All Questions in Trademark Office Action Responses >> I received my NOA...I have a question or 2 or 4 or 10

I received my NOA...I have a question or 2 or 4 or 10

Posted by . updated on 11/11/2009
Let me preface this with I apologize for asking what may be EXTREMELY obvious to others on this site.

I received my NOA for the application that I placed for a Registered Trademark. According to the letter I am to put in place the trademark. I applied to use it on Clothing, T-shirts, Hats, etc. and additionally adhesive notepads.

I am not to use the Registered Trademark logo correct? ( ? ) If that's not used then how is my trademark protected? It's my understanding that I am to be pushing my product in order to prove to the Trademarking Office that my application was valid and I am using it in commerce.

Do you actually supply them with the products or just drawings?

So am I able to go full swing with the company at this point? Or not because it's just the NOA not the actual go ahead for the Registered Trademark...?

I realize I need to get an attorney at this point but if I don't know what I am doing how am I to know the attorney knows what they're doing...
Answers (9)
received  noai  question  2  4  10 
 
JSonnabend
Without reviewing your application, it's difficult if not impossible to guide you specifically.  I'll try to provide you with a few general points of guidance.

First, regarding use, you must use the mark in commerce on (or in association with) the goods or services claimed in your ID.  From the tenor of your post, I'm not sure you've properly drafted your ID.

Second, you cannot yet use the circle-R, as your mark is not yet registered.

Third, when you file your SOU, you can submit a picture of the properly branded products.

Finally, your TM registration never means you are "able to go full swing" with your company name/brand -- that's not what registrations are about.  The TM Office only reviews its records in allowing registrations.  It does not search common law uses, nor does it predict what senior registered users will do if and when they learn of your use.  To gauge your risk in using the name/brand, you'd have to conduct a TM search, both registrations and common law uses.

- Jeff
 
 
Lucorpan
Quote from: JSonnabend on 11-10-08 at 10:23 am
Without reviewing your application, it's difficult if not impossible to guide you specifically.  I'll try to provide you with a few general points of guidance.

First, regarding use, you must use the mark in commerce on (or in association with) the goods or services claimed in your ID.  From the tenor of your post, I'm not sure you've properly drafted your ID.
Why do you feel as though I didn't do it correctly?

Second, you cannot yet use the circle-R, as your mark is not yet registered.

Third, when you file your SOU, you can submit a picture of the properly branded products.

Finally, your TM registration never means you are "able to go full swing" with your company name/brand -- that's not what registrations are about.  The TM Office only reviews its records in allowing registrations.  It does not search common law uses, nor does it predict what senior registered users will do if and when they learn of your use.  To gauge your risk in using the name/brand, you'd have to conduct a TM search, both registrations and common law uses.
I wasn't asking this with regard to an Enterprising License or anything of that sort. I am asking with the NOA am I able to offer the goods for sale with my trademark that hasn't been registered as of yet? And if so, if I do I have no protection correct? (As far as someone hijacking my idea)

- Jeff

Thanks much for answering the original post
 
 
JSonnabend
To address your second set of questions first, you appear to be operating under a fundamental misunderstanding of what trademarks are and what registration is about.  A trademark registration (and an NOA) has nothing whatsoever with your ability to offer your goods for sale with your trademark.  A registration simply provides additional, albeit important, protection for your trademark rights.

Second, trademarks in no way protect ideas, so your question regarding "someone hijacking my idea" is nonsensical.

Now, turning to your first question, are you going to be selling "adhesive note pads"?  If not, your ID is wrong.  As for the clothing, if your use of the mark is merely ornamental, then the application will be denied (and you won't have any trademark rights).

- Jeff
 
 
Lucorpan
I realize the TM is to protect my product. As for as the reference to calling it my idea...using the word idea as in the specific product phrase that I am registering.

Yes, adhesive notepads are part of my product line.
 
 
Lucorpan
I said product...I meant protecting my phrase.
 
 
JSonnabend
Provided your phrase is acting as a trademark, and not merely as ornamentation, then my concern regarding your ID is likely obviated.

- Jeff
 
 
Lucorpan
Quote from: JSonnabend on 11-12-08 at 12:52 pm
Provided your phrase is acting as a trademark, and not merely as ornamentation, then my concern regarding your ID is likely obviated.

- Jeff

Correct. My phrase is the trademark.
Sorry for the confusion.

Basically, I won't be "safe" to use my phrase in my actual commerce until I received the official registration correct?

So, I am not able to offer my goods for sale until then for fear of the "hijacking"...or am I required to offer the sale in order to prove that it's intended purpose was for commerce as my application stated?
 
 
JSonnabend
You cannot receive your registration until after you begin using your trademark "in actual commerce". 

The only way you can be safe is by running a clearance search on the mark, and then all you really are doing is assessing your risk.  And no search is perfect.

- Jeff
 
 
Lucorpan
Okay...so I am off with the new company. Thanks for your help Jeff.
 

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