UTBMS codes / Trademark
UTBMS Trademark Task Codes
41 codes, TR1xx-TR9xx. Published by the LEDES Oversight Committee (LOC) in 2007.
Trademark task codes for clearance, filing, prosecution, oppositions, renewals, and enforcement work.
When to use it: Trademark matters other than litigation.
The full list: 41 codes
| Code | Name | Definition |
|---|---|---|
| TR100 | Assessment, Development, and Administration | |
| TR110 | Fact Investigation and Development | All actions to investigate and understand the facts of a matter that are not included under another trademark task code below. Covers initial meeting to discuss new matter, interview of client personnel and potential witnesses, review of documents to learn the facts of a potential case, work with an investigator, and all related communications and correspondence. |
| TR120 | Analysis/Strategy | The thinking, strategizing, and planning for a case that is not included under other trademark task codes below. Includes discussions, writing, and meetings on case strategy. Also includes initial legal research for case assessment purposes and legal research for developing a basic case strategy. Most legal research and/or other activity will be under the primary task for which the research is conducted, such as research for a response to an office action under TR430 and TR630 respectively. |
| TR130 | Document/File Management | A narrowly defined task that includes creating and populating document and other databases or filing systems, that does not fit under other task codes below. Includes the planning, design, and overall management of this process. Work of outside vendors in building litigation support databases should be an expense under E100. Calendaring (or "docketing" in the U.S.) should be included under the appropriate task codes below for each matter unless, otherwise instructed by the client. |
| TR140 | Budgeting | Covers developing, negotiating, and revising the budget for a matter that does not fit under other task codes below. Cost estimates which are included as part of other activities, such as reporting an Official Communication from a Trademark Office, should be included under the appropriate task codes below, unless otherwise instructed by the client. |
| TR199 | Other Assessment, Development, or Administration | Use only for assessment, development, administration and other activities that can not be included under a previous code, or as instructed by the client. |
| TR200 | Trademark Investigation and Analysis | |
| TR220 | Registerability Investigation | All actions associated with determining the initial availability and registerability of a particular trademark, including the definition of the scope of protection, searching, analyzing search results, and reporting results to the client. Also known as a "knock out" search, or 'preliminary' search, it is the most general type of trademark search which usually encompasses a review of trademark registry records, such as pending trademark applications, active trademark registrations, and abandoned trademark applications and registrations. Preliminary searches are conducted to determine if a full clearance investigation is warranted under TR230. Work of outside vendors in conducting searches or otherwise assisting the investigation should be an expense under E100. Any formal opinion should be prepared under TR710. |
| TR230 | Clearance Investigation | All actions associated with determining the final availability and registerability of a particular trademark, including definition of the scope of protection, searching, analyzing the search results, and reporting the results to the client. Also known as a "full" search, a clearance search is the broadest type of trademark search which includes review of pending trademark applications, active trademark registrations, abandoned trademark applications and registrations, public and corporate records, government publications and various databases. Any formal opinion should be prepared under TR710. Work of outside vendors in conducting searches or otherwise assisting investigation should be an expense under E100. |
| TR240 | Opposition Investigation | All actions associated with investigating a claim or potential claim of trademark opposition, trademark infringement or trademark dilution before a trademark office tribunal, including definition of the scope of the investigation, searching, analyzing the search results, and reporting the search results to the client. Work of outside vendors in conducting searches or otherwise assisting the investigation should be an expense under E100. This code set is for determining the facts and recommendations of an opposition matter. Any formal opinion should be prepared under TR710. Any subsequent work completed in a contested matter would be completed under TR440 or TR640 respectively. |
| TR250 | Publication Watches | All actions associated with planning, completing, and reporting the results of periodic searches for conflicting trademarks. For example, this may include monitoring the file history of trademark applications, and/or publication for opposition. Work of outside vendors in conducting searches or otherwise assisting the investigation should be expensed under E100. |
| TR260 | Enforcement Investigation | All actions associated with investigating a claim or potential claim of trademark infringement, dilution or unfair competition before a court of jurisdiction, including definition of the scope of the investigation, searching, analyzing the search results, and reporting the search results to the client. Work of outside vendors in conducting searches or otherwise assisting the investigation should be an expense under E100. This code set is for determining the facts and recommendations of an enforcement matter. Any subsequent work completed in a contested matter would be expensed under general litigation codes. Any formal opinion should be prepared under TR710. |
| TR270 | Status Investigation | All actions associated with determining the status of a pending or registered trademark, including inquiries with the trademark office, directing outside counsel and database review, and forwarding status report to the client. Includes annuities or maintenance fee status investigations. Work of outside vendors in conducting searches or otherwise assisting the investigation should be an expense under E100. |
| TR299 | Other Trademark Investigation and Analysis | Use only for trademark investigation and analysis activities that can not be included under a previous code or as instructed by the client. |
| TR300 | Domestic Trademark Application Preparation | |
| TR310 | Application Preparation and Filing - Domestic | All actions associated with completing a trademark or service mark application (including renewal applications) that is to be filed in the ("domestic") home country or region of the applicant, including obtaining the specimen of use from the client, scanning the specimen for electronic filing, discussion with the client to ascertain the dates of first use and first use in commerce, drafting and revision of the application, preparation and filing of the application by electronic or paper formats, and reporting the results to the client. This section includes all domestic trademark and service mark applications filed on the Principal or Supplemental Register. Note that government fees and external expenses (or "disbursements" in the U.S.) are included under E100. |
| TR399 | Other Domestic Trademark Application Preparation and Filing | Use only for trademark application preparation activities that can not be included under a previous code or as instructed by the client. |
| TR400 | Domestic Trademark Prosecution and | Renewal |
| TR410 | Affidavits, Petitions, Extensions, Declarations and Other Filings - Domestic | All action associated with processing affidavits, petitions, extensions, declarations, and change of correspondence with the Trademark Office in the home country of an application filed under TR300, including initial review and any calendaring ("docketing" in the U.S.) of any response deadline, report to client with any proposed response, review of applicant's instructions and comments, preparation of affidavits, petitions, extensions, declarations, change of address or change of ownership and/or responsive arguments, examiner interviews, and report of actions to the client. Excludes any filings in response to Official Communications under TR430. Includes any affidavit, petition, extension, declaration and other requests for supervisory action that are not decided by a quasi-judicial or appellate tribunal within the Trademark Office. Note that governmental fees and external expenses (or "disbursements" in the US) are included under E100. |
| TR420 | Preliminary Amendment - Domestic | All action associated with revising an application prior to the examination of the application on its merits in the home country of the applicant for an application filed under TR300, including preparation of amendments and revised drawings that does not materially alter the original drawing. |
| TR430 | Official Communication - Domestic | All action associated with processing an Official Communication from a Trademark Office (known as an "Office Action" in the U.S. when directed toward the merits of the application) in the home country of an application for an application filed under TR300, including initial review and any calendaring ("docketing" in the U.S.) of any response deadline, report to client with any proposed response, review of applicant's instructions and comments, preparation of amendments and/or responsive arguments, examiner interviews, and report of actions to the client. Includes activities associated with Official Communications not affecting the merits of the application, such as reporting Notice of Allowance, receipt of Certificate of Registration, petitions, and other requests for supervisory action that are not decided by a quasi-judicial or appellate tribunal within the Trademark Office. Note that government fees and external expenses (or "disbursements" in the US) are included under E100. |
| TR440 | Quasi-Judicial Administrative Proceedings - Domestic | All action associated with completing a quasi-judicial proceeding before an administrative tribunal associated with the Trademark Office of the home country of the applicant in connection with an application filed under TR300, including Appeals, Oppositions, and other ex-parte and inter-parties proceedings. Includes collecting evidence, preparing and filing motions, briefs, responses, replies, surreplies, and other documents, attending conferences, depositions, hearings, and other proceedings. Does not include requests for supervisory action ("Petitions" in the U.S.) under TR430. Note that governmental fees and external expenses (or "disbursements" in the U.S.) are included under E100. |
| TR499 | Other Trademark Prosecution - Domestic | Use only for trademark prosecution activities for applications that are to be initially filed in the ("domestic") home country or region of the applicant, and that can not be included under a previous code, or as instructed by the client. |
| TR500 | International Trademark Application Preparation | and Renewals |
| TR510 | Application Preparation and Filing - International | All actions associated with completing a trademark, service mark or design mark application (including renewal applications) that is to be filed in a jurisdiction outside the home country or region of the applicant, including obtaining the power of attorney, translations if necessary, obtaining supporting information and documentation from the client, discussing priority filings with the client, drafting and revision of the application, preparation and filing of the application, and reporting the results to the client. This section includes all international national applications, regional applications (such as a CTM or Benelux application), and marks filed under WIPO (Madrid Agreement and Madrid Protocol). Note that government fees and external expenses (or "disbursements" in the U.S.) are included under E100. |
| TR599 | Other International Trademark Application Preparation and Filing | Use only for international trademark application preparation activities that can not be included under a previous code or as instructed by the client. |
| TR600 | International Trademark Prosecution | and Renewal |
| TR610 | Affidavits, Petitions, Extensions, Declarations and Other Filings - International | All action associated with processing affidavits, petitions, extensions, declarations, and change of correspondence with the Trademark Office in the home country of an application filed under TR500, including initial review and any calendaring ("docketing" in the U.S.) of any response deadline, report to client with any proposed response, review of applicant's instructions and comments, preparation of affidavits, petitions, extensions, declarations, change of address or change of ownership and/or responsive arguments, examiner interviews, and report of actions to the client. Excludes any filings in response to Official Communications under TR630. Includes any affidavit, petition, extension, declaration and other requests for supervisory action that are not decided by a quasi-judicial or appellate tribunal within the Trademark Office. Note that governmental fees and external expenses (or "disbursements" in the US) are included under E100. |
| TR620 | Preliminary Amendment - International | All action associated with revising an application prior to the examination of the application on its merits in the home country of the applicant for an application filed under TR500, including preparation of amendments and revised drawings that does not materially alter the original drawing. |
| TR630 | Official Communication - International | All action associated with processing an Official Communication from a Trademark Office outside the home country of the applicant in connection with an application filed under TR500, including initial review and calendaring of any response deadline, report to client with any proposed response, review of applicant's instructions and comments, preparation of amendments and/or responsive arguments, submitting response to local counsel, and report of actions to the client. Includes activities associated with Official Communications not affecting the merits of the application, such as receipt of Certificate of Registration, petitions, and other requests for supervisory action that are not decided by a quasi-judicial or appellate tribunal within the Trademark Office. Note that government fees and external expenses (or "disbursements" outside the US) are included under E100. Additionally, Appeals, Oppositions, and other such quasi-judicial proceedings before an administrative tribunal associated with the Trademark Office are included under TR640. |
| TR640 | Quasi-Judicial Administrative Proceedings - International | All action associated with completing a quasi-judicial proceeding before an administrative tribunal associated with a Trademark Office outside of the home country of the applicant in connection with an application filed under TR500, including Appeals, Oppositions, and other ex-parte and inter-parties proceedings. Includes collecting evidence, preparing and filing motions, briefs, responses, replies, surreplies, and other documents, attending conferences, depositions, hearings, and other proceedings. Does not include requests for supervisory action under TR630. Note that governmental fees and external expenses (or "disbursements" outside the US) are included under E100. |
| TR699 | Other Trademark Prosecution - International | Use only for trademark prosecution activities in connection with applications that are ("international") filed outside the home country or region of the applicant, and that can not be included under a previous code, or as instructed by the client. |
| TR700 | Other Trademark Related Tasks | |
| TR710 | Opinion Preparation | All actions associated with completing formal legal opinions on the validity, enforceability, infringement, and/or non-infringement of a trademark right, includes opinions on infringement of a client's trademark by a non-client infringer. Work of outside vendors in conducting searches or otherwise assisting investigation should be an expense under E100. |
| TR720 | Portfolio Analysis and Management | All action associated with reviewing, analyzing, documenting, and managing a portfolio of trademarks. Includes trademark "due diligence" during transactional analysis. |
| TR730 | Assignments and Security Interests | All actions associated with negotiating and preparing assignment (i.e. previously registered or filed application) or security interest, including review of file history, checking status and meeting with client. Work of outside vendors in conducting searches or otherwise assisting investigation should be an expense under E100. |
| TR740 | Licensing | All actions associated with negotiating and preparing trademark license. |
| TR750 | Domain Names - gTLDs | Domain Name Filing - Generic: All actions associated with completing a domain name application (including renewal) that is to be filed as a generic top-level domain (gTLD), e.g., .com. The domain name applications should be filed through the current domain name provider unless otherwise instructed. |
| TR760 | Domain Names - ccTLDs | Domain Name Filing - Country Code. All actions associated with completing a domain name application (including renewal) that is to be filed as a country code top-level domain (ccTLD), e.g., .jp, .uk, .tv. The domain name applications should be filed through the current domain name provider unless otherwise instructed. |
| TR770 | Quasi-Judicial Administrative Proceedings - Domain Names | All action associated with completing a quasi-judicial proceeding before an administrative tribunal associated with domain name enforcement actions, including Uniform Domain Name Dispute Resolution (UDRP) actions administered under ICANN and WIPO. Note that governmental fees and external expenses (or "disbursements") are included under E100. This code set is for quasi-judicial proceedings only, and any subsequent work completed in a contested matter (i.e. filing complaint or appeal to a national court of jurisdiction) would be expensed under general litigation codes. |
| TR799 | Other Trademark Prosecution | Use only for other trademark related tasks that can not be included under a previous code, or as instructed by the client. |
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Code text belongs to the LEDES Oversight Committee, reproduced here with a link to the source.