Application?

The trademark process and timeline described below sets out the procedure once the application is filed. Before the application is prepared and filed, we interview and consult with you.  We discuss the various options, risks, and benefits that are presented with your trademark situation.  We provide  you with guidance and feedback regarding your trademark.  We endeavor to provide you with a full and clear picture of what you can expect in the trademark process.  With 18 years experience in trademark law and litigation, we can anticipate most issues and craft the trademark application in a way that avoids most rejections and refusals.

Once Your Trademark Application Is Filed, the entire trademark process takes 6-8 months.  Office actions and third party oppositions can extend this timeline significantly.  We keep you informed of the developments regarding your trademark application as it moves through the process.  Below are the various steps involved in the trademark process.

Image Trademark Process on USPTO website

The Trademark Office Provides a Filing Receipt Once the Trademark Application Is Filed

  • At this point, you will receive a letter and filing receipt from our office confirming the trademark application was filed. The letter and filing receipt will identify your trademark by name, application number and filing date.
  • You can expect to wait 4-6 months before you hear anything further from the trademark office. During this period, the trademark application will undergo examination by an Examining Attorney at the Trademark Office.
  • As the attorney of record, we will receive all official correspondence from the Trademark Office regarding your application. We will then report this information to you.
  • BEWARE OF SCAMS. You will receive trademark scam solicitations by mail and email.  DO NOT RESPOND TO ANY SOLICITATIONS YOU RECEIVE FROM OTHERS.  EVERYTHING RELATED TO YOUR TRADEMARK APPLICATION WILL COME FROM OUR OFFICE.

Trademark Application Examination Process – Examination by the Trademark Office

During this 4-6 month period, an Examining Attorney reviews your application to determine if it would be allowable under the Trademark Statute and associated Regulations.

  • The most common grounds for rejection are prior filed registrations / applications; the mark is generic/descriptive; the mark includes someone’s name.
  • Other grounds for rejection relate to the description or classification of goods and services.
  • Yet, other grounds for rejection concern the specimen of use (evidence showing the mark being used with the goods/services).
  • Not to worry, we evaluate your trademark prior to filing. In most cases we anticipate the above rejections and discuss the risks with you.  In few instances, and unexpected rejection can occur.

Trademark Office Action Process and Timeline (Does Not Always Happen)

  • An OA will be issued, if the Trademark Office finds grounds for rejection or refusal. The response time for the OA is Six months.
  • You will receive a letter from our office explaining the issues and providing a cost and the time for responding. With your approval, we will proceed to prepare and file the appropriate response / request for reconsideration. The application goes abandoned if no response is filed.
  • Often, the Trademark office withdraws some or all of the rejections. This is a result of the Applicant resolving the issues in the response. Or, the arguments made in the request for consideration were persuasive.
  • If the response and arguments are found unpersuasive, we will receive Final Office Action. We will then have a six-month window to respond with arguments or amendments to the application.  If we receive a Final OA, we will discuss with you the options for abandoning, re-filing a new application, or appeal.

30-Day Publication of the Trademark Application for Opposition

  • If the office action is resolved, or there were no rejections, the application gets published for opposition. We receive a Notice of Publication, and about 2 weeks later, the application is published in the Official Gazette.  A confirmation email is sent to our office.
  • Other brand owners have 30 days from the date of publication to oppose the trademark application. If a notice of opposition is filed, your trademark application will be suspended until the opposition proceeding is resolved.  If the trademark application is not opposed within 30 days, the application will move to registration as a U.S. Trademark.

If You Filed an Intent to Use (ITU) Trademark Application, a Statement of Use (SOU) Is Required

  • Before the Trademark registration is granted, the applicant must submit evidence showing how the trademark is being used. Applicant must also provide a sworn declaration that the mark is being used with the goods/ services listed in the trademark application.
  • This requirement to file s SOU is triggered by a Notice of Allowance(NOA). Our office receives the NOA and we will send you a letter reciting the requirements and associated steps or procedure with the NOA stage.
  • This section only applies to 1(b) ITU Applications. An ITU application means you filed for a trademark before you began using the trademark. ITU applications differ from 1(a) “use in commerce applications.”  When you file a 1(a) application, you submit the evidence of use (specimen of use) and verified statement of use (SOU) with the original application.  If you filed an ITU, the statement of use is filed after examination of the application.  If you are not sure which application was filed, refer to your trademark application filing receipt, or contact us.
  • After a NOA is issued, Applicant has 6 months from the date of the NOA to file a SOU. If you are not yet using the mark, you may request an Extension of Time to File SOU.   Applicant may file a total of 5 requests for Extension of Times to File a SOU.  A new request for Extension of Time to File a SOU must be filed every 6 months. The deadlines for filing a SOU or request for Extension of Time to File a SOU is measured in six-month increments from the issue date of the NOA.  Finally, a SOU may not be filed more than thirty-six months from the original NOA date.

Trademark Registration Certificate Is Issued

  • The trademark certificate issues about three months from the Notice of Publication. If there are no office actions or oppositions, the entire process – from application to registration – takes 6-8 months.
  • The registered trademark gives the owner particular rights. The trademark registration is effective to block others from registering your mark in the same category. The courts and others (online retailers such as Amazon.com) presume that you own the trademark, and that the mark is valid.  The trademark is effective nationwide (all 50 states and US territories).
  • In order to keep the Registration, it must be maintained by filing various declarations

Maintenance and Renewal of Trademark Registrations

  • The main requirement to maintain trademark rights is use in commerce. The owner must use the mark with the goods/services identified in the trademark registration.
  • The owner must file a sworn declaration and provide evidence of continued use between the 5th and 6th year after the Registration issues.
  • Further the owner must file renewal trademark applications between the 9th and 10th years, and before every subsequent tenth year after the Registration issues.

The Trademark Process may seem complicated or daunting at first glance, but EsquireTrademarks.com is here to guide you through it.

By | May 21st, 2018|

PHILLY DILLY Trademark Likely to Register With U.S. Trademark Office

PHILLY DILLY Trademark Application Likely to Register in Apparel Category

In December 2017, an Arizona based corporate entity named Royal Palm Entertainment, LLC filed an Intent to Use Trademark Application with the United States Patent and Trademark Office (USPTO) for PHILLY DILLY in connection with Hats; Hoodies; and T-Shirts.

Showing Trademark Application Listing for Philly Dilly Trademark

On April 18, 2018, The USPTO sent out a Notice of Publication for the Philly Dilly Trademark Application. This means that the Philly Dilly Trademark Application will be published for opposition by third parties. If unopposed, Philly Dilly will be Granted Registration once a statement of use is timely filed by the applicant.

The Philly Dilly Trademark Application has Been Allowed and will be Published for Opposition

The Philly Dilly Trademark Application was allowed and will be published  for opposition in the USPTO’s Trademark Official Gazette. All trademark applications filed with the USPTO are reviewed by Examining Attorneys. If an Examining Attorney finds the trademark application allowable, the proposed trademark will be published to allow for opposition by third parties.  The purpose of publication is to notify business owners about trademark applications that are about to register. The opposition process provides other businesses with an opportunity to oppose (or stop) the registration.  Opposition Proceedings take place before the Trademark Trial and Appeal Board (TTAB).

Formal Opposition to the Philly Dilly Trademark Application Begins May 8, 2018

Once the Philly Dilly trademark is published in the Official Gazette, other brand owners have 30 days to oppose the trademark application. If the Philly Dilly Trademark is not opposed within 30 days, the Philly Dilly Trademark Application will move closer to registration as a U.S. Trademark.  The applicant will have to file a statement of use (SOU).  If the SOU is accepted, the trademark will register.

By | April 25th, 2018|

Amazon Brand Registry Trademark

Amazon now requires brands provide a Trademark Registration for enrollment into the Amazon Brand Registry.

In order to enroll in the Amazon Brand Registry, the owner must have a registered trademark. The Amazon Brand Registry offers Brand Owners powerful tools for stopping piracy and infringement. They include “proprietary text and image search, predictive automation based on your reports of suspected intellectual property rights violations, and increased authority over product listings with your brand name.“ For more details on these tools, visit the Amazon Brand Registry Trademark Page.

Amazon Brand Registry Trademark, TM Application

Register Your United States Trademark

We are available to assist you in filing applications to register your trademark, service mark, logo, or packaging design. As a licensed attorney, I can answer your questions and help resolve any issues you may have about registering your brand. We can anticipate most rejections and address them before the application gets filed. Even if there are similar registered marks, we have various strategies at getting your trademark application allowed.

We offer expedited trademarking services and can have your trademark application filed within a few hours. Please contact us to start the process.

By | April 23rd, 2018|

What is the Trademark Supplemental Register?

What Is the Trademark Supplemental Register?

If you are reading this, you likely have an office action rejecting your trademark under Section 2(e) of the Trademark Act for being merely descriptive or geographically descriptive. Or, you have a distinctiveness rejection for a shape, color, or trade dress mark.  One possible way around the rejection is to amend the trademark application to seek registration on the Supplemental Register.  Often, the trademark Examining Attorney will advise of the amendment.  Or, your trademark attorney suggested amending to the Supplemental Register.  Whatever the case, the Supplemental Register questions are inevitable.  Continue reading for a full explanation.

Supplemental Register Trademark Example

Supplemental Register Is for Marks that Cannot Function as Brand Identifiers.

There are two registers at the United States Trademark Office: The Principal Register and the Supplemental register.   The Supplemental Register is a secondary register, which allows for the registration of marks that are not capable of functioning as trademarks (standing alone), but may in the future (after years of use and public recognition) achieve trademark status.  In trademark legalese, the Secondary Register is for marks that are not inherently distinctive, and have not achieved secondary meaning.

JERSEY blue crabs, MAINE lobster, FLORIDA oranges, CALIFORNIA raisins, NAPA VALLEY wines, JAMAICAN Rum, CUBAN Cigars.  The names identify a location of origin, not a brand (business of origin).  These names inherently point to a geographic origin, and not a manufacturer of origin.  These examples inherently fail to identify a brand (business of origin), but rather identify a location of origin.  The Trademark Act rarely grants monopolies for geographic terms.   The exception is when the name acquires secondary meaning.  That is, when the public readily associates the name with a brand, rather than the location.

PHILADELPHIA Cream Cheese Is an Example of a Descriptive Mark That Has Gained Secondary Meaning.

A great example of a Supplemental Register mark on the Principal Register is PHILADELPHIA Cream Cheese.

The word PHILADELPHIA is geographically descriptive.  It describes a geographical location, and is therefore not capable of functioning as a trademark.  This is hornbook trademark law.   The exception is when the mark – PHILADELPHIA – is used so much, so consistently, nationwide, since 1880.  This long standing, consistent, and widespread use of PHILADELPHIA has resulted in the name achieving “secondary meaning” among the public.  There is widespread public recognition that PHILADELPHIA is a source identifier for cream cheese.  This explains why the word PHIALDELPHIA is a trademark on the principal register, while many other “Philadelphia” marks are on the Supplemental Register.

Supplemental Register vs. Principal Register – What are the differences?

Quick Summary:

Principal Register Trademarks Are Given a Presumption of Validity by Courts – Supplemental Register Trademarks Are Not

Both Trademark Registers Show Up in Trademark Searches and and Block Later-Filed Applications

Registered Trademarks Grant the Right to use the (R) Symbol, which puts on Notice of Trademark rights.

Registered Trademarks May Stop the Importation into the United States of Articles Bearing an Infringing Mark

Trademark Registration Qualifies Sellers to Enroll in the Amazon Brand Registry

A registered Trademark Receives Incontestable Status, which is Conclusive Evidence in Court of the Registrant’s Exclusive Right to use of the Mark

A Registered Trademark Gives Owners Credibility with Internet Service Providers (YouTube, eBay, Amazon, Facebook, Twitter, Pinterest and other social media and e-commerce websites) and often expedites e-commerce and Social Media Takedowns of Imposters and others Infringing your Trademark.

Registered Trademarks Provide a Basis for Foreign Trademark Applications and Registrations

Principal Register Trademarks Are Given a Presumption of Validity by Courts – Supplemental Register Trademarks Are Not

In court, the Principal Register Trademark Registration entitles a plaintiff to a presumption that the trademark is valid.  With a Supplemental Register Trademark, a plaintiff must plead and prove the underlying facts that would establish that the trademark is enforceable.  That is, a Supplemental Register trademark owner would have to show (1) that it adopted and used the mark in commerce, and (2) that the mark is recognized by the public as identifying plaintiff’s business.  As such, more work is required in pleading and proving an infringement case for the Supplemental Register Owner.  That being said, most Principal Register plaintiffs plead and establish the “underlying facts” anyway as part of a common law infringement or unfair competition claim.  This is usually done as a safeguard in the instance the registration is attacked by the defendant or invalidated on other grounds.  As such, I see this “Presumption of Validity for Principal but not Supplemental Registrants” issue as a minor distinction.  As a plaintiff, if you have a true infringer profiting from your goodwill, you will succeed in obtaining redress from the courts.

Both Trademark Registers Show Up in Trademark Searches and and Block Later-Filed Applications

Like trademarks on the Principal Register, Supplemental Register trademarks come up in search results.  Marks on the Supplemental Register also block later-filed applications.  This allows a trademark owner to protect its mark while building its brand.  As a matter of strategy, the Supplemental Register Trademark is an important tool for blocking new trademark applications.  The owner of a supplemental register trademark can use this “blocking” time to gain enough exclusive use and /or public recognition to acquire secondary meaning (distinctiveness) for the mark.  Once sufficient time of use and brand recognition is achieved, the owner can then file for a Principal Register trademark.  For example, after 5 years of exclusive use, a mark is deemed to have acquired distinctiveness, which can then support a trademark on the Principal Register under Section 2(f) of the Trademark Act.  Even before 5 years of use, if evidence supports exclusive use and widespread brand recognition, the owner can apply to the Principal Register under Section 2(f).

® – R Circle Symbol Is Available for Both Principal Register and Supplemental Register Trademark Registrations

Like Principal Trademark Owners, owners of Trademarks on the Supplemental Register can use the ® symbol.  The r circle trademark symbol helps to put others on notice that the mark is registered with the U.S. Patent and Trademark Office.

A Supplemental Register Trademark Application Is Not Published For Opposition.

With Principal Register Trademarks, the application is published for 30 days to allow third-parties to oppose the pending application.  No such trademark opposition proceeding is available to challenge a Supplemental Register trademark application.  An applicant may use this loophole to its advantage to obtain a trademark registration absent the usual publication and opposition period.

 A Supplemental Trademark Registration Must Be Renewed and Maintained

With one exception, maintenance and renewal of Supplemental Trademark Registrations are the same as trademarks on the Principal Register.  Section 15 declarations are not required for Supplemental Trademarks, because trademarks on the supplemental register cannot gain incontestable status.  This saves an applicant time and fees relating to one less trademark renewal filing.  A Section 8 declaration is required between the 5th and 6th year from registration.  Renewal applications are required on the decades succeeding registration.

Supplemental Registrations Are Used to Register International and Foreign Trademarks

Principal and Supplemental Registrations form the basis for international trademark filings under the Madrid Protocol.  Like trademarks on the Principal Register, the filing date for the application can be used as a priority date for foreign filings.  TMEP 1902

Supplemental Register Is Not Available for Intent-To-Use Trademark Applications

An intent-to-use applicant cannot overcome a rejection by amending to the Supplemental Register.  In order to amend the application to the supplemental register, the applicant must first make an allegation of use.  If the application was filed as an intent-to-use (Section 1(B)), the applicant must begin using the mark and convert the application to Section 1(A) by filing an allegation of use.  Typically amending to the Supplemental Register becomes an option when facing an Office Action.  The response time for an Office Action is 6 months.  This creates an urgency to the applicant who must begin using the mark in commerce within the 6-month response period.  Otherwise, the application may go abandoned.

A Separate Trademark Application Must Be Filed to Move the Trademark to the Principal Register

Amendment of a Supplemental trademark to the Principal Register is not permitted.  Rather, a separate application is filed.  Preferably, the new application is filed after five years of exclusive use of the mark.  Five years of exclusive use provides basis to show that the mark has secondary meaning (acquired distinctiveness).  A principal Section 2(f) claim can be made.  As a matter of strategy, this is done while the Supplemental Register trademark is active.  In the instance the new application is denied, the applicant still has the Supplemental trademark registration to block others from filing for the mark.

Disclaimer:  This information is for educational purposes, and is not intended to be legal advice. Each case turns on its own facts.  Please consult with an experienced trademark attorney

EsquireTrademarks.com – Online Trademark Attorneys – What We Do:

  • Our trademark attorney, prepares and files trademark applications for clients throughout the United States and abroad.
  • We prosecute and defend trademark infringement and unfair competition actions in the Federal Courts throughout the United States and abroad.
  • We also prosecute trademark office actions and appeals before the United States Trademark Office.
  • We handle internet based trademark disputes and trademark, DMCA, and copyright takedowns.
  • We draw on our experience as trademark litigators to guide you through the trademark process.
  • We support businesses, law firms, and individuals by providing top notch legal services in intellectual property matters.
By | March 12th, 2018|

What is a Trademark? – EsquireTrademarks.com – Online Trademark Guide

What is a Trademark?

Can Anything Be a Trademark?

A trademark is a brand identifier.  A trademark can be practically anything that is capable of identifying a source of goods.   For example, a trademark can be a word, logo or graphic design, a slogan.  A trademark can even be a sound, a color, or a scent.  Anything can be a trademark, as long as it can clearly identify a source or origin of goods.

What Is a Service Mark?

A service mark ℠ operates just like a trademark.  The main distinction is that a Service Mark is used to identify a brand or source of services.  Trademarks, on the other hand, identify a a brand or a source of goods.  In fact, most of the examples of Trademarks below are actually Service Marks.  Unless noted otherwise, trademark and service mark are used interchangeably.

Trademark Search & Clearance

Examples of Different Types of Trademarks

A Trademark Can Be a Word. . . .

A Word Trademark – Also Known as a Name or Text Trademark – Is Trademark that Consists of Letters and Numbers.  Here are a few examples of words that are famous trademarks.

MCDONALDS®     AMAZON®      EBAY®

A Trademark Can Be a Stylized Word. . . .

A Stylized Word Trademark  – Similar to a logo or graphic design (discussed below) – Is a trademark that is specific to a particular stylization of of Letters and Numbers.  Here are a few examples of words that are famous trademarks.

Example of a stylized text trademark                       Stylized text trademark logo              what is a trademark

A Trademark Can Be a Logo, Symbol, or Graphic Design. . . .

A logo, symbol or graphic design that identifies a source of goods and distinguishes a company’s products from other company’s products in the market can be a trademark.  Here are some examples of logos, symbols, or graphic designs that function as trademarks. The McDonald’s Arches and the Amazon smile placed on Amazon shipment boxes are examples of logos, symbols, or graphic designs functioning as trademarks.

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A Trademark Can Be a Slogan. . . .

Often a company’s catch-phrase or slogan functions as a trademark if it is used in a manner that identifies a source of goods. Here is an example of slogan that is a trademark.

McDonald’s Slogan “i’m lovin’ it” as seen on a soft drink cup is a U.S. Trademark (Registration No. 3104640).

Trademark Slogan Phrase What is a trademark

A Trademark Can Be a Scent or Smell. . . .

Specific Scents or Smells that identify a brand can function as trademarks. For example Verizon has a U.S. Trademark Registration for the “flowery musk scent” in its stores.

A Trademark Can Be a Jingle or Sound. . . .

Short sounds associated with a company or brand can function as trademark if it identifies a source of goods.  A famous example of such sound functioning as a trademark is NBC’s short chime.  Follow the link below to hear the NBC chime.

In Sum, a Trademark is a Source Identifier. . . .

When you hear the term trademark or think of a trademark – think source identifier. Trademarks come in many forms.  Notwithstanding certain exceptions to the general rule, if “something” is capable of identifying a source of goods, that “something” is probably functioning as a trademark.

The contents of this article is meant to be for educational and informational purposes only, it should not be construed as legal advice.

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By | March 11th, 2018|