Trademarks

TRADEMARK BASICS

 

What is the purpose of a trademark?

A trademark serves to identify a source and represents brand names, logos and other source identifiers that are distinctive. Some examples include names, numbers, combination of both, sound, moving images, color, scent, trade-dress i.e. product packaging, shapes and touch sources. Some trademark examples include the word COKE for beverages, the chime for NBC a television broadcast company, the color brown for UPS freight, or the marching ducks for hotel services.

Trademarks help consumers distinguish between competing products and services in the marketplace. Through ongoing use of a trademark, consumers begin associating the trademark with a particular quality and comfort so as a business evolves so does its reputation or goodwill.

 

Who may be an Applicant?

Any natural person or an entity that uses a mark or intends to use a mark in interstate commerce.

 

Who should apply for a federal trademark registration?

Individuals, for profit entities, and non-for-profit entities that seek to protect their trademark.

 

What are the different types of marks?

Trademarks are applicable to products and service marks are applicable to services (collectively known as “marks”), both of which are treated identically under the law.

Certification marks: certified by a certifying authority that goods or services of others meet certain standards or specifications e.g. ASE certification for mechanics, Underwriter Laboratories or UL, Good Housekeeping.

Collective marks: the trademark is used by members of a collective group, an association or organization (collective mark) e.g. HOLLYWOOD GAMING or the mark indicates membership in a collective group, an association or organization (collective membership mark) e.g. UNITED WORKERS OF AMERICA and HELLS ANGELS and BOY SCOUTS.

 

How long does federal trademark protection last?

Indefinitely so long as there is usage of the mark and the proper renewal documents are timely filed.

 

I have a trade name so why should I also file for a trademark?

Registering your trade name whether a corporation, nonprofit or DBA with a state assists branches of government such as the Internal Revenue Service and Secretary of State in distinguishing your business from another for tax purposes but it does not necessarily qualify as trademark use.  The reason depends on the context in which it is used and sometimes the business name is not the same for the goods/services they provide.

 

May I still file for trademark protection even if I have not produced a product yet?

Yes. As soon as you have solidified your brand, you may file an Intent to Use application to claim the earliest date possible on the federal registry.  Thereby whether you are in the research and development phase, or design or marketing phase, you do not have to wait to file for trademark protection.

 

How do I select a protectable trademark?

In the trademark field, the concept of the “strength of the mark” is used to categorize a mark’s strength or distinctiveness. Only distinctive marks and those that have acquired secondary meaning are protectable.

A coined or fanciful mark is one that is made up and without real meaning-generally not found in the dictionary.  An arbitrary mark is one that has no relation to goods or services. A suggestive mark is one that suggests an attribute of the goods or services.  A descriptive mark is one that describes a characteristic or function of the goods or services.

Unlike a coined, arbitrary and suggestive mark which are automatically protectable, a descriptive mark requires proof of secondary meaning to be protectable. A generic mark is for a type of product or service and never offers protection.  Thus, depending on where your marks falls in the spectrum, you may have automatic protection or require proof of secondary meaning i.e. through extensive use and advertising.

Coined or Fanciful Mark-KODAK for cameras

Arbitrary Mark- AMAZON for retail

Suggestive Mark-JAGUAR for vehicles

Descriptive Marks that have acquired secondary meaning – CHILDREN’S PLACE for kid clothing.

 

What are the benefits of applying for a federal trademark?

As the most important tool to protect your brand, a federal trademark registration provides some of the following advantages:

  • A presumption of validity
  • Provides exclusive rights to use the mark in connection with your goods/services
  • Notice of ownership to the public of your nationwide rights
  • Statutory remedies where infringement occurs including defendant’s profits, plaintiff’s damages, costs of the action and where willfulness is found, attorneys’ fees and treble damages or three times such profits and damages whichever amount is greater
  • After five years of registration, certain challenges/defenses are prohibited
  • Allows use of a notice of the federal registration symbol R in a circle
  • Use of the US registration as a basis for applications abroad
  • Allows for registration with the U.S. Customs Office to prohibit infringing goods from entering into the United States

 

Is there more than one registry?

Yes, there is a Principal and a Supplemental Registry.  A Principal Registry is reserved for distinctive marks and marks that acquire distinctiveness.  A Supplemental Registry may allow descriptive marks (merely descriptive, deceptively mis-descriptive or primarily geographically mis-descriptive) or marks that are primarily merely a surname to register without a showing of acquired distinctiveness.

 

 

OVERVIEW OF APPLICATION PROCESS

 

What is the timeline for examination and registration?

Typically, it takes two to three months for an examiner to get assigned to review your application and up to one year for a registration.

 

What are the general requirements for filing a federal trademark application?
  • OWNER: Identity of the Applicant
  • MARK: (and describe any design elements, significant meaning, etc (if any)) and provide drawing of same)
  • GOODS/SERVICES: List the goods and/or services and the International class(es)
  • USAGE: Identify the Filing basis (intent to use or Use) and provide specimen showing usage of the mark (for Use filing basis)
  • FEES: Filing fee(s) per class

 

What filing basis do I claim for a federal trademark application?

There are several filing basis to choose from depending on the particular circumstances.

  1. a) Applicant is using the mark for stated goods/services in commerce (1A BASIS),
  2. b) Applicant has a bona good faith intent to use the mark for stated goods/services in commerce (1B BASIS),
  3. c) Applicant has a foreign mark: 44D BASIS (intent to obtain priority date in U.S. based on date application was filed in qualifying foreign country); 44E BASIS (using the registration in qualifying foreign country with an intent to use mark in U.S to obtain a U.S. registration); 66A (extension of protection under the Madrid Protocol).

 

Why do a trademark search?

Before you begin the application process, a trademark search is always recommended as someone else may have already adopted a same or similar trademark for same or similar goods/services and thereby avoid the risk of infringing the rights of others. The investment of a proper search now will save you time and money later.  Search results will also help you understand the landscape of other marks surrounding your proposed trademark and show the probability of overcoming any substantive obstacles during the examination process to ultimately obtain a registration. as well as a refusal to register by the examiner for likelihood of confusion.

 

How do I confirm the filing of the application?

Upon filing the application, your application will receive an assigned serial number which is your proof of receipt as to what and when you filed.  This becomes especially important if a competitor files a same or similar mark for same or similar services on the same day or near the same time.

 

Why have I received an Office Action?

If a trademark examiner finds a technical issue to be clarified such as the application does not comply with the filing requirements, or a substantive reason for objecting to the application, an Office Action will be issued. Common objections examiners cite to when refusing to register a trademark are disclaimers, descriptiveness of the mark and likelihood of confusion.

 

What are other substantive refusals to a trademark?
  • Marks that are primarily Geographic descriptive of applicant’s goods/services
  • Deceptive Marks i.e. Deceptively mis-descriptive of applicant’s goods/services or primarily geographically deceptively mis-descriptive
  • Marks that are primarily merely a Surname
  • Matter that is purely ornamental or ornamental marks
  • Nondistinctive terms- Generic marks or merely Descriptive marks in relation to applicant’s goods/services including laudatory and qualitative terms unless part of a distinctive mark
  • Titles of a single creative work
  • Marks used solely as a trade name
  • Government symbols i.e. flag, coat of arms or other insignia
  • Immoral or scandalous marks

 

When must I respond to an Office Action?

Office Actions have a strict deadline, generally six months from the date of issuance, and must be answered within that timeline.  Failure to respond by the Office Action deadline will result in abandonment of the mark.

 

What are the differences between a non-final and final Office Action?

There are two kinds of Office Actions: non-final and a final.  A non-final office action will list new objections about applicant’s application while a final Office Action recycles already raised objections.  A proper response to an Office Action will satisfy all of the examiner’s issues and avoid any final review as in a final Office Action.  If a Final Office Action has issued, the examiner has not been satisfied by applicant’s response so an applicant may consider filing, where appropriate, any of the following:

  • A response that addresses the remaining objection(s) and/or a Notice of Appeal to the Trademark Trial and Appeals Board (The Notice must be filed before the six months left to respond to a final action is due to expire) or
  • A Request for reconsideration of a final Office Action in conjunction with a Notice of Appeal or
  • A Request for reconsideration but before the deadline for filing an appeal

 

What happens once all outstanding issues are resolved?

If the examiner finds no issue with the application and all the requirements have been satisfied, the examiner will next issue a Notice of Publication. The Notice of Publication provides the date in which the mark will publish in the Official Gazette and starts the thirty (30) day window for any party to file an objection to the registration of applicant’s trademark.  Once the time lapses and no party files either a Notice of Opposition or Extension of Time to oppose, the examiner will next issue a Notice of Allowance.

An applicant will then have six (6) months to file either: 1) a Statement of Use (SOU) or an allegation of use stating the mark is being used in interstate commerce and attaching a specimen of the mark or 2) an Extension of Time (EOT) to file a Statement of Use which may be filed every six months for up to three years. Failure to file either the EOT or SOU by the deadline will result in abandonment of the mark.  Ultimately, once the Statement of Use is filed and no additional Office Action issues i.e. for specimen refusal, a Certificate of Registration will issue.

 

What are specimens?

Specimens are proof that you are using the mark in connection with the goods and/or services you claimed in the application. Specimens are required for an actual use application but not for an intent to use application although the trademark will not ripen into a registration until a Statement of Use is filed and specimens are accepted.

For products, the mark may be placed on a label or tag affixed to the product or packaging, or on a display associated with the goods or as a stamping on the product, packaging , tag or label or if placement is impracticable, then on documents associated with the goods or their sale.

For services, the mark may be imprinted on a website, brochure or advertisements to name a few. Stationary, invoices and the like are also acceptable specimens if they show the mark and refer to the services.

 

How long do I have before I must file a specimen?

You can request an Extension of Time every six months up to 36 months from the date of the Notice of Allowance.

 

Does a trademark registration require any maintenance?

Yes, from the date of registration, a maintenance filing is due within the fifth and sixth year, between the ninth and tenth year and thereafter every ten years. The type of filing depends on the facts and length of time passed from the anniversary date of the registration.

 

Can I lose my rights to the trademark after I’ve registered it?

Yes, if applicant does not timely maintain their registration (see maintenance question above for explanation), the trademark abandons or the mark becomes generic, i.e. Elevator.

 

 

OTHER TRADEMARK CONSIDERATIONS

 

How do you monitor and enforce your trademark rights?

Applicants may consider a monitoring or watch subscription as a proactive measure to police for third party infringers.  Other tools of enforceability include Cease and Desist letters, Opposition and Cancellation proceedings and litigation.

 

How else may I proactively protect my trademark?
  • Incorporate a corporate style guide
  • Proper use of advertising-campaigns on how to use your trademark

 

How do I properly use my trademark?
  • Use it as an adjective i.e. XEROX copier and never as a noun -XEROX or verb-XEROXING.)
  • Representation of the mark should not be altered i.e. plural
  • Display the trademark with I) a capital letter or all caps, ii) italicize, iii) boldface and/or iv) color
  • Use the appropriate symbols: ®, tm, sm

 

What trademark symbols do I use?

That depends. Using the symbols are notices to the public of your claim of ownership in the trademark. Before a Certificate of Registration issues and regardless of whether you apply for federal trademark, you may use the “tm” (trademark) or “sm” (servicemark) in superscript form after your trademark. After your mark registers, you can use ® symbol.

 

What else can I do with a trademark?

A trademark is an intangible asset.  Assets can be assigned, purchased or licensed. One type of license is a franchise.

 

How is a trademark transferred?

A trademark is transferred though a written instrument called an assignment.  It is a transfer of owner’s rights, title and interest in the mark.  In order for the trademark not to be found illusory and invalid, a trademark assignment must accompany the goodwill of a business it formerly represented.

 

How soon can I file an assignment for my pending trademark?

At least until after a Statement of Use (with specimens) is filed.

 

What is a license?

It is permission to use the mark. The principal terms of a license agreement include identity of products/services, duration, territory, quality control and royalty rate.  While a trademark license agreement does not have to be in writing, it is highly recommended. Further, a trademark license does not have to be recorded with the USPTO.