Online Trademark Applications Trap The Unwary

When a small, East Coast heath care company decided to file its trademark application online, the company didn't know what it was getting itself into. The online application process, provided on the Trademark Office's Web site, seemed fast and easy. It also saved the company the money it otherwise would have paid to outside trademark attorneys.

Unfortunately, the company, which didn't want to be identified, ran into a problem. It checked off the wrong boxes in the online application process. Instead of indicating that it wanted the mark to cover a new service it was offering, the company indicated that the mark should cover only goods--specifically, promotional giveaways, such as key chains emblazoned with its trademark. The company didn't discover the error until after a competitor, a major consumer company, began using the same trademark for an identical service.

However, if the application contains specific items the company doesn't produce, the Trademark Office can throw out the entire application--and any ensuing registration--for fraud. That's what happened in 2003 to NeuroVasx, a Minnesota-based medical supply company.

The business filed an intent-to-use application in 1998 to register the mark NEUROVASX. On Jan. 7, 2000, the company filed a statement of use, indicating it had used the mark for "medical devices, namely, neurological stents and catheters," and the company soon received its trademark registration.

Eventually, her firm's IT department found a way around this time-consuming process by designing a program that converts TIFF images into JPEG files with the appropriate resolution. "And we still have to play with the images occasionally," London says.

The Price Is Right


Steven Seidenberg

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