eSignature Legality for Trademark Assignment Agreement in United States: Simplify Document Signing Process

How to eSign a document: e-signature legality for Trademark Assignment Agreement in United States

Our next presentation of our trademark is going to be presented by matt schwab matt is a staff attorney for electronic filing and public web services here at uspto and i'll go ahead and turn over the presentation at this time to matt thank you matt thanks for that introduction sean i'm going to just make sure i've got control of the powerpoint i do all right again thanks for the introduction my name is matt schwab i'm a trademark attorney with electronic filing public web services we develop legal policy for electronic filing we oversee legal content for the website we answer questions to the teas in box other customer service venues and we also and probably what you guys are all here for today uh overseeing administer the t's online application system so when you apply for a trademark you have to come in through the trademark electronic application system and we're going to go through uh several different forms and different portions of forms today to give you an idea of what to expect um so without further ado here's tease so the second bullet point is something to note it's going to be almost every single filing that you can do and with the passing of a recent mandatory electronic filing rule uh for 99.9 percent of you it's going to be every single filing that you can file on a trademark so it's not just the initial application it's not just responses it's not just maintenance filings it's everything so there's three ways to pay when you file through teas you can use a credit card you can use an electronic funds transfer or you can set up a uspto deposit account typically this is more popular with our attorney customers but anyone can do it if they go through and fill out the paperwork the next thing we sometimes get asked is um where is this doc where is this data used so when you input information into a teas form it's going to show up in a few different places one of them is the trademark status and document retrieval site or tsdr you can see the url there and this is the public access portal to view all the documents that are associated with a file office actions responses maintenance filings um you know even examiner's amendments uh notes to the file that may have been made in order to prosecute the file all those things are going to be viewable and they're all public and this is going to go to one of the points that i'll mention a few times is that when you file for a trademark almost all of your information with a very few exceptions is going to be public so keep that in mind when you apply and often if you apply and you unintentionally include information that you did not want to be public we can't remove it there's only certain categories of information that we can remove and it can sometimes be a high bar to me so just keep that in mind when you're applying the information in your application will be viewable and tsdr with the exception of a domicile address which i'll talk about later uh your information will also show up in the trademark electronic search system or tests uh ideally you want it to so once you get your trademark other people will see yours and realize that you had that idea first and and so they will be able to find your mark and not continue with their application can also use it of course to search the trademark database for other marks when you're getting ready to apply yourself so what are some of the common forms oops i think we skipped one here i think i'm on a little bit of a delay from the screen there we go one of the things you need to know before you access tees is that you're going to have to log in with uspto.gov account this has been a requirement for almost a year now and it's the same login that you are required to to do for efs web so probably many of you are familiar with it we require for security you can use your current uspto.gov account if you already have one you don't need to make a new one if you don't have one you can make a new one in just a few minutes and this is the sort of the office wide login policy more and more of our business units are going to use this in the future so eventually the entire agency will use this to conduct business across all the different units not just for patent filing and trademark filing but payments and other systems that we used to now we'll get to those common forms so when people think about applying for a trademark they're thinking about the initial application form right how do i get this application in that is a critical first step but it is by far not the only step and you know just as in patents the initial application is the beginning of a long road you may need to access a response form if an examiner sends you an office action if you're not ready to show use at the time of application then you might need to file some intent to use forms that means you're going to show use later on in the process so you may have an invention that you haven't started producing but you want to secure your rights for the mark you apply for the trademark and then you say i will use the mark soon and you can file extensions on this in six month increments but you're essentially saying i understand that i won't be able to get a trademark registration until i show you that i am selling this to people or giving it to people or something it exists in the marketplace here it is and these are what the statement of use uh the sou extension request the amendment to allege use this is what these are all getting towards you weren't using it when you filed the application but now you are you can also use teas to file correspondence power of attorney forms basically record updates and finally after the mark registers you can file registration maintenance and renewal forms these have compelling names such as sections 7 8 9 and 15 and there are even some other sections in between there for the less common occasions but these are sort of the big ones uh section seven four making a correction to a registration eight and nine are um affidavits of use and renewal applications so there are you know several different uh steps that you'll have to take even after you get the registration so when you file there are two different initial application forms and these are teeth plus and t standard so they have different requirements and fees t's plus is 225 dollars currently the standard is 275 currently these prices are of course always reevaluated they go both up and down surprisingly um but those these are the current prices for these applications and this is on a per-class basis we'll talk a little later about what that means um don't confuse this with the filing basis which is something important that you'll need to decide when you apply that's what gives you the right to apply and says that you're you're able to file this application and you believe it will mature toward registration and we said that before you have to either be using the mark have an intent to use the mark or you may have a foreign application or registration that you're going to rely on there is another option and you can use an international registration using the madrid protocol that is not a common option taken by many independent inventors and so we're not really going to discuss that deeply it's a in some ways a parallel system to the system through teas it goes through a system called t's eye and there's not much that carries over between the two however again the vast majority of uh us-based or even foreign-based inventors are going to be applying through t's using one of the other bases this is just a quick chart of some of the differences you can see the price difference and the main difference between t-splots is you are restricted to what you can do and the reason for the restrictions are to keep mistakes from being made in the application which results in a faster smoother process for everybody so you're going to have to you know the first two of these everybody has to do right you have to give your email address now that's part of the mandatory electronic filing requirement and you also have to file your documents through teas except in very limited exceptions when there's an outage and those instructions are on the tease page of what to do if there is an outage the third one is one of the major limitations of teas plus you must select your goods and services from the id manual this is one of the biggest roadblocks that people run into and they apply and when you choose goods and services from the manual you are assured that they are acceptable now there may be some issues with them and you still may receive an office action but by and large when you choose these things from the id manual the id's themselves have been vetted and are acceptable if you file t standard you can use free text to type in exactly what it is that you think you're doing this may be subject to further questioning from the examiner you also do need to include certain statements in the initial application under ts plus a translation statement if you're using foreign wording uh or characters you may need to include the claim of ownership of prior registrations a color claim and a description of the mark if you've got design elements or the consent of someone who whose appearance shows up in the mark or whose name appears in the mark and so if you do not meet these requirements it is an additional 125 dollars per class filing through ts plus so depending on your needs uh tees plus may not be the less expensive option if you're unable to meet these requirements you will receive an office action and there will be an additional fee required so you depending on what you need we'll talk about this a little more you may opt to use t standard for your application and this slide just sort of goes through the tees plus issues that i mentioned on the previous slide and indicates what will cause you to lose that status right you didn't file documents electronically you didn't maintain a current email address that means if we send you something and it bounces you uh if your email address is not receiving email um it's possibly grounds for falling off of tsp not always but it's possible and the name portrait and likeness of a living individual deficiencies in the color description and color claim and a color mark if your specimen just shows a very different mark than the one that you're applying for or you don't have that translation or transliteration statement if the foreign wording is in non-latin characters you need to translate it into a latin phonetic equivalent so there are some fatal filing errors if you make these it is usually not possible to recover from them and the application is essentially discarded it can't proceed and unfortunately there are no refunds because we still have to process these so one of them is filing their own mark drawing please make absolutely sure that what you are submitting is the mark drawing is what you really want to apply for you can make very minor changes to the drawing after the application but generally any anything major you're not going to be able to change so please be aware of that also entering the wrong owner information we're going to cover that a little bit when we look at the form sometimes you can correct this information but if you put an application in the name of a wrong party and that party exists at the time of the application it may void the entire application we can only correct essentially mistakes typos you know i i put the wrong state of incorporation for my business and and there is no other business with that state of incorporation in the same name things like that may be corrected but many of them can't and finally choosing the wrong goods or services these can be fatal to the application if you believe that you're choosing the right thing but it turns out that what you're choosing is not ing to the uspto what you're actually doing you may not have a recourse to adjust it reason for all of these fatal errors is that we rely on a public notice system and that means you know obviously the same as patent everyone is monitoring the trademark system and they're looking at what's coming in deciding whether they want to write a letter of protest whether they may need to oppose whether they want to write a cease and desist and so when this information comes into the public record it must be accurate and we can't change it after the fact or we wouldn't be serving proper public notice that's why these are fatal so let's take a look at the a teas plus application when you go to teas.uspto.gov and you begin to apply this is what you're going to see this is the first part of the first page and i'm going to just touch upon a few things on each of these pages here the first thing that i just want to mention here is that again in bold our fees are processing fees and they're not contingent upon the successful prosecution of your application if something is wrong unfortunately you can't refund it it's good to also take a look at the screen and read it before you begin your application one of the reasons is that the uspto.gov account that you're logged in with will time out if you're inactive on a page for more than 30 minutes so you generally need to have some sort of activity on a page every 30 minutes in order to keep the session active so it's it's better not to apparently the scroll bar also changes the page it's good to know but it is much more sensitive than the arrow keys so um but again um read this before you start otherwise going back and reading it later it might take valuable time from your session at the bottom of this page is where you're going to select the filing option again this is not the filing basis you're choosing either the t's plus with the lower price per class but the additional requirements that you must meet or the t standard and again for number two is an attorney filing the application we're going to proceed through the rest of this as though you selected no an attorney is not filing the application finally at the bottom here if you have saved an application this is where you'll upload it you can when you get to the end of a form and unfortunately only at the end of a form at the validation screen you'll have an option to save your progress if you're not ready to submit right that moment the progress will be saved in the form of a dot obj file this file will not open anything except perhaps an unintended program on your computer if you attempt just to open the file the only way it's going to work is if you come into the teas form act as though you're beginning a new application and then browse for that object file and upload it here then it will load the information into your form you'll need to resign and revalidate the information but everything else should stay so presuming we're moving on through the application opting not to use an attorney we'll get to the owner information page now when i said earlier one of the fatal app fail mistakes you can make when filing an application is the owner information this is particularly true for individuals who may be doing business as some other entity or may have a small company keep in mind whatever you put in the owner of the mark field here is the legal owner so on all the records and on the registration certificate the entity that you put in there will be the owner if you put your own name in it is presumed that you as an individual own the mark and if you're planning on using a corporation or llc or something that you own to shield from certain liability that won't be the case so if you put your own name as the owner of the mark you the individual are the owner you can select uh in the box down below that you're doing business as or or some other entity information but if you intend say for example you have a virginia corporation and you intend for your virginia corporation to be the owner put the corporation name as the owner of the mark and then you can put dba if you're doing business as some other name too otherwise again if you put your own name in the top then you put your corporation name in the dba and then you say that the entity type is a corporation this is probably in this case a correctable error in some instances it may not be so please avoid it because you will have to talk to an attorney who will give you a complicated uh legal explanation depending on the facts and will not be the highlight of your day either way so please just bear in mind again that owner of the mark has to match what's in the entity type field below if you put an individual name in there please put an individual check box down in that entity type and on the next page you'll see you'll have to provide citizenship which does not affect your ability to file under the domicile rules however you will need also put a mailing address and this mailing address will affect your ability to file under the domicile rules we have a rule that says foreign domiciled applicants must use a u.s license attorney to apply so you can be a foreign national as long as you have a u.s address and you can apply without using an attorney if you are a u.s national with a foreign address you may need to prove your domicile or use an attorney one way you can prove domicile and also another way that you can use for example a po box as your mailing address is to use the domicile address field that has the checkbox in the middle of the page generally we do not accept po boxes or addresses that are not true business addresses if the entity owning the trademark is a business or home addresses if the individual is the one applying we do not accept addresses that don't map to those kinds of addresses as the mailing address unless there's a different domicile address provided because we must under the law collect the domicile this domicile address if you put it in here is not shown to the public so for example you could put a po box in the mailing address and then your individual address in the domicile address field once you uncheck it these will not show the domicile field will not show up as part of the public record however in general in order to streamline the application process and cut down on unnecessary office actions when possible your mailing address should be a street address whether it corresponds to an individual or to a company generally the domicile address should be used in in limited circumstances and finally you can see that the email address is required again please make sure to keep it current on the next page is where you put your mark we're going to proceed as though we're using a standard character mark the standard character mark is just protection for the word so here i have the word test that i typed into the field this means i'm applying for a mark of the word test in virtually any configurations as long as it's recognizable as test so i don't need to have my font picked out i can change how i want to use it later it's just protection for the word test as applied to the goods and services that i'll put in later you can also click the radio button in the middle to choose to submit a special form this is where if you have a logo or stylized wording or a special design this is where you get protection for that mark you can file applications for the same mark if one of them is for the wording in the mark and one of them is for the design version it would be separate applications so you'd you know file once and then go through and file again for the second one one bit of warning here is um at the end i'll show you how to validate the information that you've put in what if you're using a standard character application form whatever you put in as the mark is just going to show up as the word mark in the filing receipt that you get unfortunately it's a system limitation what happens is it takes the text it makes a snapshot of it and turns it into a jpeg and so the name for that jpeg is standard it's just mark.jpg so whatever you type in here is is going to show up as mark in the filing receipt that you get there will be a literal element field that's that actually has the wording that you typed in and that's what your mark will be so we often get questions about that like i why did why did i file for mark.jpg i definitely did not put that in there and that's just how it shows down below there's an additional statement section of the form and this is for several things that often are the subject of requirements or refusals by the office you can see the list there and again many of them are test plus requirements so if you're claiming prior registrations if you need to translate or transliterate text if you need to get consent from somebody whose likeness or name is in the mark etc you would click that box and fill out whatever parts of that field you need to fill out it's going to open about a you know two page large form with everything in it so you'll need to scroll through and fill out the relevant sections we will proceed as though we don't need to do those things for this application and move on to the next page where we're going to pick out the goods and services it's a teas plus application so i don't have the option to type in my own goods and services i have to add them from the id manual so i'll click the add goods and services button at the bottom and the id manual will load and it looks like this i typed in hammers and it came back with 30 results now please note the international class column at the left this international class column is equivalent to a subgrouping of goods or services that are considered roughly similar so here we have 30 results and we have five different classes 7 8 10 15 and 28 and they're all each one would have a different fee associated with it so everything in class 8 would be under one fee the fee for class 8 the claw hammers the ice hammers that would be 225 dollars for this application if you need to add hydraulic or air hammers to it that would be adding another class so another 225 dollar fee and here we can see we've got class 7 the class for power tools eight is for hand tools ten is for medical goods 15 is for musical instruments and 28 is for toys and games sporting equipment so we've got quite a wide variety just by typing in hammers so please note on the left how many classes you're selecting you'll see on the next page it'll have a different entry per class and it will make the fee breakdown clear and finally on the right the tm5 is not extremely important that basically just means is this uh is this in the set of ids that's been accepted by uh the large the five largest trademark i guess i should say national entities or international entities because it includes the eu is one of them but as sort of the five major filing bodies is this accepted by all of them this might be of interest if you're thinking about filing internationally so once you've selected it i went with something different and i uh chose candy because i was starting to get hungry as i was filling this out i can't use in class 30. once you've selected your goods you're going to need to choose a filing basis down at the bottom and the filing basis is 1a for goods you're already using or 1b for goods that you're intending to use again if you uh you would know if you need to use the 44d or 44e option because you would have a foreign registration for an application that you were using as the basis of it so if you're not sure what those mean you don't need to use them but the 1a means i can take a picture of it right now i've got a package and 1b means i don't have it yet but i will soon all right we're going to proceed is that we filed a 1b and so we won't need to upload a specimen if you'd chosen a 1a you'd have another page where you needed to upload a specimen file or files you can upload more than one but you need at least one specimen per class of goods and services and you'd also need to if you're using a web-based specimen for example an advertisement you have online or your product catalog that's on your website you'd need to tell us where and when that is so put the date that you access the page and what the url of the page is you need to include that information there's a box to put in it for here for these this demonstration we've we've not needed to go that route and so we find ourselves at the fee information page here i just got the one class class 30 for my candy that you can see up in the middle and 225 is the total fee due now as an itu filer i will need to submit a filing later on i'm going to need to either amend it to use or file a statement of use either one of those is going to cost an additional fee at this time i believe it's 125 um but so do bear in mind that filing itu will incur a fee down the road that also leads me to one thing that i want to mention is that a lot of times we will get questions about uh something in the mail that someone received or an email or sometimes a phone call but typically mailing is an email that people receive that appear to be solicitations from the uspto requesting more money uspto fees and and those of trademarks are associated with filings so whenever you pay a fee it's going to be at the end of making a filing and you know i mean there may be occasions where you submitted an insufficient fee earlier so you'll need to submit the remainder of the fee but that will always be a very clear communication from the uspto there won't be any question about whether this is actually with government because we won't we'll talk to you and we will never ask for your personal information so um here uh you're going to um sorry skip ahead it's not really much of a spoiler because it's not that exciting but after you review whether you have the right fees and classes you're going to move down to the signature section now there is a little bit of a difference in trademark signature standards versus patent we don't accept pdf signatures or electronic software electronic signature software we don't accept those kinds of signatures so there's only three ways to sign one you can sign on the form by putting your signature an alphanumeric signature between two slashes this just simply lets us know that you understand that as a signature and it's just going to be formatted the way it is on the screen after you provide your your name and owner information you would validate in this case and this is called a direct eSignature we also have another option though if you are not going to be signing directly there are well there are two options um for example you may have other parties who need to sign a filing now on an initial application uh if you were it's for example a co-inventor with several others um but you want to sign it directly you're actually able to sign the application on behalf of the other inventors just by signing it multiple times for however many owners you've put in but just with your name not with their name it's presumed that when you sign you have their permission to do so that you are authorized to do so signature requirement changes if you're signing a response or for other documents after the application they may require everybody to sign individually in that case you might choose option two here email text form the second radio button email text form to second party for signature this will essentially email a link to someone else so that they can open up a signature page of this application sign it and then close it and return it to you they won't be able to make any other changes but they will be able to sign and return it to you for completion and submission and finally we have a handwritten pen and ink signature the pen ink signature must be completed in the traditional analog fashion but then it would be scanned and uploaded as a jpeg or as a pdf so that would be the third option and this signature when you use the handwritten pen and ink signature option must be accompanied by the declaration that you can see at the bottom of this page and the top of the next one there are certain statements that you must refer to as being true before the application will be accepted so if you are for some reason uh inclined to file the pen and ink signature please make sure that the declaration in the yellow box at the end of this page and at the beginning of this page is included once you sign you'll have the opportunity to validate now the validation does not submit the form however it will take you to a review page and this is the page from which you will submit the form you can click the input link up at the top under the apple the green application data bar when you click that input link it's going to open up an input table this will look like the filing receipt that you get via email once you've completed it please know that the input table at this validation stage is not considered final the only thing that we would consider final and evidence that you have actually filed an application would be the filing receipt when you present that so if you have any questions did i file or not you need to have a filing receipt now if you believe you filed but you never received your filing receipt via email we can investigate that for you but please don't get confused as we sometimes get questions about between the input table and the actual filing receipt that will be emailed to you they do look very similar and finally this page is where you will save the form if you are not ready to submit it right away you can save as that obj file that we mentioned earlier save it to your computer and then upload it later when you come and open up the same kind of form so if you open up an initial application form you'll be able to load that file if you open up a different kind of form the file will probably not load correctly if you are ready you can also pay and submit from here and this will take you away from the tease page and into the fee payment system when you finish the payment you will get your filing receipt and you will be done so i'm sure everybody remembers everything word for word that i just said and it's no big deal to file so i guess we can wrap it up no we will keep going and cover a few of these issues in a little more detail just some of the common things that people can trip over but before we do that i just want to put this slide in here i believe these will be available to you after invention con some of the links that will give background information and recap things that i've talked about we have trademark basics page a page all about the initial applications we have a video series if you're video inclined the t's nuts and bolts series and we also have a trademark video library with additional trademark videos all of these are good resources to review especially before you begin applying now it may happen that you get once you file it's accepted you probably have about three months where uh the status changes online but nothing you know with regard to the actual prosecution of the application happens until it's assigned to an examiner when it's inside to an examiner you may get an office action after the examiner reviews it the office action may refuse the mark or say there are additional requirements that need to be met before we can accept it or both when you get this email you can click on the circled link in the image and that will take you to tsdr so that you can view the office action or you can go occasionally the links do not work oftentimes due to email security settings so you can also go to tsdr.uspto.gov and put your serial number directly in and look for the office action that was sent on the same date indicated in the email you'll be able to read it there too make sure i didn't here we go when you respond to office actions just make sure you're using the right form after the initial application you'll want to use the response to office action that will be in response to a non-final office action now once you respond to an office action if you are unable to meet the requirements or refusals or to overcome the refusals that were issued by the attorney you may get a final office action that will tell you the issues that still remain with your application at this point you want to use the request for reconsideration after final action form um final office action i'm sorry that should say so there are two different forms just please make sure you're using the correct one depending on the office action you're replying to if it's a non-final the response to office action form if it's a final refusal then use the it's called the rfr or the request for reconsideration form and please note that the response signature requirements are somewhat more restrictive than they are for an application so they have to be signed by a proper party someone who has authority to make a change to the application if you are not represented by an attorney then you can sign it if you have chosen to be represented by an attorney the attorney must sign the trademark office will only do business with one party at a time and if attorney of record is present we will do business with the attorney of record you can click that link also to view more detailed information about the response signature requirements as thrilling as i think it is personally it may be a little dry to spend too much more time on so we'll go ahead and move on to the response wizard now this response wizard is what will show up when you start a response to office action form there may be fewer than 10 items but it has up to 10 that will determine what you can do in the response and there is a the last option on the page often option 10 but sometimes 8 or 9 depending on what you're filing will force a declaration to be included in this so if you've been told that you need to submit a declaration and you're not sure where it is or don't feel like you've been able to sign it come back to the form wizard choose option 10 and it will make a declaration appear so let's take a look and go through sort of a 30 000 foot view of of uh these issues here obviously won't be able to discuss them all with the time we have but in the form wizard option number one deals primarily with refusals these are statutory refusals but essentially it means that there is something wrong with the trademark that is not just a formality or something that we can adjust easily there's something that is a statutory basis for refusal that's written to the trademark act and it needs to be overcome before the mark can proceed so some of the ones you may be familiar with are the first bullet is it likely to cause confusion with another mark this is the 2d likelihood of confusion refusal or the second bullet is it merely descriptive or generic or also deceptively misdescriptive the descriptive and generic refusals are the section 2e1 refusals so when you hear those terms these are the top line refusals that they're referring to um you know you can overcome a refusal it's definitely not a death sentence for your application but the formality required is often significantly higher and requires more evidence option two deals primarily with requirements these are things that are required as part of the application but can often be changed by an examiner's amendment or are just essentially a there was a good faith attempt to apply with a requirement but it did not meet the specificity that we need so we need additional specificity so option two deals more with requirements than with refusals option three here sorry um we'll populate that long section of the form that i talked about several slides ago that you need to make sure that you fill out when you're doing a test plus application if any of them apply to you it's the additional statements section of the form and it includes those things again they're not all specific to teas plus but many of them are required to address if you are filing teas plus one of them that's not a required element if you're filing via teas plus is a disclaimer a disclaimer is essentially an acknowledgement that certain wording in the mark that you're trying to use is in fact widely used in the industry and cannot be reserved for your exclusive use with regard to these goods and services so you are claiming no right to use that particular wording you're only using it in the context of your hallmark but again the color claim mark description prior registrations translation transliteration these are all in there so this option three will get you the uh additional statement section of the form if there's anything in there that you may have wanted to fill out in the first place but had not option four is to submit a new drawing of the mark but this is really only for a better quality image in most cases certain changes to the mark are permitted but they will be outlined by the attorney and you'll need to discuss it with them it's very case-by-case specific so generally the only time you're going to use this is uh for some reason the mark image that you submitted some of the wording was illegible or something happened to it and we just need a different version a clearer version for our records it's that five second lag just the right amount of lag to fool you so for number five these are for certain changes you need to make in the records and you can do this through in the response form or there's another standalone form that you can use if all you need to do is it's called the change of address or representation form but this is essentially where you'll update the records in the attorney's information if any number six adds goods and services classes of goods and services to the application you can't add them at will you can't just say you know what i forgot to mention that in addition to the power sander that i'm making i am also making medical supplies if it's not in the initial application you can't add it here however if it was in the initial application but misclassified you may need to add that class and pay the fee so this is where you would do it there are additional fees you can pay in option seven i think are fairly straightforward and option eight is when a an attorney is appearing for the first time in the record nine lets you update your email address that's primarily what that is used for and ten is the aforementioned signed declaration option uh if you've been told in the office action that you need you omitted a required signed declaration and you go through and you find that you haven't been able to submit it generally the form will automatically populate a declaration when one is required but if for some reason it does not you can choose option 10 to manually override that decision by the forum so these are the 10 wizard questions and the broad categories of things that they contain i want to talk about intent to use forms briefly we touched upon them we have an amendment to alleged use and a lot of times if you've had a mark that's been refused on grounds of descriptiveness but you've started using the mark you may amend to allege use which means this mark has descriptive wording in it and i acknowledge that i want to amend to the supplemental register but because i'm not eligible for the supplemental register until i'm using it in the mark i need to amend it to alleged use first so we may often see an aau or amendment to allege use when someone's received a descriptiveness refusal but they've also started using the mark in commerce in the meantime the statement of use is an intent to use form that is used after the mark in an itu application has been published for at least 30 days for a potential opposition once that period is over and the mark has not been opposed a notice of allowance will issue and the statement of use will be due you'll have six months from this noa date to show use in commerce you can't show it within six months you may get to the next item the request for extension of time to file an sou so you can file extension requests every six months from the noa date for a total of five extensions of time so you can get essentially three and a half years to show use or sorry you can get yes three and a half from start to finish so you can get a pretty good period of time to show use but you will need to show it eventually and of course all of these do have fees associated with them again we are a filing fee agency and the fees that we charge need to be somewhat in line at least with the processing costs of the forms and filings that you're making so these all have affiliated processing and filing costs with them you can also change correspondence information or change attorney these forms do not have any fees associated with them these are record update fees and it's in everyone's best interests to make sure that everyone's records are updated and and that's uh does not require extensive review for the most part anyway um the one thing i do want to point out here i think it's actually on a later slide but the withdrawal of attorney form would be used by the attorney it's not used for you to withdraw your attorney this is for the attorneys withdrawing themselves for various reasons um you would revoke or appoint an attorney if you're you've hired one and finally there's some post registration forms to review after you have succeeded in getting your registration your time with the trademark office is not at an end i know you'll all be happy to hear that uh you'll be able to amend the registration by filing a section seven if there's some sort of mistake in the registration certificate you'll be filing a declaration of use periodically and so the first time you file it is after six this is uh between the fifth and sixth year after registration and then each ten year interval so you'll file it between year five and six and at year ten at year twenty and you're thirty et cetera as long as you're still using the mark you can keep your trademark registration active um that's one of the differences between the patent and trademark side is that the term is use dependent and as long as you are using the mark you can keep it registered we have marks that have been used for over 100 years that are still registered um the section 9 application for renewal uh is every 10 years from registration and it's typically combined with the section 8 and finally the section 15 is the declaration of incontestability um essentially that means people may still contest your mark up to five years after it registers if you file the declaration of incontestability they essentially can't someone someone could say well this mark is descriptive a few years after you register uh it may go to one of a number of different bodies and maybe determine that the mark is in fact descriptive and should not have registered so it could be canceled on those grounds but once you file a declaration of incontestability that's it you have a high level of protection if the mark has become generic there still may be issues but generally um other parties are not going to be able to come in and start a cancellation proceeding after this declaration of incontestability few last areas we talked about attorney representation earlier again if you are an individual who is represented by an attorney we won't correspond directly with you you have to revoke that attorney first don't use the withdrawal form please make sure to use the revocation of attorney form otherwise the uspto will only communicate with the attorney attorney representation does end at a few different stages so please be aware of those the attorney information will remain on the record but they will not necessarily be considered the attorney of record and finally again foreign domiciled parties have to use a u.s licensed attorney one of the other areas again that i want to recap is changing the owner information minor typos are okay but you need to assign the mark to a different party you can't just change the owner if you made a mistake it may be a curable mistake in some cases it won't be curable and the mark will be void ab initio from the beginning um generally ownership must change through assignation the assignment should generally be recorded for clarity and ease of proving the chain of title however it's not always required but generally filing an assignment with us is the surest way to make sure that our records will stay up to date and that no unnecessary actions will issue with regard to this mark so you can find other trademark updates and alerts at the websites below here i do advise to subscribe to trademark email alerts generally pretty high profile and important announcements go out that way and we don't send that many and you can also look at the teas maintenance and release schedule online for example it would tell you if you looked we are expecting to have a planned outage this weekend on saturday and sunday for some major changes that are being made or major updates that are being made to tease so that will tell you when you can expect the system to be to be up generally it's going to be up except during the overnight time specified but this weekend it will be closed and that's all i have for right now i think we're ready for any questions if anyone has any um and if anyone wants me to go back over something that i covered too quickly please feel free to ask that too thank you matthew i do have some questions for you so whenever you're ready i'll go ahead and start all right you can also be information from your last slide so that we can see the contact information just to keep as a reference and in the meantime i'll start with our first question what happens if i miss a filing deadline uh so you know it depends uh if you're during the application process and you miss a filing deadline you'll have an opportunity to file a petition to revive so you'll be able to bring the application back to life there's certain restrictions on it you have to be uh you know within two months of the time you found out or within six months of the time it abandoned but you can file the petition there's petition fee affiliated with it and you can resume the application and there might be a few limitations with that if there was an intervening filer for instance uh there could be a delay to your application if someone filed a very similar application to yours while yours was dead uh that might add significant time and complexity into the process but generally if you inadvertently abandon an application you can revive it now registrations are different registrations under very limited circumstances can be reinstated but almost always a registration that's canceled for failure to file maintenance documents for whatever reason cannot be revived so please make sure your email is up to date please make sure you're checking in during the required timelines you can go to tsdr and see an upcoming filing options for your registration and that would tell you you know well your section eight and nine is due in two years so if you ever have any questions about it you can easily go and look that up and it will tell you when the next filings are due if those filings are missed registration is canceled typically cannot be reinstated and you have to start the application process all over again okay the next question i have for you is what does uspto do to protect my trademark so the uspto i'll start by saying what the uspto does not do we're not an enforcement agency so we can't go out and bring someone into court on your behalf so the primary protection is the notice provided to the public by the registration now when you get a registration i mentioned briefly before you could have a supplemental registration or a registration on the principal register supplemental registers for marks that aren't inherently distinctive but maybe they could gain distinctiveness so something like you know apple computers for instance is inherently distinctive right what's the connection between apple and computers and it's not clear um if you had a company that was named you know general information systems or something that's definitely not on its face a mark that you could easily separate out from other companies doing similar things but maybe it could become distinctive so that would be on the supplemental register marks that are on the principal register get many valuable uh presumptions in court there's a lot that you do not have to prove with evidence regarding your ownership of the mark or its distinctiveness or the scope of its use or the time over which it's been used so those are some of the primary protections that you get you also get on the principal register border enforcement so imports can be stopped uh if they uh are infringing on your mark so those are those are typically some of the biggest advantages in addition to the public notice system uh your ability to use the circle r to let people know that your mark has been registered and that essentially it's it's really not going to be worth their time to try and infringe because it will be significantly easier to prevail in court with the rights afforded by registration thank you the next question i have is is it true your work is protected in some ways as soon as you place it on a media platform you know to me that sounds um like it might be coming from someone who's familiar with copyright and so trademark is a little bit different there you do not need a registration to have trademark protection which is where i think that's coming from and that is true when you start to use a trademark you will gain common law protection the trouble with not having a registration is you have to keep every document and hire an attorney to prove in many cases use in a certain area during a certain time and the scope of your trademark will be limited only to what you can prove and it's also very difficult to it's not impossible but if you were for instance in a dispute with someone who had a registration and they have those presumptions uh it can be an uphill battle so the the primary you know yes you can there are some people and you know i don't get paid per per application or registration so i can say this um not everyone will need to file a trademark someone who has a very limited use um someone who doesn't care if somebody else infringes their mark and some people don't um someone who is is not prepared to spend what could be you know some significant money to defend the mark all in all of those cases someone may reasonably make an option make the decision not to file a registration however because trademark registration prices compared to other business expenses are relatively low and they do offer so much uh automatic protection i generally you know would encourage someone to go for the registration as soon as they think they're able to federal registration is a very strong tool to have in your pocket okay well thank you matt that's all we have time for today we do have some other questions i'll be sending you and we will get answers to those questions if you emailed us in and get back to you thank you again matt and that concludes our first day of invention con join us again tomorrow as we start at 12 o'clock eastern time going until 5 pm eastern time we're focusing tomorrow on businesses so tomorrow we'll be covering our government resource panel talking about services available to independent inventors and small business owners we're going to talk about building your business model helping you prepare for building the business you need and planning for the items that you need to be successful building a virtual business talking about the importance of today's market being at home and working from home how that can benefit you and building your business together and our keynote speaker sam zaid ceo and founder of get around will be speaking at 4 15 pm we look forward to seeing you tomorrow and thank you for joining us today if you have any questions related to the program you can email us at inventioncon uspto.gov and we'll be providing you with an email with a survey on the end of the program on saturday so if you have any comments concerns or ideas that we can look forward to in the future please be sure to submit those in the survey thank you and have a great day