Paralegal Course

Trademark Prosecution Timelines + Lifecycle; U.S. Timelines for 1(a) Use-Based Applications

**You could also be issued a second/final office action at this point, which will lengthen the timeline-First someone will file an application and it will take about 3-4 months for an examiner to be signed an examine that application (USPTO reviews)-->if examiner finds issues they can reject it and issue an office action (if this happens you have 6 months to respond-if your response does not resolve the issue then they can issue a second office action which will delay timeline)-->if they do not issue a second office action then the application moves to be published within 3 or 4 months--> once it is published any third party can oppose your mark (have 30 days to oppose mark whether they think it is similar to theirs or providing same goods and services under same brand)-->once action is opposed you have up to 1-3 years for litigation or settlement purposes--> once go through this if mark still proceeds past this it will register within 2-3 months if no one opposes it will proceed straight to registration within 3-4 months

Trademark Prosecution Timelines; U.S. Timelines for 1(b) Intent-to-Use Applications

**You could also be issued a second/final office action at this point, which will lengthen the timeline; similar timeline to use based applications--file application--> takes a few months for examination-->can get rejected--> can be an office action stage--> if not it gets published-->third parties have 30 days to oppose (if do get opposed up to 3 years of litigation and settlement)-->if do not get opposed then go to notice and allowance stage (this is where it is different than use based) (Remember 1b do not need to submit specimen till later on in process) with 1b once notice of allowance is issued you have 6 month increments for up to 3 years to file statement of use; once notice of allowance is issued you have 6 months until the first extension deadline to file statement of use at which point if your mark is in use for goods and services you can submit a statement of use with the specimen and the first use date and not take extension--> but can extend for up to 3 years--> once file statement of use examiner ITU department will review and if it provides to registration it should register within 3-4 months and if there is an issue they will file an office action before they approve for registration

Prosecution Tasks IP prosecution generally refers to drafting and filing trademark and patent applications and seeing those applications through the process to registration, when the IP right is granted. As an IP paralegal, you might be called upon to do these and other tasks related to IP prosecution: 1. _____________________________________________ 2. _____________________________________________ 3. _____________________________________________ 4. _____________________________________________ 5. _____________________________________________ 6. _____________________________________________ 7. _____________________________________________ 8. _____________________________________________

1. Preliminary searching, also called availability searching, to see if you can find use of the IP in the public domain prior to an application being filed. 2. Communicating with attorneys internally on the substantive legal aspects of applications 3. Drafting applications and accompanying documents, such as a statement of use or power of attorney; 4. Filing application documents directly with the USPTO; 5. Reviewing incoming communications and determining a course of action; 6. Corresponding with the client about the status of their applications; 7. Acting as a point of contact for foreign counsel and monitoring international deadlines.

Role of a ParalegalGeneral TasksThe tasks of an IP paralegal are different in a law firm setting versus a corporate setting, and different still for IP paralegals who work in such places as public institutions and government agencies. The general tasks of IP paralegals include... 1. _____________________________________ a. _______________________________ b. _______________________________ c. _______________________________ 2. _____________________________________ 3. _____________________________________ 4. _____________________________________

1. Research-a. Internet-based; b. Database searches; c. Specialized legal tools; 2. Document preparation 3. Time keeping; 4. Project Management

Litigation Tasks IP litigation happens in various stages. It can be associated with the prosecution process and happen in an administrative setting. Or, it might be a contentious matter that arises after IP rights have been established, such as when a company or person infringes on another company's IP rights. These matters sometimes escalate to judicial litigation in a court of law. As an IP paralegal working on contentious matters, you might be called upon to do these other tasks: 1. _____________________________________________ 2. _____________________________________________ 3. _____________________________________________ 4. _____________________________________________ 5. _____________________________________________ 6. _____________________________________________ 7. _____________________________________________

1. Responsible for providing updates on cases-keeping team on track; 2. Mostly doing a lot of legal research; 3. Assist in the preparation of demands, cease and desist letters, pleadings or official response documents; 4. Draft correspondence related to a case status; 5. File documents directly with the court (electronically or in person-not sure if in person filings happen anymore?) 6. Prepare mailings 7. Understand and research court rules and judge's specific rules

Lanham Act Established in 1946, this U.S. law establishes a nationwide system for trademark protection. Protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur Introduction to Intellectual Property Types of IP Filings; Requirements under the act for eligibility of a mark for protection: 1. ____________________________ 2. ____________________________

1. it must be used in commerce; 2. It must be distinctive

3. ________________________________________ This type of patent is applicable to the invention of any distinct and new variety of __________. These patents are getting a lot more attention in the mainstream right now because of cannabis. In order to file for this type of patent, the creation must be: 1. ________________________ 2. ________________________ 3. ________________________ 4. ________________________ Example of this type of patent: _____________________________________________

3. Plant patents; plant; 1. The plant can be an alga or a macro fungus, but bacteria do not qualify; 2. The plant must be asexually reproducible; 3. The reproduction must be genetically identical to the original and performed through methods such as root cuttings, bulbs, division, or grafting and budding to establish; 4. the plant must still be non-obvious to qualify for patentability, like with other types of patents e plant's stability; Sativa, Grandiflora Rose; Sweet Tang Apple

Why IP Matters-1. Creates high paying jobs IP-intensive industries employ over _____________________ Americans and hundreds of millions of people worldwide Jobs in IP-intensive industries are expected to ______________ over the next decade than the national average The average worker in an IP-intensive industry earns about _____% more than their counterpart in a non-IP industry

45 million; grow faster; 45;

Why IP Matters-2. Powers economic growth America's IP is worth $6.6 trillion, more than the nominal GDP of any other country in the world IP-intensive industries account for over 1/3 (or 38.2%) of total U.S. GDP IP accounts for _____% of all U.S. merchandise exports - which amounts to nearly $______ billion

52%; 842

Intake Forms

A good way to begin the search and application process are by using intake forms. Intake forms collect information about potential trademarks. You may use the form to send to associates in a business' marketing and branding team to get more information on what product or services they're providing. Then, if you're in-house, you may send the form to your outside counsel for review.

Likelihood of Confusion

A likelihood of confusion analysis weighs numerous factors against one another and is outlined in DuPont Factors (In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)): The similarity or dissimilarity of the marks in their entireties as to ________________, ________________, __________________, and _______________________________ The similarity or dissimilarity and nature of the goods... described in an application or registration or in connection with which a ______________ mark is in use The similarity or dissimilarity of established, likely-to-______________ trade channels The conditions under which and buyers to whom sales are made o i.e. "impulse" vs. careful, sophisticated purchasing The ___________ of the prior mark The ______________ and ______________ of similar marks in use on similar goods The nature and extent of any actual ______________________ The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion The variety of goods on which a mark is or is not ______________ The ____________ interface between the applicant and the owner of a prior mark The extent to which applicant has a right to ____________________ others from use of its mark on its goods The extent of potential ___________________ Any other established _____________ probative of the effect of use

Likelihood of Confusion

A likelihood of confusion analysis weighs numerous factors against one another and is outlined in the DuPont Factors: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; The similarity or dissimilarity and nature of the goods... described in an application or registration or in connection with which a prior mark is in use; the similarity or dissimilarity of established, likely-to continue trade channels; the conditions under which and buyers to whom sales are made i.e. "impulse" vs. careful, sophisticated purchasing; the fame of the prior mark; the number and nature of similar marks in use on similar goods; the nature and extent of any actual confusion; the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion; the variety of goods on which a mark is or is not used; the market interface between the applicant and the owner of a prior mark; the extent to which applicant has a right to exclude others from use of its mark on its goods; the extent of potential confusion; any other established fact probative of the effect of use (trying to use dominows for pizza-cannot do this because it is too similar to dominos)

patent

A property right granted by the Government of the US of America to an inventor " to exclude others from making, using, offering for sale, or selling the invention throughout the US or importing the invention into the US" for a limited time in exchange for public disclosure of the invention when the patent is granted

Supplemental registration

A secondary list maintained by the USPTO where companies and individuals can register their marks that are not eligible for the principal register. Generic terms still can't be registered, but other marks that might be refused (like surnames or descriptive marks, and geographical indicators that haven't achieved that status) can go here.

What is a Specimen?

A specimen is a sample of your trademark as used in commerce. It is real-life evidence of how you are actually using your trademark in the marketplace with the goods or services in your application or registration maintenance filing. It's what consumers see when they are considering whether to purchase the goods or services you provide in connect with your trademark. ex goods: photo of product with the mark on it, the product container or packaging, a label and tag shown with good and trademark; a sale display of where goods are sold in connection with the mark; ex: of services-online advertising in connection with the mark, marketing material in connection with the mark, signage in connection with the mark, materials used in providing/rendering the services in connection with the mark

When is a Specimen Required?

A specimen is required for... Applications filed under ____1 (a)_______, required at time of application Applications filed under _____1 (b)______, required after receiving _____a Notice of Allowance_______________ (NOA) by filing a _____Statement of Use_________________ (SOU)o If you want to change the filing basis to ______1 (a)____, you can do so by submitting a specimen before your application is approved for publication by filing an amendment of allege Use. Applications filed under ____44 (d)_______ and _44 (e)__________ filing bases required a specimen during the renewal stage o A specimen is required with your Section 8 or 71 affidavit or declaration of use. These are filed between the _____fifth____ and ____sixth_____ year after registration, and then every _____ten____ years from the registration date

Filing with TEAS; Disclaimers

A trademark disclaimer is a statement made on record in a trademark application to indicate that the applicant does not claim any exclusive rights to the disclaimed portion of the mark. The disclaimer would be printed on the resulting trademark registration. A disclaimer is required when a trademark may include one or more _________words______ regarded as merely descriptive or generic in relation to the products or services covered in a trademark application (Disclaiming the word "coffee" in "Starbucks Coffee") Disclaimers are required to prevent trademark owners from gaining an unfair ____advantage____ Disclaimer clarifies what is not ______proprietary___________ in a mark You can either claim the disclaimer under additional statements when filing the application OR you can claim it during an _________office action___________ response by including this language: "No claim is made to the exclusive right to use "______" apart from the mark as shown." This is pre-populated language when you select the disclaimer option and write the word you want to disclaim in the provided box

IP

A work or invention that is the result of creativity; creations of the mind; anything in the artistic world and also symbols and names-we use in business to sell things; inventions; mechanical or engineering Have rights must apply for these rights and protection IP refers to intangible and inventions that can be protected-people who own these ideas can have exclusive use without 3rd party interference-these rights to expire-exciting in the public world with music and art Some geographical limitations Local state federal region Country by country

Challenges There are two main challenges trademark applications face in the U.S.: o ________________________________ o ________________________________

Absolute grounds for refusal (this can happen for a number of reasons such as:)-could get an office action you are required to do XY and Z: cannot be represented graphically, is devoid of any distinctive element, consists of words or images that have become customary in your line of business, consists exclusively of the goods shape, or of the part giving them substantial value, is a specifically protected emblem, is deceptive about the actual qualities of the goods or services, is considered offensive, contrary to public policy or morality, or promotes a service that is against the law; 2. Relative grounds for refusal: this is when an application is rejected because of prior existing trademark rights, the USPTO considers whether there is a likelihood of confusion in making this determination

USPTO/IP Office Tools-WIPO Brand

Allows you to do international trademark searching

foreign associate

An attorney outside of the domestic or home country, hired by the law firm to represent their client in another country. (Not to be confused with foreign counsel, who could be the foreign associate, but who might have been hired directly by an applicant)

Important Article in Constitution related to Copyright

Article I Section 8-provides power to congress to "Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive rights to their respective rights and their discoveries"; under U.S. law that limited time may extend up to 75 years; what is not protected is ideas

Roles as Relates to the Attorney

As a paralegal, you will perform tasks under the supervision of licensed attorneys. These tasks will be delegated to you. The attorney is responsible for your actions, but so are you.

Best Practices: General Details

Compare foreign counsel communications against filing receipt, Office Actions, Certificate of Registration, etc. issued by foreign IP office Review final description(s) of ______goods/services__________ as registered, as language may have been revised during prosecution Ensure any design _____mark_______ images are saved directly in docket record Enter manual "________Title_________" for any design marks that contain no text

Copyrights In the U.S., the ____________________________________ is responsible for the registration of copyrighted works. Copyright registration is not required for an artist, author, or creator to own the copyright to their work, but it does provide certain benefits. Requirements to file a copyright: 1. ___________________________________________________________ 2. ___________________________________________________________ 3. ___________________________________________________________ Example of something that can be copyrighted _________________________________

Copyright Office at the Library of Congress; 1. Complete an application; 2. Pay the accompanying fee; 3. Submit a non-returnable "deposit" or copy of the work of work being registered to remain on record forever at the Library of Congress; Examples: Architectural drawings, plans, and buildings; Sound recordings Any audiovisual work, including motion pictures; graphic, pictorial, and sculptural

Date of First Use

Date of first use of mark anywhere • Date applicant first used the mark in _______commerce____________ anywhere; • This use date may reflect use by the applicant, the applicant's related company, a licensee of applicant, or applicant's predecessor in interest. Date of first use in commerce; Date of first _____sale________ or transport of goods bearing mark; Date of first _______________ of services advertised under the mark; Must be date first used the mark in ____commerce_____________ that the U.S. Congress may regulate (i.e., interstate commerce; territorial commerce, e.g., with Guam or American Samoa; or commerce between the United States and a foreign country); This use date may reflect use by the applicant, the applicant's related company, a licensee of applicant, or applicant's predecessor in interest; however, current use must be being made at the time of the application by the applicant, the applicant's related company, or a licensee of applicant

2. ________________________________________ This type of patent is applicable to the invention of a new, original and ornamental _____________ for an article of manufacture. These patents are used to protect visual characteristics/the appearance of an item, but not an item's structural or functional features. In order to file for this type of patent, the invention must be: 1. ________________________ 2. ________________________ 3. ________________________ 4. ________________________ Example of this type of patent: _____________________________________________

Design patent; design: 1. Be subject matter eligible: must be an article of manufacture; 2. Be novel (new): the novelty must come from the ornamentation or decoration being claimed, not from the technical aspects or functionality.; 3. Be original: Design patents may only be issued to the true inventors; 4. Be nonobvious: The standard is the same as for a utility patent-- whether the invention would have been obvious "to a person having ordinary skill in the art to which the claimed invention pertains." But with design patents, the emphasis is placed on the visual appearance of the object.; Original curvy Coca-Cola bottle; Icons on a computer screen or mobile phone screen; The Batman Head

Best Practices: Using Workflow Reminders

Determine set of standard reminders for each type of ___deadline___; Determine team members to receive reminders of upcoming __deadlines___ (Daily/weekly emails or review directly in task list?); Determine how team members are assigned task of sending client __reminders___; Be prepared to modify as needed: o What does attorney require?, What does client require? How savvy is client contact in terms of timing of reminders?, What is procedure for reminders and follow ups related to grace period?

Word marks-Trademarks made up of words. Generic words can never be registered as trademarks. People and companies may not have the exclusive rights to use terms that are generic.; Strong v. Weak marks • _____________ is what makes a trademark strong and more protectable, while weak marks are less protectable and can leave a business vulnerable to _____________

Distinctiveness; infringers

USPTO office tools-ESTA

Electronic System for Trademark Trials and Appeals: This is where you file documents for TTAB proceedings. Side not. There are two types of proceedings handled by TBAB- appealing a denial of a trademark application and inter parties actions (where things can get ugly), like opposition, cancelation, concurrent use or interference proceedings.

registration

Federal registration of trademarks involves the establishment of rights in a mark based on legitimate use of the mark (certificate of registration on paper)

Trademark Prosecution Timelines; Foreign Timelines

Foreign applications can vary per country and don't necessarily follow the same process as the U.S.. For information on specific countries, refer to the INTA country guide and country trademark office websites. If you file a WIPO application, this can also vary per country, especially the examination, publication and registration processes. • Most foreign countries don't require you to show evidence of use to obtain a registration. However, you could be at risk for a cancellation, if you continue to keep a registration without use, depending on the country

U.S. Filing Attorney for Foreign Filers

Foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must appoint and be represented before the United States Patent and Trademark Office (USPTO) by an attorney who is licensed to practice law in the United States.

trademark intake

Form where you collect all of the information needed to complete the client's trademark application

client intake

Form where you collect basic information about the client and their legal needs

Filings with TEAS; Goods and Services

Goods are actual physical products that bear your trademark and services are activities you provide. There are ___45__ classes: _34____ for products and 11 for _services____.Tips to create a description for a Trademark application: Class headings and Nice classifications: Can be found on: i. WIPO website and USPTO website Class headings can be included in the ____description______________ for a broad coverage and will be accepted worldwide. When filing foreign applications, it can be helpful to claim ___broader_______ coverage for-a. Enforcement purposes b. Business expansion c. You can always narrow a description, but not broaden With ____broad______ descriptions, there is a possibility of an office action, but it allows you to ____narrow________ your description at a later time For specific narrow descriptions that are already accepted by the USPTO, you can refer to the Trademark ID Manual TIP: Being careful to ensure that you or your clients are actually using the mark for all of the items mentioned when filing the statement of use. • Medinol Ltd. v. Neuro Vasx, Inc.; TTAB noted that the applicant knew or should have known when it submitted its SOU that the mark was not in use on all of the goods and didn't allow the registrant to amend the application but cancelled the entire registration

Goods vs. Services

Goods: Label or tag attached to your goods in connection with the mark; A product container or packaging showing your trademark on the packaging; A website displaying your trademark where your goods can be purchased or ordered; Services: Online advertising in connection with the mark; Marketing material in connection with the mark; Signage in connection with the mark; Materials used in providing/rendering the services in connection with the mark

Geographic indicators

In the US, these are actually certification marks. Many US states have registered GIs, like Virginia's Finest and Grown in Idaho.-(Champagne must actually come from champagne)

trade secret

Information that companies like to keep secret to give them an advantage over their competitors-ex: the Coca Cola recipe

Best Practices: Annotating Matters-Details to Include

Main client contact name (email); Responsible attorney(s) - note other attorney affiliations if non-IP; Any information regarding changes in __________ownership_________ over time; Other related matter information (overlapping filing windows) Notes re Client vs. Owner ‒ same or different entities?; Foreign counsel ____________reference number_____ for use in future maintenance communications; Date and detail regarding any instructions to ___abandon/cancel__; Notes for any future action ‒ Ex. "to be abandoned" instructions while registration is still active and set reminders to update record accordingly at appropriate time; Include notes regarding last action taken and by whom

Design Patent

May be granted to anyone who invents a new, original, and ornamental design for an article of manufacture- ex: Coca Cola bottle

U.S. licensed attorneys representing any trademark filers must provide all of the following

Name, postal address, and email address; Statement confirming their active membership in good standing of a bar of the highest court of a U.S. state, Commonwealth, or territory (this is just a checkbox); Bar membership information (state, bar number if applicable, and year of admission)

Specific Specimen Requirements

One specimen for each class of _____goods_______ or __services__________. Must be a real example of how you use your trademark in commerce in providing your goods or services (not a mockup, digitally altered image, rendering of intended packaging, or draft of a website) • Specimen requirements: Show your trademark used with the goods or services listed in your application; Depict the same trademark as shown on your drawing; Show your use of your trademark (not use by someone else, such as press releases sent exclusively to news media); Be an appropriate type of specimen based on whether you have goods or services.; Show your trademark directly associating the mark with the goods or services; Show your trademark used in a way that consumers would perceive it as a source indicator for the good or services in your application (it functions as a trademark); Include the URL and date you accessed or printed the webpage in your submission; Be attached to TEAS forms as JPG files of up to 5 megabytes or PDF, WAV, .WMV, .WMA, .MP3, .MPG, or .AVI files of up to 30 megabytes.§ See our specific formatting requirements before submitting your specimen File types: PDF or JPG only (except for non-visual marks)

Collective Marks

Per INTA, a collective mark is a form of trademark or service mark owned by a collective, whose members use the collective mark to identify their goods and services to distinguish their goods and services from those of non-members, and to indicate membership in the group. Ex. National Association of Realtors or AAA.

Principal vs. Supplemental Registrations

Principal: Protection for standard registrations for distinctive marks; Can base Madrid applications on principal register trademarks; Principal register applications can initially be filed under intent to use basis; Can record with customs; Once a mark has been used for five years, it can gain acquired distinctiveness and become registered on the principal register; Supplemental: generic/descriptive marks usually fall under this; Protection for marks that don't qualify under a principal registration due to descriptiveness, geographic descriptiveness, or because they are primarily a surname; Can't base Madrid applications; Supplemental applications can only be filed under the used in commerce basis; Can't record with customs; Gain limited protection, especially against confusingly similar marks; However, there is no presumption of validity and ownership

Prior art

Product and processes that already exist.

Copyright

Protect works of authorship, such as writings, music, and works of art that have been tangibly expressed. The Library of Congress registers copyrights which last for the life of the author plus 70 years (Ex. Copyright page from Harry Potter)

Strength of Marks

Provide an example for each mark category and indicate the level of strength (refer to figure 1 for an example).Generic Example: ______Band-aid_______________________ Strength level: _________Weak________________ Descriptive Example: ___________The Weather Channel__________________ Strength level: _________Weak________________ Suggestive Example: __________Netflix___________________ Strength level: _____________Acceptable____________ Fig. 1: The Weather Channel's mark is categorized as a descriptive mark. Descriptive marks are generally weak. Arbitrary Example: _________Apple____________________(using an existing word for something that has nothing to do with the actual word) Strength level: __________Strong_______________ Fanciful Example: ___Kodak__________________________ Strength level: ______Strong___________________

Benefits of filing a copyright

Registration is required to file a copyright infringement lawsuit; Copyright owners get a bump in litigation if they register within five years of creation; Registration is also required for copyright owners to seek relief with the International Trade Commission; Registration holders can file with customs and border protection, allowing them to seize potentially infringing goods entering the country; Registration creates a public record, which means its searchable, and goes further in preventing infringement from occurring in the first place

Communicating with Parties: Report Preparation

Report preparation is dependent on what and who the report is for. When generating a report, it's important to keep the following questions in mind: What is the function of this report? Who is the recipient of this report? a. Attorneys i. Reports likely to be focused on major deadlines and interim reminders b. Clients i. Reports likely to be focused on full portfolio status with next action deadlines c. Foreign Counsels i. Reports could include multiple clients and their matters 3. What specific information and level of detail does the recipient require?

Factors to consider that may cause a mark to be rejected

Surname; Geographically descriptive; Deceptive Disparaging or offensive; Foreign term that translates into a descriptive or generic term; Individual's name or likeness that is being registered without proper consent; Title of a single book or movie; Matter that is purely decorative or ornamental (all factors that could make it difficult to register your trademark-may lead to long litigation or examination process)

Using IP Office integrations in Docketing Systems: Entering Current Deadlines and Statuses

System will provide updated status information and auto-docket new deadlines as information is related from the USPTO. Updates can lag behind true _______real-time___________________ status, so best to double check; ___Non-standard____________________ deadlines may be incorrectly determined by auto-docketing o Rules may be correct 90% of the time, but there can be times where deadlines are calculated before the true deadline date.; sometimes the deadline is before-so actually have longer to respond than the system actually thinks

TEAS Plus vs, TEAS Standard (2 types you can file in US)

TEAS Plus: can't customize goods and services; have to submit both fees and additional statements at time of filing; $225 per class; Pay all application filing fees with your initial application; You must only select your goods or services listing from the Trademark Identification (ID) Manual; All required additional statements must be provided in the initial application; TEAS Standard: $275 per class; more freedom and can submit additional applications after file; Pay one application filing fee with your initial application and the rest later in the process; You can customize and write the description of goods and services, but it's still essential to accurately describe goods and services; All required additional statements can be submitted after your initial application

Communication

Templates for sending client emails

Filing Strategies: Paris Convention

The Paris Convention for the Protection of Industrial Property (or "Paris Convention") provides cross-border acknowledgment of certain rights related to IP. If you are expanding into non-US markets, register in those jurisdictions as soon as you can! Unlike the US, trademark rights in most countries are based on the first to file an application, not the first to use. Most countries are included under the Paris Convention, but not all - there are currently 176 countries. The Paris Convention allows a trademark holder to file anywhere within __6____ months of the first filed application to claim the original filing date of the first application; i.e. If you file in the US on October 1, 2020, you have _____6___ months from that date to file in any of the 176 countries and claim the date of filing of the US application. You will have to claim ___all____ of the goods and services from your first filed application. If you add goods and services to each individual new application you file, those goods and services will not be extended the same _________filing deadlines ______________ as the first filed application, but the date the new application is filed. You will still have to go through the _________examination____________ in each individual country that you file a priority-based application. Each priority application will register on its own ___timeline__________________ based on that jurisdiction; even though you are getting the same filing date-countries examination process still applies to that priority application- unlike the US, trademark rights in most countries are based on the first to file an application, not the first to use

coined terms (fanciful marks)

The are made up words. Ex: Google and Kodak

Filing Strategies: Preparing Stylized/Color Mark Applications

The following are characteristics of standard, stylized, and non-traditional mark types. 1. Standard Character This allows for a ______broader_________ coverage, as it covers use in any font/stylized form It also allows you to claim an earlier filing date when you're still finalizing your logo 2. Stylized Must always be used as filed - no ________modifications___________ allowed. If you plan to redesign your logo, you'll have to file a new application. If you're going to file a stylized mark, you should also file a _____standard character_____________ mark simultaneously, especially if you think you'll redesign in the future. A good option for a word mark that is too generic/descriptive. 3. Color Marks A standard or stylized mark that claims ________color___________ If you claim ____color______________, you can only use the mark in those colors A ____black and white____________________ mark (no claim to color) is broader in protection and covers the use of all colors-ex: facebook blue color/FedEx purple and orange

Docketing Basics for Trademark Filings

The most important thing when docketing is confirming correct initial filing details and dates related to filing and prosecution. Correct information can determine other deadlines. Things to pay attention to when filing are: Serial number-Determine format used by ________IP Office_________ (and don't stray); § The U.S. serial numbers are generally formatted as ___two digits/three digits, three more digits______ (different depending on jurisdiction/country); Becomes important for searching functions. Determine foreign filing priority deadline; Priority applications or other related matter information; Accurate publication date in relation to _____opposition___________ deadline; Confirm ___non-standard____ deadlines o IR 1st Refusal Date for 66(a) applications- Post-Registration Office Action or Audit- Deadlines for Suspension Letter vs. Suspension Inquiry Confirm correct information upon issuance of a registration • Maintenance deadlines in relation to specific ___country____________ law o Use and/or renewal deadlines for _______jurisdiction___________§ Countries that calculate renewals based on filing date vs. registration date§ Countries that have interim use filings required§ __WIPO_______ designated countries - renewal dates o Rules surrounding non-use of a mark and vulnerability for cancellation

search

There are many platforms out there for searching, and you may be expected to use several of them (at once)- like the USPTO, WIPO, and paid services, like Corsearch, TrademarkNow, or Markify.

Elements and Requirements of Trademark Applications; Mark Types

There are three mark types to consider when filing a trademark: Elements and Requirements of Trademark Applications 1. Standard Character• A mark that is comprised of ____________word(s)________, _______letter(s)_____________, _________numbers(s)__________, or any combination thereof with no ______design__________ element or stylization (Caterpillar or Nordstrom Rack) 2. Stylized• A mark that is comprised of stylized _____word(s)_____________, _____letter(s)____________, and/or ______number(s)_____________, and/or a design element. The design may appear by itself, or combined with word(s), letter(s), and/or number(s) 3. __Non-traditional___________________ • A mark that may be a shape, sound, scent, trade dress, or otherwise _________non-traditional_____________ mark (lubiton red heal mark, scent of play doe, chimes of NBC)

Filing Strategies: Multi-Class Trademark Filing v. Single Class Trademark filings

There is no cost difference in the US if you file multi-class or single class if you are filing for the same number of classes. However, this may not be true in other foreign jurisdictions. If you believe that one class will go through quicker than another class, that class should be filed in a separate class; If you know you have or will have good use for one class over the other(s); If you know the business will be launching in one class sooner than the other(s); If you think you'll get an objection or citation in one class over the other(s); If you end up filing a multi-class trademark and face any of the issues above, you can always request to divide the class and allow some of the application to proceed to publication, which you address the issues for the other classes separately. Outside of the US, some countries only offer single class applications vs. multi-class applications, so you may have no choice but to file single-class applications

service marks

These are trademarks that represent services, like United Airlines, or Firm Forward. Amazon is a regular trademark and a service mark.

CRM/Client Resource Management System

This is a platform where you store contact information and categorize contacts into groups-like clients, potential clients, and referral contacts, for marketing and ongoing communications. This can also be used as or in combination with a sales pipeline, like Hubspot, but there are CRM solutions that are geared toward law firms, like Clio Grow

filing date

This is the date the PTO receives the application

application number

This is the unique identifier assigned by the PTO to a trademark once it has been filed

Docket

This is where you track all of the important dates and deadlines related to the IP rights you manage for your clients. Many of these are automated, and there will be an entire section devoted to this.

docketing

This is where you track all of the important dates and deadlines related to the IP rights you manage for your clients. Many of these are automated, and there will be an entire section devoted to this.

USPTO Office Tools-TEAS

Trademark Electronic Application System-go in an actually file trademark applications and where you can fine all of the forms that can be filed electronically with the USPTO as a part of that process

USPTO Office Tools -TESS

Trademark Electronic Search System-this is used for trademark searching

USPTO Office Tools TSDR

Trademark Status and Document Retrieval: Look up an application status and the accompanying documents here.

Renewals

Trademark registrations are valid for a set period of time, usually 10 years, and they must be renewed in order for the owner to maintain their exclusive rights. An application to renew the mark is generally required prior to the expiration of the original registration, or within a grace period immediately following registration, usually 6 months.

Trademark Search Opinion Letters

Trademark search opinion letters are letters you send to clients once searches are complete. In your opinion letter, it's ideal to include... An overall risk rank for business to decide if they want to proceed with a mark.; Use a point or percentage scale: § 1-5, 1 being low risk, 5 being high risk If the risk is a 3, the business might consider changing their trademark before registering. If the risk is a 5, the business should not proceed with registration and consider rebranding.; in letter include Identical or confusingly similar marks and the history/background of certain third parties that may pose a bigger risk-any marks that are the same or similar or any similar goods or services; provide A recommendation on next steps whether to use the mark or if they did a knockout search to do a full search-or if they did a full search--> an application or rebrand; what is their value to the client? making sure the client has a strong mark

USPTO office tools-TTABVUE

Trial and Appeal Board Inquiry System- This is where you can see the actions being taken through TTAB (Trademark Trial and Appeal Board)see what is happening with files through TTAB when mark is refused-have opportunity to file an appeal and can see these documents here

Client Confidentiality

Unless disclosure is required by law, attorneys and paralegals are generally bound to client confidentiality by the rules of ethics which govern their professions. Like attorney-client privilege, attorneys and paralegals may generally not disclose confidential information without the permission of the client.

Managing up with Docketing Systems

Use task reminders to track attorney's deadlines o What is going to help this particular person get their tasks done? Weekly/Monthly/Quarterly docket reports?; Stay on top of filing window openings and prepare __client____ communications ahead of attorney instructions to do so; Set follow up ___notes___ and __reminders__ for direct communication with clients regarding ongoing matters and requests for instructions; Set follow-up __notes__ and __reminders___ for communication with foreign counsels regarding ongoing ___matters___ and confirmation of instructions

Types of IP Filings-Patents: Patents are categorized into three general categories: 1. _______________________________________ This patent covers the creation of a new or improved -and useful- product, process, or machine, also known as a "patent for invention". This prohibits other individuals or companies from making, using, or selling the invention without authorization. These types of patents can be electrical, mechanical, or chemical. In order to file for this type of patent, the creation must be: 1. ________________________ 2. ________________________ 3. ________________________ 4. ________________________ Example of this type of patent: _____________________________________________

Utility; 1. Be subject matter eligible: fall into one of these categories: processes, machines, articles of manufacture, and composition of matter, or an improvement of an existing idea or invention; 2. Be novel (new); 3. Be useful: Get it? Utility=useful. This means that the invention must have a useful purpose; 4. Be non obvious: The standard is whether the invention would have been obvious "to a person having ordinary skill in the art to which the claimed invention pertains."; A foldable mobile phone; Genetically engineered mice for vaccine research; Amazon's 1-click shopping method

Watch/monitoring (including 2(d) monitoring):

Watching and monitoring is usually done with paid platforms, often the same ones that offer searching also offer this service - where they monitor new applications and the broader world to see if there are other marks out there that are confusingly similar to the clients marks.They send alerts so that you know if a client may need to potentially file an opposition or take other action, like sending a cease and desist letter.

Using Docketing Systems to Communicate with Clients and Foreign Counsels

When communicating with clients and foreign counsels, it's important to keep the following things in mind: Who is the recipient of this communication and what is its ____function____? What specific information and level of detail does the ___recipient__ require? Provide clients/foreign counsels with ____read-only___ access so that they can view filings and status of matters. __Auto-generate__ reporting emails for initial filing, publication, allowance, registration to improve efficiency; Generate reports in ___multiple____ formats in order to adhere to client's needs; include multiple entities handling on behalf of foreign counsel in same or individual reports? Create __deadline__ reports and reminders - monthly, quarterly, etc?

Why does it matter?-Trademark Selection Process

_____Weaker_______ marks are more difficult to register and are more difficult to ______register__________. This will in turn weaken the ________commerical__________ strength of the mark. If a mark is widely used, you may not be able to stop competitors from using the same or similar marks. If you are hit with an ___________infringement__________ suit, you may be forced to rebrand, which could cost more money. You can potentially be ______blocked_____________ from key foreign markets.

Fail to Function or FTF

a trademark "fails to function" as such when it is not likely to "be recognized in and of itself as an indication of origin for ... a particular product.", "to be a trademark, a designation must do the job of a trademark."

Filing Bases: 1 (a), 1(b), 44 (d), 44(3), 66(a) There are 5 legal bases for filing an application for registration of a mark. A basis must be assigned to each class in an application for it to proceed to registration.

a. Section 1(a): You are currently using your trademark in _____commerce___________ with your ____goods___________ and/or ____services__________ i. You will have to file with a specimen and first use date, which we will discuss later in the presentation b. Section 1(b): You have a ________bona fide____________ intention to use your trademark in commerce with your goods and/or services in the near future i. No specimen or first use date required, you can submit once the application is allowed and you can file a statement of use ii. Can be converted to a 1(a) by filing a ______1(a)_______ and _____first use_______ date iii. You can file combined 1(a) or 1(b) applications but registration will be delayed until you can show use for all _________named g/s_______________________, or else you can divide the application and register the portion of the app that is in use so it will partially proceed to registration c. Section 44(d): You own an earlier-filed _____foreign____________ application that was filed within six months of your ___U.S._______ application for the same trademark and the same goods and/or services i. Will have to submit a copy of the earlier-filed _______foreign_________ application d. Section 44(e): You own a _____foreign____________ registration of the same trademark for the same goods and/or services from your ___________country of origin__________________ i. Will have to submit a copy of the _______foreign _________ registration e. Section 66(a): Your application is based on a filing under the Madrid Protocol (WIPO), a filing treaty that ensures ______protection______________ of trademarks in multiple countries

Software Tools-Practice Management; This is meant to be all-in-one platform for your work, where many different types of tools reside or are integrated, but this usually includes: ________________________________________ ________________________________________ ________________________________________ ________________________________________ ________________________________________ ________________________________________ ________________________________________ ________________________________________

client intake (collecting information); case management; document management; billing; docketing; task management; contact management; time-tracking

Trademarks can generally be categorized into one of four categories of distinctiveness, from most to least distinctive: what are the four categories

coined terms; arbitrary; suggestive; descriptive marks

Common Law Trademark Rights- In the U.S. and other countries (mostly those colonized by the English) these are rights that are established through usage and custom. In the U.S., you can have trademark rights merely by using a trademark in _______________.Unlike federal registration, common law trademarks are usually enforceable only within the geographic region of where the trademark owner is using it in business. When an infringement occurs, an unregistered trademark owner may not be able to sue and collect damages or recover attorney fees. Common law trademark rights are often claimed prior to a registration and use the symbol _____ to put the public in notice.

commerce; TM

Foreign Knockout searches

crucial if going to be expanding into foreign countries; risk you will not be able to enter into key foreign markets; Foreign (international): European Union Intellectual Property Office (EUIPO), World Intellectual Property Organization (WIPO), TM View, International Trademark Association (INTA)

Trademark Searches-once a knockout search is done recommended to do Full Searches

deeper search; foreign full searches you would reach out to foreign counsels and engage them; design searches can be tricky, sending a full search request to a vendor might make more sense from a financial perspective if you are in house; Clarivate CompuMark, Corsearch

Alt Legal Intake Forms

https://support.altlegal.com/forms-and-the-teas-toolbar-extension/forms Alt Legal's intake forms make it easy to collect and organize information. You may also use the form to prepare an application for a trademark with the USPTO, which can be auto-filled with their toolbar extension.

Encourages and rewards innovation IP rights _________________ entrepreneurs to keep pushing for new advances in the face of adversity IP rights facilitate the free flow of information by sharing the protected know-how critical to the original, patented invention. This process leads to new innovations and _____________ on existing ones

incentivize; improvements

Certification marks

indicate the existence of an accepted product standard or regulation and a claim that the manufacturer has verified compliance with those standards or regulations. They are different from trademarks because they are not the the source identifier of the good or service itself. Examples include symbols on food like USDA organic or Energy Star on appliances. They are registered like trademarks

Docketing Tasks As an IP paralegal, you'll more than likely be involved in overseeing docketing, advanced research, and reporting in the docketing system you use. Docketing is keeping track of important _______________ and ______________ deadlines. This is usually done in a database. Docketing involves reviewing legal documents for _______________ and performing some data entry to be able to monitor those ____________ and run reports. Docketing includes keeping track of official ___________ and _____________, and it often includes tracking established ___________________________ and ______________ as well, such as internal reminders to request necessary documents from clients, for example.

legal and filing; key dates; dates; dates and deadlines; workflow actions; deadlines

Ethics (and what to do/not do) Maintain a high level of integrity and honesty in all of your personal and professional endeavors. Never practice law without a _____________________ Do not establish an ________________-_______________ relationship.* Do not set any fees for __________ services Never offer a legal ________________. Tell people you are a ____________________. Disclose __________________ of __________________. *Reminder that attorney-client privilege extends to paralegals, too. Privilege works by keeping all confidential communications between the client and the lawyer, and by extension, you - the paralegal, secret.

license; attorney-client; legal; opinion; paralegal; conflicts of interest;

While supplemental registration does not provide:• _________________________________________________ • _________________________________________________ • _________________________________________________ Benefits include: • _________________________________________________ • _________________________________________________ • _________________________________________________

notice of registration or a presumption of ownership and it does not grant exclusivity over a mark; Benefits include: being able to use the registered trademark symbol, being able to register in other countries with reciprocal rights, and the potential for damages in a successful infringement action. (Want to always start with principle registration but if cannot pass this then go to supplemental)

USPTO

one of the many acronyms you will learn; United States Patent and Trademark Office; Fun Fact: Almost every country in the world has a patent and trademark office; every IP paralegal should bookmark this page:.. The USPTO is the government body responsible for granting trademarks and patents. Applications are submitted to the USPTO, which then process them.

4. Addresses global challenges Nearly all of the hundreds of products on the WHO's Essential Drug List came from the R&D-intensive pharmaceutical industry that depends on _____________ protections IP-driven discoveries in alternate energy and green technologies will help improve energy security and address climate change

patent

Applicants should always start with the ___________________ register.

principle

Trademark

protected words, names, slogans/catchphrases, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Treademarks, unlike patents can be renewed forever

3. Strong IP protects consumers Strong IP rights help consumers make an educated choice about the _____________, _________________, and __________________ of their purchase Enforced IP rights ensure products are _____________, and of the high-quality that consumers recognize and expect IP rights foster the confidence and ease of mind that consumers demand and markets rely on

safety, reliability, and effectiveness; authentic

Trademark Searches-knockout searches (crucial to do search to know what you are up against and see if it will register)

searches that you can do on your own and utilize vendors for; start with test search on USPTO-then do search engine search on yahoo or bing; also check app stores to see if other apps are similar to yours; helpful to do social media searches domestic : Trademark Electronic Search System (TESS);(U.S)/

attorney of record

the attorney listed with a court or jurisdiction, like the USPTO, on behalf of a party to the case, such as an applicant. The attorney of record for the applicant receives all communications regarding the status of the IP application or case in which they represent the client.

annuity

the fees paid on an annual basis to maintain patent rights

Suggestive marks

these are marks that hint at the goods or services they identify but require some "imaginative leap" ex: Netflix or Airbus

Arbitrary

these are words that exist and have meaning but not in relation to the goods or services being protected; Ex: Apple for computers or Camel for cigarets

patent claims

these define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent (Wikipedia def)

Descriptive marks (mostly can't get protection for these)

these give consumers an immediate understanding of the good or services they represent ex: Quick Stop for convenience stores; these are only protectable and registerable as trademarks if the acquire secondary meaning, which happens when the public largely knows and understand that the mark in connection with the goods and services being offered. Other examples include Best Buy and Overstock.com

The Federal Trademark Dilution Act of 1995

this federal U.S. law protects famous trademarks from uses that dilute their distinctiveness, even when there will be no likelihood of confusion or competition.

The Anticybersquatting Consumer Protection Act (ACPA) of 1999

this law was targeted towards false Internet domain names containing legitimate trademarks. This law established a cause of action for registering, trafficking in, or using a domain name confusing similar to, or dilutive of, a trademark or personal name.

The Trademark Counterfeiting Act of 1984

this made it an offense under Title 18 of U.S. Code to intentionally use (or the unauthorized use) a counterfeit trademark.

Trademarks A trademark is a source identifier for goods and services. A trademark is a ________________, _________________, __________________, or _________________, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. Trademarks, unlike patents, can be renewed _______________ as long as they are being used in business. If a trademark goes unused, it can eventually be lost and re-enter the public domain for other parties to use.

word, phrase, symbol, or design; forever

Using IP Office integrations in Docketing Systems: Inputting New Records

• If system is set up to recognize group email alias or individual attorney email contacts, the system will automatically download basic information for new _________filings_______ and enter any known _____deadlines__________________. o Especially helpful for large file transfers, portfolio filings, or maintenance of foreign matters

Using IP Office integrations in Docketing Systems: Updates are Limited to Certain Fields

• Still need to ensure that all additional matter-related details are entered that may not be automatically input from Trademark Office database (client/owner, attorney/paralegal, client reference number, any additional Notes or manual deadlines) o These are some fields to manually into your docket: § ________________________________§ ________________________________§ ________________________________ § ________________________________ § ________________________________