I have Achieved Trademark Registration: How Do I Protect My Trademark from Third Party Infringement?

March 19th, 2012

Thanks for staying with us in our continuing coverage of critical application issues for trademark filers. As before, if you want to avoid delays in the prosecution of your application, you must pay attention to the following important tips.

First, remember that registration is not instantaneous or guaranteed. Each application must be reviewed for legal requirements and this takes time. Although your application usually will begin to be examined within 3 months, final disposition may be months or years down the road. You may need to respond to refusals or requirements issued by the examining attorney handling your case, submit additional paper work, and pay additional fees. This is especially true if you filed under the Intent to Use basis. You will be required to submit additional forms and you will be required to pay additional fees.

Yeah, I expected it right away.  Like, renewing your driver’s license.  You know, pay your money, get your certificate.  But it turns out there’s all this law stuff and everything’s gotta be just perfect.  It’s kinda like a little legal proceeding, except done over the Internet.

Second, make sure to use the electronic resources provided to you by the Office.  The USPTO.GOV website allows you to do many things on-line. Once your application has been received, you can check the status of your application and view and download all the documents and information in your file.

No, it’s great!  I just pop in my serial number and it tells me if anything is happening with my application.  That way I don’t have to keep calling the examining attorney to find out what’s going on.  So much easier and so much less time consuming.

For details on our third, and related, tip, I sat down with Grant Gainsworth, TMIN’s Senior News Analyst.

Grant, I understand that applicants have been reporting that they’re receiving Notices of Abandonment and they’re not sure why.  Could you tell the viewers what’s going on?

Sure thing, Mark.  Based on my conversations with applicants, it turns out they didn’t realize they needed to file additional paperwork.  For example, they didn’t know they needed to respond to an Office Action, or file a Statement of Use, or file some other type of document.  As a result, when the Office didn’t receive the proper paperwork, it had no choice but to abandon the applications.

Is there any way to prevent this from happening?

There sure is.  Check your application status every 3 or 4 months.  The electronic resource you use to check your status is called the Trademark Applications and Registrations Retrieval system, or TARR. T-A-R-R.  Take a look.

You can use TARR to see a summary of all the actions in your application file and to make sure you don’t miss a deadline.

Now, can you use TARR to see the actual documents in the file?

No.  For that you need to use TDR, or the Trademark Document Retrieval system.  TDR allows you to look at, print, and download all the documents in your file.  Reading these documents will make sure you stay up to date on any refusals or requirements.

Unequivocal yes.  I was breaking my back lugging those paper files around, but now with everything electronic, it’s a breeze!  I go into TDR, download the action I need to respond to, and respond to it without all those papers.  Even when I’m flying cross-country.

Are there any other items that applicants need to stay up to date on?

There sure are.  As an applicant, it is your responsibility to make sure the Office can communicate with you.  The Office most likely will be communicating with you via e-mail, so make sure your correspondence information, including your current e-mail address, is up to date in the Office records.  If you treat Office e-mails as spam, or you respond after the deadline, or you fail to respond at all, your application will go abandoned.  And you will not be issued a refund.

That’s the truth, man.  I kept having to change my e-mail, ‘cause of grad school and I never updated my stuff on the USPTO website.  So, I missed a filing, my stuff went abandoned, and I lost all this time and money.  I’ll tell you, it’s genius, though.  For the app that I have in right now, it’s so easy.  All you have to do is go to the Change of Correspondence Address form and put in your new e-mail.  Simple.

Anything else that applicants should keep in mind?

Just remember: check your application status every 3 to 4 months and make sure you keep your correspondence information up to date.  That should help keep you from getting a Notice of Abandonment.

Thanks, Grant.


That was Grant Gainsworth, with our highly valuable third tip.

Fourth, if you have questions, ask.  If you’re having technical difficulties, contact the TEAS Help Desk.  For general information, contact the Trademark Assistance Center or, once your case has been assigned to an examining attorney, you may contact the examining attorney with questions.  Additional contact information is available through the “Contact Us” link on the website.  In addition, you may hire an attorney who specializes in trademarks to represent you before the Office.

Well, as soon as I read the refusal letter from the USPTO examining attorney, I realized I was in way over my head.  So, I looked on-line and checked with my state bar association and found a trademark lawyer to hire.  And, you know, I’m glad I did because she was able to work everything out for me and I got my registration.

Fifth, beware of solicitations that resemble official documents.  You may receive unsolicited communications from non-USPTO entities offering trademark monitoring, document filing, and representational services.  These businesses are not affiliated with the Trademark Office and you are not required to retain their services in order to prosecute your trademark application.  If you wish to pay for monitoring services or hire an attorney to represent you, you may, but the services are not required by or in any way affiliated with the USPTO.  If you have any questions, please contact the Trademark Assistance Center.

Yes.  Some of these communications can be confusing at first.  Some of them look very official.  They even use my serial number and my mark.  But once I looked at the fine print, I realized that these notices didn’t even come from the USPTO.

A transcript of this report, a list of these critical Tips, and a printable Application Timeline are available on the USPTO.GOV website.  Remember, these are all general guidelines and may not be directly applicable to your case.  They are, however, essential suggestions to prevent your mark from going abandoned.

For more information, to replay these broadcasts, and to view upcoming broadcasts, keep it locked right here on USPTO.GOV.  I’m Mark Trademan, Trademark Information Network.  We now return you to your regularly scheduled trademark application prosecution.
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