Project II (2017): draft a trademark ITU application

MEMORANDUM

THOMAS, THOMAS, AND THOMAS

A Pretend Limited Liability Partnership

From: Ira Steven Nathenson, “Managing Partner,” T3 PLLP
To: Spring 2017 “Associates”
Date: Jan. 27, 2017
Re: Trademark project 1: select four trademarks

Background. 

For your second assignment, you will be assigned a trademark or service mark, along with a client. You will also be told in general terms what the goods and services are. You are to assume that the senior partner has engaged in a diligent search and determined that the client may register and use the mark. Your job is to prepare a draft intent-to-use (1(b)) application using the TEAS form of the United States Patent and Trademark Office (USPTO). As detailed below, you may not submit or file anything with the USPTO.

Main instructions.

  • The listing of marks, goods/services, clients, and attorneys have been posted here (updated Feb. 6).
  • You will need to prepare a draft applications for your mark using the USPTO Trademark Electronic Application System (TEAS) website.
  • To do this, you’ll need to determine, inter alia:
    • How to fill out the form
    • What international class(es) to file in.
    • What goods or services to register for, and how to describe them. You should not blindly rely on the information provided by your client. You will instead need to research how to describe the goods or service, and should consult with your client to obtain assistance on coming up with an accurate description of those goods or services.
    • How much you will need to pay in fees.

Format: hard-copy printout only.

You can save and print out your application. I will show you how to do this in class.  Save a local copy to your hard drive, and print out a copy for me.

Due: Feb. 21.

Project II is due Tues., Feb. 21, 2017 by 4:30 PM EST. Turn in a well-organized paper file along with your filled-out and signed Attribution/Certification form. Although this is a Tuesday, you should attend your Monday classes, and there is no Trademark class today. Give your paper case file and signed certification form either to me in person in my office or to the faculty admin assistants (Mariela Torres, Diana Barrosso) or faculty receptionist (Suzanne Gelin). [Updated in blue 2/13 to note there is no class Feb. 21.]

Certification.

Please sign and submit a hard copy of the Certification of Originality and Attribution. To receive a score in any project, a certification form must be filled out and signed. Cf. FRCP 11(a).

Additional information you’ll need.

  • You are an attorney with the fictional law firm of Thomas, Thomas, and Thomas, PLLP, 16401 NW 37th Ave., Miami Gardens, FL. Phone 305-474-2454; Fax (305) 623-2390.
  • Applicant info (updated 2/13, new info in blue):
    • The applicant is your client and you are the applicant’s lawyer.
    • The applicant is Acme, Inc.
    • Your listed classmate is the CEO of Acme, Inc. This is the person you should talk to for any clarification regarding the goods or services associated with the mark.
    • The applicant’s address is: Acme, Inc., 5150 N.W. Federal Hwy., Suite 31, Dania Beach, FL 33004.
  • Application:
    • Use the TEAS Reduced Fee (RF) form.
    • Draft the application as a 1(b) Intent-to-Use (ITU) application and not a section 1(a) (use), 44 (international) or 66 (Madrid) application.
    • For clarification regarding what the goods or services are, you should ask the applicant’s CEO.
    • To document your application for submission to me, see Step 7, substep 5 of the TEAS Tutorial, which shows the options for saving your work. There are four (4) options: INPUT, MARK, XML, and TEXT. These options will be available to you after your application is validated. Print out all four of them and submit them all to me as your work for this project. Make copies for yourself (either hard copies or PDF printouts) as backup. Your application is not submitted, but is complete for purposes of this assignment.
    • Do not click on PAY/SUBMIT at the bottom (paying will submit the application for real, which you should not do). I repeat, do NOT click on PAY/SUBMIT. Just clicking on that button may create an official application number. 
  • If you need any additional information, you may contact me.

Caveats & warnings.

  • Your work must be your own. Each student’s work product must be their own, though you may seek the advice and provide advice to your colleagues who are enrolled in this semester’s class.
  • You may not seek the assistance of anybody who is not registered in this class this semester.
  • Do not contact or call the USPTO.
  • For clarification regarding what the goods or services are, you should consult with your client, the applicant.
  • You cannot save your work-in-progress to the USPTO site, so I would strongly suggest that you keep a separate and ongoing list of how you answer each question. That way, if you have to come back again later to re-fill the form, you won’t have to remember what you did.
  • You do not need to worry about accidentally submitting your application to the USPTO. I called the USPTO and was assured that it is impossible to officially submit a trademark application without paying the fee. So as long as you don’t actually pay any fees, you can fill out the form and print out documentation. But to keep things safe and simple, do not click on “PAY/SUBMIT.”

Resources & tips.

Scoring.

Below is a template showing my checklist. You will be assigned an overall score on a 4.0 (4.5) scale, with 3 being a B, 3.5 a B+, etc. I score internally up to a 4.5 (A+).

Category USPTO will object USPTO may object USPTO will accept Comments
File complete

 

Mark  

 

Applicant  

 

Legal entity  

 

Goods/services  

 

Int’l class  

 

Filing basis  

 

Attorney  

 

Correspondence  

 

Fee  

 

Signature  

 

Likeliness of informal USPTO objection

 

Unscored: likeliness of formal USPTO objection (§ 2)

V 1.2 posted Feb. 13, 2017 (updating address/client info and clarifying no class 2/21/17)