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Posts Tagged ‘trademark attorney’

Does a Notice of Abandonment mean I need to re-file my trademark application?

Short answer, not always.  A Notice of Abandonment is issued when a Trademark Applicant fails to take action by not filing a timely response to an Office Action or a Notice of Allowance.  The Notice of Abandonment triggers a two-month period wherein the Applicant can file a Petition to Revive Abandoned Application.  However, if the applicant failed to file a Statement of Use in response to the Notice of Allowance after expiration of the fifth extension (or 36 months from the date of the Notice of Allowance), the Applicant cannot revive the application and must re-file.  The Trademark Electronic System (TEAS) will alert the Applicant upon entry of the U.S. Serial Number at the time of filing the petition.

There are two types of Petitions to Revive:

  1. A Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action.  This Petition must have an accompanying Office Action Response addressing all issues raised in the Office Action.
  2. A Petition to Revive Abandoned Application – Failure to File Timely Statement of Use Or Extension Request.  This Petition is necessary when an Applicant has failed to respond to a Notice of Allowance received in connection with an Intent To Use application. The Applicant will have the option of filing a Statement of Use or, if the Applicant has any of the 5 allotted extension remaining and the Petition not is being filed beyond 30 months from issuance of the Notice of Allowance, an Extension Request.

If you have received a Notice of Abandonment, we recommend you seek counsel from a Trademark Attorney immediately as the passage of time can reduce your chances of getting the Petition to revive granted.  Cotman IP is located in Pasadena, California just outside of Downtown Los Angeles.

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Can I trademark the title of my book?

The title of a single book or creative work* is not registrable on the Principal or Supplemental Register.  The name of a series of books or creative works may be registrable if it identifies or distinguishes the source of the goods.   However, a term used in the title of a series of books is not registrable if it merely identifies a character in the books.   Here are some examples given in Section 1202.08 of the Trademark Manual of Examination Procedure:

  • In re Scholastic Inc., 23 USPQ2d 1774, 1778 (TTAB 1992) (THE MAGIC SCHOOL BUS, prominently displayed on the cover of a series of books, has come to represent a source to purchasers and would be recognized as a trademark).
  • In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) (THE LITTLES, used in the title of each in a series of children’s books, does not function as a mark where it merely identifies the main characters in the books).
  • In re Caserta, 46 USPQ2d 1088 (TTAB 1998) (FURR-BALL FURCANIA, used as the principal character in a single children’s book, was found not to function as a mark even though the character’s name appeared on the cover and every page of the story).
  • In re Frederick Warne & Co. Inc., 218 USPQ 345 (TTAB 1983) (an illustration of a frog used on the cover of a single book served only to depict the main character in the book and did not function as a trademark).

If you are the author of a book and wish to have a registered trademark for the title of the book some thought needs to be given about how to make that title part of a book series. More detail about trademark registration can be found on our website >> here. Our trademark attorneys can answer any questions if you need help.

* Examples of “single creative works” include books, videotapes, films and theatrical performances. (TMEP §1202.08)

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How can I register my trademark internationally?

There are three types of international trademark applications, Community Trade Mark, Madrid System, and direct filing in individual countries.

A Community Trade Mark (CTM) application is a single application that covers the European Union (EU).  The EU has 27 member states which includes Austria, Benelux, Belgium, The Netherlands, Luxembourg, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, the Slovak Republic, Slovenia, Spain, Sweden, and United Kingdom.  The CTM gives the proprietor uniform trademark rights in all of the member states or those selected member countries based on the needs of your company.  A CTM application is filed with the Office of Harmonization in the Internal Market (OHIM).

The Madrid System was established by the Madrid Agreement in 1891 and the Madrid Protocol of 1989.  The Madrid System allows you to file a single application, in one language, using one currency, to seek protection in more than 80 member countries or designating certain member countries based on the needs of your company.  The member states and organizations belonging to the Madrid Agreement and the Madrid Protocol are listed at the following link:  http://madridprotocol.info/memberstates.html A Madrid System application is filed with World Intellectual Property Organization (WIPO).

You can also file trademark applications directly in certain countries.  This is an option to consider when it proves more cost effective than a CTM or Madrid application or you wish to register your trademark in a country that is not a member of the EU or the Madrid System, such as Canada, Mexico, New Zealand, Israel, India, or United Arab Emirates (UAE).

The cost for these international trademark applications vary, depending on the type of coverage you are seeking.  To obtain more information on the different types of international trademark registrations, we recommend speaking to your Trademark Attorney.  If you do not have a Trademark Attorney, we are located just outside of Downtown Los Angeles in the City of Pasadena, California.

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