Trademark Database Fields
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1 Trademark Database Fields Exhibit 5-2 A. Basic Trademark Record Helpful for Smaller Portfolios or Practices Helpful for All Practices Trademark Trademark image Country Country laws Case or record number Owner Owner contact information and/or official Payment responsibility corporate address or domicile Cost tracking Assignment history Client or business unit (essential for all law firms, regardless of size) Client or business unit contact information Responsible attorney Agent Agent contact information Status of application or registration Status date All application and registration particulars Registration on which subject application or Publication data registration is based First use date and ITU (intent to use) indicator Original registration number (for countries that change number at renewal) Next renewal date Renewal decision for next renewal Last renewal date Classes and goods and/or services Inclusion of standard goods and/or services descriptions Associated marks Remarks 1
2 B. Actions or Docket Record Linked to applicable trademark record Automatic generation of certain routine deadlines Ability to override automatically generated dates Ability to docket follow-ups and reminders Responsible attorney Party responsible for completing action, if different from responsible attorney Action type (office action, statement of use, opposition) Due date Remarks Helpful for Smaller Portfolios or Practices Indicator as to priority of action (reminder, due date) Specific action required Date action taken Helpful for All Practices Field for other party name and mark in conflicts or when cited in office actions 2
3 C. Conflicts and Agreements Linked to applicable trademark record(s), displaying at a minimum mark and country Conflict or agreement type (opposition, cancellation, settlement, prior rights, consent, etc.) Other party's name and mark Dates initiated and resolved Status (filed, resolved, etc.) Helpful for Smaller Portfolios or Practices Conflict or opposition number Direction of conflict (by/vs.) Expiration date (for agreements) Other party s mark s registration or application number, class, goods and/or services Current detailed status (opposition filed by, decision in s favor, appeal by, settled by agreement, etc.) Helpful for All Practices Cross-reference to other records involving same parties and/or marks Remarks Checklist summarizing main terms of agreements. For example: Other party s goods limited Our use limited geographically Parties agree to coexist Other party amended mark Always use with house mark 3
4 D. Licenses and Registered Users Helpful for Smaller Portfolios or Practices Helpful for All Practices Linked to applicable trademark record Licensee or registered user name Licensee or registered user contact information Changes of licensee or registered user name or ownership Designation whether party is licensee or registered user License date Expiration date Status (active, expired, cancelled) Recordation status Remarks Summary of royalty terms 4
5 E. Special Considerations for International Registrations (IRs) and Community Trade Mark (CTM) Registrations Helpful for Smaller Portfolios or Practices Display of all countries covered Ability to search by a particular country and retrieve all coverage for that country (national, CTM or IR) Ability to add new countries that join European Economic Union or sign Madrid Arrangement or Madrid Protocol Helpful for All Practices For IR records, indication if filed under Madrid Protocol or Arrangement If display of covered IR countries is by individual record, linkage of those records to primary IR record Seniorities claimed for CTM registrations 5
6 Trademark Administration Sample Filing Instructions Form Exhibit 7-1 PRIVILEGED AND CONFIDENTIAL We instruct you to file a trademark application immediately in your country as follows: APPLICANT: MARK: INTERNATIONAL CLASS: Trademark Holding Company 123 Main Street Houston, Texas 77002, USA (a Delaware corporation) TRADEMARK 21 GOODS: CHEESE STRAIGHTENERS ATTORNEY REF. NO.: TM (use this reference in all correspondence) PARIS CONVENTION PRIORITY INFORMATION (IF APPLICABLE): N/A In the absence of our instructions, please keep this application in force. ************************************************************* CONFIRMATION OF INSTRUCTIONS We hereby acknowledge receipt of the foregoing filing instructions. We will file the application for TRADEMARK at the earliest possible date but no later than, 20. Date: By: ************************************************************* 7 52 TMAD 0905
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