Women’s Forum of Colorado

March 19, 2015

Mary Boney Denison

Commissioner for Trademarks

Women and Trademarks

• Progress of women at the Trademark Office

• Mirrors advancement of women as business

owners and trademark holders

• Most of top administrators in Trademarks are

Women

What is a Trademark?

• Any Word, Name, Symbol,

Device (or any combination

thereof) used to identify and

distinguish goods or services

and to indicate their source

• Federal trademark

registrations can be owned

indefinitely if properly

maintained

What is a Copyright?

• Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works (published or unpublished.

• Term of protection begins from creation and generally runs the author’s life plus 70 years after death

• Protects particular expressions of ideas.

• Examples are books and CDs.

What is a Patent?

• A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is usually 20 years from the date on which the application for the patent was filed in the United States.

• Protects Inventors

Acme Cleaning Company

The Meaner Cleaner ®

©

(patent pending)

Valuable Business Assets

• Trademarks can be valued in

the billions of dollars

Key Purposes of Trademarks

• Allow consumers to distinguish between

different products and services – helps their

buying decisions

• Encourage trademark owners to provide

goods and services of consistent high quality

and to build goodwill in the trademark

Federal Trademark Registration

Benefits

• Can protect a company’s name or logo, often a company’s most valuable asset

• Grants constructive notice that registration owner has the right to use the mark throughout the entire United States

• Can be used as basis for obtaining a registration in foreign countries

Federal Trademark Registration

Benefits

• Trademark registrants can use the power of

the federal government (via U.S. Customs

and Border Protection) to prevent importation

of goods bearing infringing marks

• Registration owners have the right to use ®with trademark, alerting others to registered

status and preventing defense of “innocent

infringement”

• The USPTO will refuse registration to any

later-filed trademarks it deems “confusingly

similar” to your trademark

New Application Filing Levels

• FY 2014: approximately 455,000 classes-- 5% increase

• FY 2015: approximately 483,000 classes-- 6% increase10

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1. SELECT

2. SEARCH

3. FILE

4. MAINTAIN

Considerations for Building a Strong Brand

Goods vs. Services

• Trademarks are used in connection with goods (e.g., cars, clothes, toys)

• Service Marks are used in connection with “services,” activities performed to the order of, or for the benefit of, someone other than the applicant (e.g., car dealerships, grocery stores)

Counterfeiting

• Global criminal enterprises

• Threatens health and safety

• Costs billions per year

• Not just clothing and jewelry

• Also vehicle parts, pharmaceuticals, etc.

• See www.stopfakes.gov

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Current Issue: 3D Printing

• While we embrace new technology, 3d

printing has provided new challenges in IP.

• Direct Infringement and Contributory

Infringement Claims can be used.

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Current Issue: Marijuana

• 21 U.S.C. §§801-971 (The Controlled

Substances Act (“CSA”)

• Regardless of state law, the federal law

provides no exception for marijuana

• See TMEP §907 and §1205

• We will refuse drug paraphernalia under the

CSA as well

• Review is done on a case-by-case basis

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Symbols that Identify Trademarks and

Service Marks

® Federal Registration Notice

gives notice that a trademark or service mark is registered in the USPTO (several foreign countries also use “®” to designate registration)

should only be used with marks that are registered in the USPTO

registration in a state of the United States does NOT entitle a person to use the federal registration notice

“TM” and “SM” may be used even if mark is not registered with the USPTO and

even if no application for registration has been filed

alerts the public to your claim of ownership of the mark

Not an indication of federal registration

Getting Started: TMIN Videos

Introduction to the USPTO

and Trademark Basics

Before You File

Searching

Applicant Information

Drawing Issues

Goods and Services

TTAB

Counterfeiting

After You File

Any many more…

1717

Video for Small Businesses

• Video recording of “Basic Facts About

Trademarks: What Every Small Business

Should Know Now, Not Later” at

http://www.uspto.gov/trademarks/basics/index

.jsp. This video is also available in Spanish.

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Getting Started: Free Online Tools and

Resources

• Basic Facts About Trademarks online booklet

• Trademark Registration Timelines

• Search Proposed Marks (TESS)

• File Forms, including new applications and required post-registration documents (TEAS)

• Check Status of Filings and view documents filed with Trademark Office (TSDR)

All Available at www.uspto.gov

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Online Resources (cont.)

Trademark Assistance Center (TAC)• Provides general information about the trademark

registration process and responds to status inquiries

• Telephone: (571) 272-9250 or (800) 786-9199, 8:30 a.m. - 8:00 p.m., Eastern Standard Time M-F

• E-mail

TrademarkAssistanceCenter@uspto.gov

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Application Fee Options

• TEAS PLUS Application $225 per class

• TEAS RF Application $275 per class

• Regular TEAS Application $325 per class

• Paper Application $375 per class

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Why File TEAS PLUS?

1. Saves money ($225 per class of goods now)

2. Reduced chance of Office Action http://www.uspto.gov/dashboards/trademarks/main.dashxml

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Why file TEAS RF?

1. Second cheapest filing method.

2. Is cheaper than Regular TEAS but does not require

a complete application or picking from the pre-

approved Identification of Goods list.

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Web Page

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Reminders

• “Courtesy” electronic reminders on Day 1 of

filing period for maintenance documents

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National Trademark Expo

TM Expo: October 17-18, 2014

E-Mail News & Updates

1. Subscribe to TM Alerts:

Sign up at www.uspto.gov/subscribe.

2. Use courtesy email option.

3. Ensure that you receive all of our emails.

Emails may come from any of these addresses: • TEAS@USPTO.GOV; TMPOSTPUBQUERY@USPTO.GOV; TMII2455@NX.USPTO.GOV;

TrademarkOfficialNotices@uspto.gov; eCom101@uspto.gov through eCom119@uspto.gov;

noreply@enews.uspto.gov; ecomitu@uspto.gov; PRG@uspto.gov; DoNotReply@USPTO.gov and

MPU@USPTO.GOV.

Take a look at our tip found at:http://www.uspto.gov/trademarks/notices/Ensuring_Email_Delivery.jsp

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THANK YOU!

Mary Boney Denison Commissioner for Trademarks

mary.denison@uspto.gov