The U.S. Patent & Trademark Office publishes same filing-to-registration timelines for applications filed based on different bases.
Today’s timeline shows a sample timeline for a Section 1(a) use-based application:
For the full-sized version of the flowchart, please click here. We hope this information is useful.
If you have any questions or concerns, please do not hesitate to contact us.
The U.S. Patent & Trademark Office publishes same filing-to-registration timelines for applications filed based on different bases.
Today’s timeline shows a sample timeline for a Section 1(b) intent-to-use application:
For the full-sized version of the flowchart, please click here. We hope this information is useful.
If you have any questions or concerns, please do not hesitate to contact us.
Effective September 26, 2011, U.S. Patent & Trademark Office fees will increase. The increase comes as a result of Leahy-Smith America Invents Act, which President Obama signed into law on September 16, 2011.
At this time, increased fees will apply to patent matters only. As of September 26, 2011, trademark processing fees will remain the same. Many patent fees are expected to increase by 15%.
According to the U.S. Patent & Trademark Office, the new law will afford more certainty for patent applicants and owners, and provide the USPTO the resources needed to operate efficiently and issue high-quality patents. Implementation of the new law will occur over a period of months, and our USPTO team will seek input and provide updates all along the way.
The current fee schedule may be found here.
The new fee schedule, going into effect on September 26, 2011, may be found here.
If you have any questions, please feel free to contact us.
Otherwise, check back here for future updates.
Clearing and obtaining rights to pharmaceutical trademarks presents unique challenges unlike those associated with trademarks used in other fields. In addition to navigating the U.S. Patent & Trademark Office, the pharmaceutical trademark lawyer must counsel his or her client regarding the FDA regulatory hurdles that go along with securing a chosen product name. After all, it does the client no good to successfully secure a Notice of Allowance if the FDA ultimately rejects the trademark during its drug name review process. And the FDA gives no deference to U.S. Patent & Trademark Office decisions on registrability of trademarks. This is why it is critical to be mindful of both the U.S. Patent & Trademark Office’s approach and the FDA’s approach to approving chosen pharmaceutical trademarks.
Here are some quick points and tips (not by any means an exhaustive list) to keep in mind as you navigate the pharmaceutical trademark minefield:
Our team here at Lombard & Geliebter LLP has extensive experience representing pharmaceutical companies in connection with their trademark matters. If you have any questions relating to the pharmaceutical trademark law, please call Mathew Lombard or Darren Geliebter at 212-551-1755 or reach us by email: mail@lgtrademark.com.
Every now and then I think it’s worthwhile to remind everyone of the benefits of registering your trademark with the U.S. Patent & Trademark Office:
All New Yorkers, and most tourists, know the famous restaurant Tavern On The Green. The name has been used in connection with the iconic Central Park restaurant since 1934, on premises owned by the City of New York and licensed to be operated by a succession of concessionaires through the years.
Readers may also be aware that the most recent licensee, Warner LeRoy/ LeRoy Adventures, Inc., filed for bankruptcy protection and sought a declaration that they have the exclusive right to use the name “Tavern on the Green” for restaurant services and an injuction against the City’s use of the name in commerce. The City then sought a declaration of its prior right under New York law to use the “Tavern on the Green” name for its restaurant facility in Central Park. The Debtor, LeRoy, unbeknownst to the City, filed a trademark application for “Tavern on the Green” back in 1981; it was registered on May 12, 1981 and subsequently achieved “incontestable” status pursuant to 15 U.S.C. §1065. The City also sought cancellation of the Debtor’s registered mark based on fraud and falsely suggesting a connection with an institution.
Of import, LeRoy (the Debtor) did not disclose to the USPTO a 1973 Agreement that essentially granted LeRoy the license to use the Tavern mark. LeRoy argues that his registration is “incontestable” pursuant to Section 1065 of Title 15, and that they are entitled to a declaration of their exclusive right to use the mark for restaurant services and an injunction against the City’s use of the trade name “Tavern on the Green.”
The City contended that 3 exceptions to statutory incontestability apply. First, the City argued that the Debtor’s mark infringes the City’s prior right to the trade name “Tavern on the Green” under New York law. Second, that the registration was obtained fraudulently, which is grounds for cancellation under Section 1064(3). Third, that the mark false suggests a connection with an institution, which is also grounds for cancellation under sections 1064(3) and 1052(a).
The Second Circuit has said that “New York’s law of unfair competition encompasses claims for infringement of an unregistered trade name or trademark.” 815 Tonawanda St. Corp. v. Fay’s Drug Co., Inc., 842 F.2d 643, 649 (2d Cir. 1988).
The Court found the City provided compelling evidence of a prior right to the name of its Central Park restaurant. Specifically, the applicable 1973 Agreement for the operation by Debtors of a restaurant in the building in Central Park known as “Tavern on the Green” required the City’s consent for the Debtor’s to change the restaurant’s name from “Tavern on the Green.” (emphasis added) The Agreement also contains provisions for City oversight of the restaurant, which is indicative of a licensor/licensee relationship (with the City as the licensor, and thus, ultimate owner of the trademark).
The City was also able to establish its continuing use of the “Tavern on the Green” mark dating back to 1934, a date long prior to the Debtor LeRoy’s registration of the mark in connection with restaurant services. In light of this, the Court opined that the Debtor’s registration for “Tavern on the Green” in connection with restaurant services was not incontestable as against the City, which successfully showed a prior right under New York law to the “Tavern on the Green” name in connection with its historic restaurant.
The City also moved for summary judgment on its motion for cancellation of the Debtor’s registration on the ground that it was obtained fraudulently. The standard of proof for fraud is clear and convincing evidence. See, Ushodaya Enters., Ltd. v. V.R.S. Int’l, Inc., 63 F. Supp. 2d 329, 335 (S.D.N.Y. 1999). Debtor LeRoy did not disclose the 1973 Agreement in his application to the USPTO (which was the license that granted him his right to use the mark in the first place). The Court found in the City’s favor on this point also, stating “…the Debtors have adduced no facts which would permit a reasonable fact finder to conclude that LeRoy’s conduct was anything but a deliberate attempt to mislead the PTO.” Therefore, Debtor LeRoy’s registration was ordered to be canceled.
While attaining incontestable status provides many statutory presumptions and benefits, this case illustrates that exceptions can apply, and fraud would be one of those exceptions. A registrant’s failure to disclose it status as a licensee (even if the controlling agreement is not explicitly labeled a trademark license agreement) will likely be considered fraud perpetrated upon the USPTO. And this fraud can be used as a basis to cancel a registered trademark, even if it has achieved “incontestable” status. Furthermore, there is no statute of limitations for asserting fraud as a claim for cancellation of a registered mark.
City of New York v. Tavern on the Green
U.S. District Court, Southern District
09 Civ. 9224
Decided: March 10, 2010 by Judge Miriam Goldmn Cedarbaum
Section 1(b) of the Trademark Law Revision Act of 1988 allows an applicant to file a trademark application based on an intent-to-use the mark in commerce. Assuming the application meets all other requirements of registration and proof of use of the mark in commerce is properly submitted, registration can be achieved. The applicant’s priority rights would then be established back to the filing date of the application.
A U.S. trademark application filed on an intent-to-use basis must include a statement that the applicant has a “bona fide intention” to use the mark in commerce. Likewise, if a trademark applicant relies on a foreign registration under Section 44(e) of the Lanham Act as a basis for U.S. registration, it must declare a bona fide intention to use the mark in commerce. A request for extension of protection of an international registration to the U.S. under Section 66 of the Lanham Act is also subject to the bona fide intent to use requirement.
If an applicant has filed an intent-to-use trademark application under Section 1(b) (or under Sections 44(e) or 66), it’s important to put itself in a position to be able to prove its bona fide intent to use the trademark in commerce as of the date the trademark application was filed.
The applicant’s bona fide intent to use the trademark should be documented as much reasonably possible. For example, a system should be created to organize and store proof of any of the following:
Feel free to contact our office at any time to discuss how your company can develop a system for memorializing the existence of a bona fide intention to use a trademark, or any other trademark law questions that you may have.
Darren M. Geliebter – dgeliebter@lgtrademark.com
G. Mathew Lombard – mlombard@lgtrademark.com
Phone: 212-551-1755
The New York Yankees Partnership has opposed three (3) applications filed by our clients, Steven Lore and IET Products & Services, Inc. Lombard & Geliebter LLP is pleased to be representing Mr. Lore and IET.
You may read the complete press release here.
In trying to find some information about an Examining Attorney, I stumbled across a new (to me) site. It is http://www.usptoexaminers.com. According to USPTO Examiners, its mission is:
USPTO Examiners is a website designed for professionals to anonymously review, rank, and learn about a patent examiner or a trademark examining attorney who works at the United States Patent and Trademark Office (USPTO).
Patent examiners and trademark examining attorneys are public employees who help determine the technological and economical future growth of each industry and business in the world. A simple word such as “allowed” or “rejected” from a patent examiner or a trademark examining attorney could grow or financially burden a company, business, or individual. Accordingly, it is extremely important for the USPTO to have well trained patent examiners and trademark examining attorneys who understand that each of their decisions could benefit and/or harm an industry, business, and/or individual. Having highly competent patent examiners and trademark examining attorneys will result in the USPTO issuing high quality patents and trademarks.
I agree. I hope this site flourishes and becomes a useful resource for practitioners and the supervisors at the USPTO.