Trademark - Suspension Letter - other issues

[plee]

State: MA

Hi all

We are interested in using a name for the first time for commercial purposes and note that there is a pending USPTO application on it (under one class) with the follow details:

Filing Date: June 30, 1999
Filed I-T-U: Yes
Official PTO status:
Report completed
suspension check - Case still suspended

The same name is the subject of another pending trademark application by the same applicant under another class with the following details:

1st Use: May 2, 1999
Filing date: June 25, 1999
Official PTO status:
Suspension letter - Mailed

In the second application, it seems that the applicant bought the rights in the trademark from another party through an assignment.

Can any forum member shed some light on what factors we should consider? In practical terms, there is evidence that the name is no longer used, and has not been used for quite some time. Is it likely that, after 36 months from the "1st use" date of May 2, 1999, the trademark application is likely to be abandoned and we can therefore use the name freely?

Further, if the name concerned has NEVER been actually used by the trademark applicant at all times, despite his filing two applications, does it follow that we can freely use it for commercial purposes?

(As an aside, what evidence/proof do we need to establish that the applicant has never used the name?)

If the applicant has still not filed, and does not plan to file, a Statement of Use in relation to the above "intent to use" based application (the first application), is it probable that the trademark application will be abandoned by the USPTO, and we'll be able to use the name freely?

Thanks in advance for your attention and assistance.
P Lee

 

[T-DESIGNER]

I am not an attorney, but the following is a quote taken from
www.nolo.com (ASK AUNTIE NOLO):

"As a general rule, trademarks do not infringe one another if the underlying products or services of the two companies do not compete and are not distributed in the same trade channels.

.......... However, if the name in question is well known, then you may have what is called a dilution problem -- that is, one of the names might be considered as a dilution of the famous name's strength as a brand."

The following three quotes were taken from USTPO's web site:

"How long does an Intent-to-Use applicant have to allege actual use of the mark in commerce?

An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the Examining Attorney approves the mark for publication. If an Amendment to Allege Use is not filed, then applicant has six months from the issuance of the Notice of Allowance to file a Statement of Use, unless the applicant requests and is granted an extension of time. If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted."

"How do I contest someone else using a trademark similar to mine?

There are several ways to dispute use of your trademark by a third party. Depending on the factual situation, the Trademark Office may or may not be the proper forum. You should consider contacting an attorney, preferably one specializing in trademark law. Local bar associations and the yellow pages usually have attorney listings broken down by specialties. Time can be of the essence. For information about proceedings before the Trademark Trial and Appeal Board, click on TBMP."

"Can the ownership of a trademark be assigned or transferred from one person to another?

Yes. A registered mark, or a mark for which an application to register has been filed is assignable. Written assignments may be recorded in the U.S. Patent and Trademark Office for a fee. Specific inquiries should be referred to the Assignment Division (703-308-9723). [NOTE: Certain exceptions exist concerning the assignment of Intent-to-Use applications.] For the guidelines for filing an assignment and the assignment form itself, click on Assignments [PDF] ."

source: http://www.uspto.gov/web/offices/tac/tmfaq.htm#Application017

The following documents additional requirements for "Intent
To Use" applications:

http://www.uspto.gov/web/offices/tac/doc/basic/addreq.htm

".....The USPTO will not register a mark if, after thirty-six (36) months of the mailing date of the Notice of Allowance, no Statement of Use has been filed."

The following documents "Maintaining a Federal Trademark Registration":

http://www.uspto.gov/web/offices/tac/doc/basic/maintain.htm

"Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times. In general, the owner of a registration must periodically file:

Affidavits of Continued Use or Excusable Nonuse under 15 U.S.C. §1058; and
Applications for Renewal under 15 U.S.C. §1059.
Forms for filing these documents are available at http://www.uspto.gov/teas/eTEASforms.htm. For further information on maintaining a federal trademark registration, please contact the Post Registration Division at (703) 308-9500."

 

[plee]

Hi T-DESIGNER

Many Thanks for your helpful pointers!

P Lee