Heads up on TM's pending

[KristineG]

Most Sr. Level Executives see properly laid out business letters every single day. Speaking as a former Sr. Executive, I can tell you that when we receive a letter like that, we skim through it and toss it down to line staff to be researched and we expect a draft response. We proof the draft, ok it, change it, whatever to it then our assistants type it up, we sign it and off it goes. Now, I can tell you that when alot of us receive a letter, that appears to be written by someone other than the legal department or executive assistant of a company, we tend to handle those personally. There's something fullfilling about helping the "little guy". So, with that in mind, I wrote my letter off the cuff. I threw aside proper business etiquette and wrote from my "crafters" heart. I would suggest that if you want to write a sincere letter about how you feel and what the TM'ing of all these fragrances will do to you and/or your business, write off the cuff or from the heart. It has more of a sincere ring to it. JMO. If anyone wants to write, I'd be happy to review it for you.

Christine

[KristineG]

I just received this email:

Christine,

Thank you for raising your concern with me. While I am currently traveling, please know that we have experts already reviewing the issues you raised, and we will respond shortly.

Thanks again,

Jon

--------------------------

Sent from my BlackBerry Wireless Handheld (www.BlackBerry.net)

[KristineG]

What about sending the same note signed by several people? Does anyone know if cc-ing the SBA would be helpful, or they don't get involved with helping in such matters?

I'm not sure if the SBA would be helpful or not. I received a response straight from the top so I will be patient and now wait 5 business days to give him time to return from traveling and research my issues.

[KristineG]

I had a conference call today with the Chief of Staff and Sr. Advisor of the US Trademark office. The call was very informative. The trademark office is aware of filings of common fragrance names which they are reviewing very carefully. If the term being requested is too descriptive and common, they are NOT approving them. For instance, Wild Plum and Vanilla candle fragrance was recently denied because it was too commom. I've done a search on Bigger candle companies and you would be surprised how many fragrance names are dead and/or denied. Also, did you know you have 5 weeks to protest the issuing of a company's trademark? For instance, Buttercream Frosting is pending. According to the USPTO The mark identified will be published in the Official Gazette on Apr 10, 2007. Any party who believes they will be damaged by registration of the mark may oppose its registration by filing an opposition to registration or a request to extend the time to oppose within thirty (30) days from the publication date on this notice. If no opposition is filed within the time specified by law, the USPTO may issue a Certificate of Registration.

The bottom line is if you do the research, you'll know what you can and cannot use. If you don't protest or take the time to respond to a publication for a TM, then you have nothing to vent about on Candletech or anywhere else. To oppose a TM, it will only cost you the time used to write the letter and a stamp. So far, I have 3 hours of time wrapped up in this and am 300% more aware and informed on TM's. Also, just because you receive a C&D letter doesn't necessarily mean you have to comply. Check the USPTO site first to make sure the Fragrance name is registered.

[ah-soy]

Wow Christine, good for you and thanks for all this valuable information. Just one question, where do we find these publications (Official Gazette) so we can review? (Hope I didn't miss the answer somewhere through this thread)

[KristineG]

You're welcome. To make it easy for everyone here, I'm going to put a document together with instructions and examples and then post it. I should have it completed later today or tomorrow morning. Also, the TM office asked me if I would be interested in presenting a seminar to advise them of our concerns and what we do on such limited funds to help them to understand us so that when a request comes in, they'll know first hand how it will affect all of us. I pretty much gave them the gist of it but was thinking of putting together a powerpoint presentation that I could email to them. If I decide to do that, I would appreciate any advice comments or concerns that you feel need to be mentioned or brought to light regarding Candles, Bath and Body Fragance and product names.

[mizbizzyb]

I had a conference call today with the Chief of Staff and Sr. Advisor of the US Trademark office. The call was very informative. The trademark office is aware of filings of common fragrance names which they are reviewing very carefully. If the term being requested is too descriptive and common, they are NOT approving them. For instance, Wild Plum and Vanilla candle fragrance was recently denied because it was too commom. I've done a search on Bigger candle companies and you would be surprised how many fragrance names are dead and/or denied. Also, did you know you have 5 weeks to protest the issuing of a company's trademark? For instance, Buttercream Frosting is pending. According to the USPTO The mark identified will be published in the Official Gazette on Apr 10, 2007. Any party who believes they will be damaged by registration of the mark may oppose its registration by filing an opposition to registration or a request to extend the time to oppose within thirty (30) days from the publication date on this notice. If no opposition is filed within the time specified by law, the USPTO may issue a Certificate of Registration.

The bottom line is if you do the research, you'll know what you can and cannot use. If you don't protest or take the time to respond to a publication for a TM, then you have nothing to vent about on Candletech or anywhere else. To oppose a TM, it will only cost you the time used to write the letter and a stamp. So far, I have 3 hours of time wrapped up in this and am 300% more aware and informed on TM's. Also, just because you receive a C&D letter doesn't necessarily mean you have to comply. Check the USPTO site first to make sure the Fragrance name is registered.

Big hugs to you!!!

[topofmurrayhill]

Christine, I know we're all grateful to you. I'm sure there are many who would be willing to pitch in if you need help.

I've been thinking it would also be valuable if we had the advice of an intellectual property attorney who could address the concerns of crafters and small producers.

I think it comes down to product names versus scent descriptions. You can trademark a unique product name. For instance, while many people complain about it, there's no question or ambiguity about "Tart" being a valid trademark for wax potpourri. If Yankee didn't come up with that in the first place, none of you would be thinking of that kind of product as a tart.

However, you can't trademark a scent description. Nobody is going to trademark "Rose" because it's just a generic description of a candle that smells like a rose. When you start making the descriptions fancier, or don't refer directly to a scent, or don't refer to a clearly definable scent, you have a better chance of registering it as a product name and being able to defend it if a dispute should arise.

Where the interests of small producers are being damaged is in the grey area, where the TPO is letting the bigger companies edge us out by over-generously interpreting certain fragrance descriptions as product names. That's the crux of the matter as I understand it.

I wonder if anyone has noticed the stance that Illuminations appears to take in dealing with the trademark issue. Their products only have descriptions such as "buttercream frosting scented pillar" and they always use the word "scented" to avoid making it sound like a product name. I don't think they have any trademarks associated with scents. I wonder how legally effective that strategy is.

[Candybee]

Christine you are amazing! Bravo! This has been a very illuminating thread.

[beesweet]

Christine, you are awesome!! An example/instructions would be wonderful. Whatever we can do to help, just yell.

The Official Gazette is published every Tuesday and may be found on the USPTO site by clicking on Trademarks on the left then Official Gazette. A link at the top of that page brings up the last 5 gazettes to choose from. I'm not sure if this is a stable link (some expire each visit) but the one I'm on is http://www.uspto.gov/web/offices/com/sol/og/index.html

They are huge files...the April 10 one is 115 MB with 1,386 pages. You can also purchase printed copies for $65/copy or $1,536/year.

[KristineG]

Here’s how I research TM’s.

Open 2 browsers. Go to: www.uspto.gov on both browsers. You’re going to use one to search TM’s and the other to search correspondence from the USPTO office.

First Browser:

On the left hand side of the page, click on the link “Trademarks” then click on “Search Trademarks”

When the page opens, in the center of the page you’ll see a box titled “Select the Search Form”. You want to click on the third option: Free Form Search (Advanced Search). Once that page opens go to the box labeled “Search Term”. I’m going to use two examples here for you to try to kind of get the hang of it.

Example 1) Searching for all Trademarks submitted by a company:

Enter in the Search Term Box: Jaqua[ON]

(You must capitalize the first letter of Jaqua. You must use squared brackets not parenthesis and you must capitalize the letters in the brackets. In this example, [ON] stands for Owner Name. This will search all trademarks that Jaqua is applying for).

Click on: Submit Query

This will bring up everything that Jaqua is attempting to trademark.

Look for Buttercream Frosting. It’s the 2nd entry. To the left is a column labeled “Serial Number”

Highlight and copy the serial number. (you’ll also see in the far right column a term Live or Dead. If it’s Live it’s pending or being reviewed. If it’s Dead, it’s been declined or they dropped it. You can search both live and dead serial numbers.

Now, go to your other open Browser. Click on the Trademarks Link and then click on “View Full Files”.

When that page opens, you’ll see:

Search Method:

Paste the serial number you copied into the box labeled Number then click submit.

When the page opens, you will see their file list. Notice of Publication means it’s being published in the Gazette. Click on Notice of publication and read it. It gives you the date and a link to the gazette along with instructions on how to oppose.

Another document in the list that you’ll want to read is: Offc Action Outgoing

This is the letter that the USPTO sends stating whether its approved, approved with conditions or denied.

I think I’ll stop here and wait to see if anyone has questions. Next I will post how to search a fragrance name for candles specifically to see if it’s truly registered, pending, or denied.

[islandgirl]

Thank you Christine!!

[KristineG]

To Everyone: You are most Welcome.

Also ONE IMPORTANT THING I FORGOT!

If Buttercream Frosting is approved, we can't use "Buttercream FROSTING" but the way I understand it, we can still use "BUTTERCREAM" ON B&B. No Claim to candles. Hmmm....what about Buttercream Icing?

DisclaimerNO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "BUTTERCREAM" APART FROM THE MARK AS SHOWN

Type of MarkTRADEMARK

[GirlWithTheCurl]

Are they waiving the filing fees to oppose?

[KristineG]

I'm not sure. I've already sent another email asking for specific information including your question. I guess the question I would like to ask is how many of are seriously interested in stopping other companies from trademarking the fragrance names we use? For instance, all of us have been making products using Buttercream Frosting FO. Jacqua claims they first put it in use on 3/30/2003. Maybe they did. If so, fine, then it should be theirs exclusively. Is there anyone here that used it prior to? I know Yankee trademarked Buttercream for candles prior to that. I have an idea that might help all of us but I can't do it alone. I am one person. If you're sincerely interested in doing your part with very minimal cost if any, please let me know. This includes Candles, Bath & Body.

TOP: I'm not ignoring your post, just haven't had time to absorb your comment/questions and respond. Promise I will.

Thanks

Christine

[Tina J]

Maybe this has already been answered, I'm not sure. If "Buttercream Frosting" gets approved as a TM how long do we have to stop using it? Do we have to stop immediately? I am just starting out in this B&B stuff. I've spent the last year doing product testing and fine tuning all of the business aspects. In December I finally narrowed down what scents I wanted to start off with and one of them just happens to be Buttercream Frosting. I spent many hours designing the perfect label and spent a lot of money to get them professionally printed. I for one will be P***ed if this gets approved. I am working on a letter to send also. It may not matter, but it can't hurt to try. Thanks for everything Christine!

[KristineG]

Maybe this has already been answered, I'm not sure. If "Buttercream Frosting" gets approved as a TM how long do we have to stop using it? Do we have to stop immediately? I am just starting out in this B&B stuff. I've spent the last year doing product testing and fine tuning all of the business aspects. In December I finally narrowed down what scents I wanted to start off with and one of them just happens to be Buttercream Frosting. I spent many hours designing the perfect label and spent a lot of money to get them professionally printed. I for one will be P***ed if this gets approved. I am working on a letter to send also. It may not matter, but it can't hurt to try. Thanks for everything Christine!

This was also a question I asked in my email to them. As soon as I receive the reply, I will post it.

[KristineG]

Sorry, I've been busy in the Classies and pouring orders. Here's how to search for TM's on a fragrance name:

Open your browser and go to www.uspto.gov

Once there, click on the link "Trademarks", it's on the left side of the page. The list will drop down. Click on "Search Trademarks"

Once that page opens, in the center is a box labeled "Select the Search Form". Click on the third option down "Free Form Search (Advanced Search).

Once that page opens, go to the box labeled "Search Term".

In this example, we'll search for Buttercream with regard to candles. So, in the Search Term box type:

Buttercream[bI] & candles[GS]

****Make sure you capitalize the first letter of the scent. Use square brackets not parenthesis and the GS must be capitalized. No space between Buttercream[bI]. Then "space" then the ampersand sign then space then candles[GS]. No space between candles[GS] again use square brackets, and capitalize GS. BI stands for Basic Index, GS stands for Goods and Services. If you want to search B&B fragrances, replace candles with beauty.

Then click submit query. It appears Buttercream Frosting is not coming up for candles but Pink Buttercream Frosting is coming up for Jaqua and Buttercream for Yankee. We're still be able to use Buttercream Frosting for Candles for now. On the B&B side...it's a different story. HTH

[DeJae]

Seems to me, if you go to Jaqua's site. The scents they are looking to trademark are mostly those that the celebrities are buying. Guess they don't want celebrities to go somewhere else or on the net, see the same scent and say hmmm, wonder if it is the same and buy it, it might cost them business.

Guess they are not confident enough in thier product.

[cybersix]

Hi, being here in this far land is confusing sometimes. I read all this thread because I need to know about TNs and so on. what I don't understand is if they are international or not.

I'm searching for example the madrid Protocol database. I'm looking for example at yankme and what is registered. I found "tarts" (but not "tart"), "samplers", and so on...

On the top of the page for each mark I see "Countries" and they are AU CN JP KR , and under Designation(s) under the Madrid Protocol I read the same countries.

So does it mean that in italy or UK these trademark are not valid, or the sample fact they are in the international madrid database means they are valid for all the world??????

ETA: I found my answer!!!

I did the same search for Bath and Body works tms, and I found just one, but in the form there is written also our state (IT).

So I guess I can use Tarts, Clean cotton (doesn't even appear) and maybe register them (not that i want to).

[KristineG]

The whole TM, Copywrite, Patent, issue is all sooo confusing. I've tried and tried to learn as much as I can and then transfer that to this board in the easiest terms possible. The USPTO site and all the issues surrounding TM's is not very user friendly. I've been on the phone with them and corresponded through emails. I'm communicating with their Chief of Staff, Sr. Advisor and not a "customer service" rep and I'm still confused but I know more now than I did 2 weeks ago. I want to try and help all of us but I don't have all the answers. I did get the answers to 2 of the questions asked previously.

1. They are not waiving the 300.00 opposition filing fee.

2. The answer they gave me to the timeline that we have to stop using a TM'd fragrance name was very cloudy. I may schedule another conference call with them next week to have it deciphered unless of course, a fellow CT'r is an attorney and would review the answer and help us out here for free?

I don't think there are enough of us on this board who are really interested in forming a group to learn more about this, educate the USPTO or come together as a whole to opppose a registration. I've had a few(3) pm's from others offering help. I thought about calling the legal departments of Yankee and B&B Works directly. Why? I don't know...lol...that's how confusing all of this is becomming. But, at the same time, I don't want to give up. I want to know what I can and cannot do. I don't want to receive a C&D letter because that means, once you're under their sights, you'll always be there.

Christine

[Twoscentsworth]

...another interesting thing is if you do a search on the uspto site for trademark protest you find some interesting things, on p.2 of my search at the very bottom of the page was www.uspto.gov and it starts out..."This, as you all have seen, is a Trademark application." If you continue to read through this meeting further down you will read:

MR. KRUGMAN: I mean, I know I don't use the letter of protest in my practice because as a practical matter, it's so cumbersome and it's so unlikely to be granted, but that doesn't seem to me to be a reason to not have it. It seems to be a reason to improve it and maybe formalize it and just make it better.

Does anybody on the committee have a contrary view? Does anybody go along with the office's proposal to abolish it just so we can be heard on that, or is it pretty much unanimous?

(No audible response.)

So, as you can see protesting doesn't seem to be a very viable option...unless the process and the USPTO's reaction to them has been drastically updated and from my experience the government doesn't ever move quickly on much of anything.

Christine, I admire you for taking this on and for the information you have gotten and shared with everyone. You've gotten a lot further than I ever expected anyone would.

[topofmurrayhill]

Maybe this has already been answered, I'm not sure. If "Buttercream Frosting" gets approved as a TM how long do we have to stop using it?

You have to stop when a court tells you to. If you don't want to risk going to court then you can stop when the trademark owner tells you to. They can defend the mark as soon as it's registered.

I believe that would be the right answer.

[essence4me]

What is with trademarking all this simple everyday names? I can see trademarking an "original" name that you came up with. ..but red velvet cake?? buttercream frosting?? tapioca?? pumpkin pie?? etc...etc...etc... And why do they even let them trademark everyday names??

I completely agree, what's next? Vanilla, chocolate? Strawberry?

It makes absolutely no sense if it isn't an original name that was created by the product maker.

[JamesWhite]

Really this is good for every one so thanks for this information.... and i am always use this information for my new site...