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Archive for May, 2012

When is a description of the mark required on a trademark application?

Whenever the applied for mark is not standard characters, a description of the mark must accompany the application to avoid an unnecessary Office Action. For example, a description is always necessary when:

(1) The mark is three-dimensional, or a configuration of the goods or packaging (TMEP §§807.10 and 1202.02(c)(ii));
(2) The drawing includes broken lines to show position or placement or to indicate a portion of the product or packaging that is not part of the mark (TMEP §§807.08 and 1202.02(c)(ii));
(3) The mark includes color (TMEP §§807.07(a) and 1202.05(e));
(4) The mark includes motion (TMEP §807.11); or
(5) The mark is a sound, scent, or other non-visual mark (37 C.F.R. §§2.37, 2.52(e); TMEP §§807.09 and 808.01).

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USPTO’s Proposed Rules for Micro Entities

The USPTO recently published proposed rules for implementing the micro entity reduced fees of the America Invents Act (AIA). For qualifying applicants, there will be a 75% fee reduction for certain filing fees. Some key points to note are:

Establishing Micro Entity Status
Must be established by filing a Certificate before or simultaneously with a Micro Entity fee payment.
Must be established in each patent application (even divisional and continuation applications).
Must be verified each time a Micro Entity fee payment is made.

Notifying the USPTO With the Loss of Micro Entity Status
Notification must be filed before or simultaneously with paying any fee after Micro Entity status is lost. You may not just pay the additional fees without also a notification.

When Will the new Micro Entity Discounts be Available?
Micro Entity fees will be available once the USPTO exercises its new fee-setting authority, and will apply to fees for filing, searching, examining, issuing, appealing, and maintaining a patent/application.

More details may be found here: https://www.federalregister.gov/articles/2012/05/30/2012-12971/changes-to-implement-micro-entity-status-for-paying-patent-fees#p-3

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U.S. Customs can help you enforce your patent, copyright and trademark rights

The U.S. Customs and Border Patrol can help you protect your intellectual property rights. When infringing goods are imported, Customs has the authority to seize goods that infringe a trademark, copyright or patent.

Because injunctions are issued less frequently in federal courts, IP owners must often wait until the end of trial to determine if a potential infringer must cease its actions.

When goods are imported across the U.S. border, the International Trade Commission offers a quicker alternative. When an exclusion order is obtained from the International Trade Commission, Customs is authorized to seize infringing goods. This procedure provides IP owners an effective method for preventing infringing goods from entering the country.

If you believe your intellectual property rights are being infringed by the importation of goods into the United States, an intellectual property attorney can help you evaluate your options. Cotman IP provides intellectual property law services in the Los Angeles area.

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How is a Service Mark used in commerce?

The following are three examples of how a service may be rendered in commerce: (1) the applicant’s services are rendered across state lines; (2) customers come across state lines in response to advertising for the services; and (3) the applicant’s licensees or franchisees are located in more than one state, and they use the mark. See TMEP 1301.03(b)

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