Often, companies seeking a pre-determination as to whether a new brand is registerable as a US Trademark will apply for a trademark before they begin using it in commerce. These applications, commonly referred to as Intent to Use (ITU) or Section 1(b) applications, are reviewed for conflicts and other requirements before evidence of use is submitted by the applicant. If an applicant filing an ITU trademark application expects to use the brand across a variety of goods and services, they may choose to file in multiple trademark classes. However, after being allowed by the USPTO, the applicant must submit their evidence of use across ALL classes before the deadline to allege use. If the applicant has only established use in some, but not all classes, they must divide their application. By doing so, the applicant must be diligent to make sure part of their application avoids abandonment.
A Request to Divide is usually accompanied with an Allegation of Use in at least one of the applied for classes. The Allegation of Use must include a specimen – usually one or more photos of the goods and/or services bearing the applied for mark. For classes which the applicant is not yet prepared to submit specimen, the applicant must pay the Allegation of Use fee, Request to Divide fee, AND application fees related to those classes the applicant wishes to divide from the original application. Failing to pay the new application fees in each class will result in abandonment of the divided classes which can only be revived by paying these fees and filing a petition to revive with the corresponding petition fee. There are timing requirements for petitions which are strictly enforced and may result in the permanent abandonment and require an entirely new application with a new priority date.
If you’re considering protecting a new brand with a trademark, but want to make sure it will be allowed first, ITU applications are a great way to begin. If you’re planning on using and protecting your brand in a variety of classes, it may be helpful to strategize with a Trademark Attorney beforehand. Knowing critical dates in advance can help you prepare to avoid having to divide your application in the first place. If you do have to divide your application, it may be a good time to hire an attorney to help you avoid abandonment or unnecessary revival fees. Since you’ll need to prepare important documents and critical dates are crucial to protecting your brand with a trademark, you should consider hiring a trademark attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.
In May 2019, the USPTO announced that as of August 3, 2019, all international applicants for US trademarks must be represented by US counsel. The final rule has been published in the Federal Register. This means that to submit a new trademark application, to respond or enter documents into a pending trademark application, or to renew existing registrations, international individuals and businesses must hire a US attorney to represent them and submit these materials on their behalf.
The new rule is intended to satisfy 3 goals: (1) increase USPTO customer compliance with US trademark law and USPTO regulations, (2) improve the accuracy of trademark submissions, and (3) safeguard the integrity of the US trademark register. Since domestic and international businesses rely on the US trademark register to make important business and legal decisions about their brands, the USPTO determined that requiring international applicants be represented by counsel would help them maintain compliance with their stringent trademark rules. It found that an increasing number of international applicants had filed inaccurate and potentially fraudulent submissions with the USPTO. Some cases have even involved governments and business entities offering cash bounties in the form of subsidies for successful registrations of trademarks in the US. The USPTO found that these applicants often were represented by non-lawyer consultants, in violation of unlicensed practice of law policies.
To protect international applicants from unwittingly participating in fraud facilitated by these international non-lawyer consultants, and to otherwise harmonize the USPTO rules with its international trademark office peers, this policy now requires electronic submissions by international applicants to be submitted by US attorneys having verified credentials with the USPTO. In fact, as of October 26, 2019 all applicants, domestic and international, are now required to obtain USPTO credentials in order to submit trademark documents in order to prevent misuse of the online system. Through 2020, you can expect the USPTO to take further steps to increase security and reduce fraud. These will include verification of each my.uspto.gov account and adding the ability to delegate and control access to filings.
Due to these changes, it’s now more important than ever to have experienced trademark counsel represent you before the USPTO. If you are an international or domestic applicant who wants to be represented by a firm with decades of experience protecting brands with US trademarks, please call Grell & Watson Patent Attorneys for a free consultation.
Employer vs. Employee?
It’s not a simple answer and depends on a number of factors and state law not fully disclosed herein. A) Was the employee “hired to invent” something or to solve a particular problem? Then the Company may likely own the invention. B) Did the employee use the resources of company to invent or invent during hours of employment? Does the invention relate to the business of the company? Then the Company may likely own the invention. Was there an express employment contract covering this issue?
With no express employment contract requiring the employee to assign , and A) or B) above the Company may claim at least a “shop right” – a non-exclusive license to use the invention (related to company business) within the normal scope of company business.
If not A) or B) then employee may own the invention.