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What is a trademark?
A trademark is any word, name, symbol or device or combination thereof an entity usesor intends to use to identify and distinguish the entity's goods from those of others, and to indicate the source of the goods. A service mark is the same thing except it identifies a source of services. The term ‘mark' is used to collectively refer to trademarks and service marks.
How are trademark rights obtained?
Trademark rights are obtained by using the mark in commerce. A trademark that is used without a federal registration may include the TM indicator to denote that the user is claiming common law trademark rights. Similarly, the SM indicator can be used for a service mark that is not federally registered. Federally registered trademarks use the ® symbol to denote that a federal registration has been obtained.
What is a federal registration?
A federal registration is obtained from the United States Patent and Trademark Office (USPTO) in Washington, D.C. The federal registration includes a description of the mark, the owner of the mark, and identifies the goods/services with which the mark is used. Goods and services are divided into several classes, depending on the type of goods/services being described.
Why pursue a federal registration of my mark?
The use of a mark without a federal registration provides only limited geographical coverage, may lead to the loss or limitation of trademark rights, and may increase exposure to potential liability for infringing the trademark rights of others.
A first user of a mark, who obtains a federal registration, is afforded nationwide protection for the mark when it is used in conjunction with the goods/services identified in the registration even if use is not nationwide.
A federally registered mark provides constructive notice to others that the registrant has rights in the mark.
A federally registered mark provides a presumption of the mark's ownership and validity.
A federally registered mark can be used to establish rights in a worldwide web domain name, should a dispute arise.
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Trademark rights begin accruing once a mark is used in conjunction with services or goods. However, there are several considerations at various stages of the life of a trademark. These stages include: A) selection of the mark; B) trademark search and opinion; C) use of the mark; D) preparation and filing of U.S. trademark registration application; E) filing of foreign application(s); F) prosecution and issuance; and G) trademark registration maintenance. Below is an outline of each of the stages.
A. Selection of the Mark
A trademark is any word, name, symbol or device or combination thereof an entity uses or intends to use to identify and distinguish the entity's goods from those of others, and to indicate the source of the goods. A service mark is the same thing except it identifies a source of services. The term ‘mark' is used to collectively refer to trademarks and service marks.
To be effective, a mark must distinguish the source of the goods/services from others providing the same or similar goods/services (i.e., provide a source-identifying function). To this extent, a mark that generically describes the corresponding goods/services cannot provide a source-identifying function (e.g., "fresh organics" has been held to be generic with respect to "organic fruits and vegetables"). If a mark is generic, no trademark rights can ever be obtained.
Additionally, marks that are descriptive of the goods/services may not effectively provide a source-identifying function (e.g., "brief sheets" has been held to be descriptive of printed instructional pamphlets). For descriptive marks, "secondary meaning" must be shown in order to obtain trademark rights. In other words, despite being descriptive, when used, the mark must bring to mind the source when used in conjunction with the goods/services. Evidence of secondary meaning includes extensive advertising, revenues, long period of exclusive use (e.g., five years), polls indicating the public's recognition of the mark, unsolicited press, etc.
Marks that are suggestive, fanciful, or arbitrary with respect to the corresponding goods/services automatically provide a source-identifying function.
B. Trademark Search and Opinion
A trademark search for prior users of similar marks is always recommended. Such users may have superior rights in the candidate mark. Additionally, use of a mark may infringe on the rights of a prior user.
An Internet search is a good preliminary option for identifying uses of the mark or similar terms as the mark. Regardless, a trademark search conducted before using a new mark in commerce or applying for a federal registration is always advantageous. A professional search company that specializes in such searches is the best option. Generally, the search includes a database search for the mark and variations of the mark in (1) the United States Patent and Trademark Office records, (2) the Internet, (3) commercial databases, (4) state registers, and (5) common law usage (e.g., newspaper articles).
C. Use of the Mark
In order to preserve trademark rights, several options should be considered when the mark is used. These include:
1. When used in a sentence, always use the mark as an adjective, never as a noun.
2. Make the mark stand out from other text (e.g., font size, color, all caps, bold, etc.).
3. For an unregistered mark, use "TM" or "SM" next to the first/each use of the mark.
4. For a registered mark, use "®" next to the first/each use of the mark.
D. Preparation and Filing of U.S. Trademark Registration Application
In general, there are two types of applications:
1. A bona fide intent-to-use (ITU) application for a mark that is not currently being used, but which use is intended in the near future; and
2. An actual use application for a mark that is currently being used in commerce.
In either case, to federally register a mark, the mark must be used "in commerce". This use is defined as commercial use that Congress can regulate. For goods, this use can occur when the goods are shipped across state lines. For services, this use can occur when the services are provided in more than one state or to individuals from more than one state.
For an actual use trademark application, proof of use of the mark is submitted with the application. For an ITU application, proof of the use is submitted after the application by filing an Allegation/Statement of Use.
Each trademark application requires a description of goods/services. The USPTO will classify these goods/services into an International class based on the type of goods/services listed. When sufficiently different goods/services are listed, the USPTO will classify them in multiple classes. Each class requires payment of a separate filing fee.
E. Filing of Foreign Registration Application(s)
A U.S. Federal Trademark Registration does not create any rights in foreign countries. Accordingly, foreign rights can only be obtained by use of the mark in the foreign countries and/or with the filing of foreign trademark registration applications. Priority to an earlier U.S. trademark application can be claimed if the foreign trademark application is filed within six (6) months of the U.S. trademark application. Various foreign affiliates are used to handle foreign filings.
The U.S. is a member of the Madrid protocol, which enables a single international application to be filed and prosecuted. The international application designates the desired nation(s) and/or region(s), such as the European Community, each of which requires a separate filing fee. The application is analyzed once to ensure that it meets all formal requirements before being provided to each designated nation/region, which determines whether registration is appropriate in view of local requirements (e.g., likelihood of confusion).
F. Prosecution and Issuance
Approximately 6-12 months after the application is submitted, it will be reviewed by an Examining Attorney at the USPTO. The Examining Attorney may send an "Office Action" letter in which the application is "rejected" or "objected to". When an office action is received, a copy is forwarded for review. The letter will also identify the date by which a response must be filed. Subsequently, options for proceeding and the relative costs for each option are discussed.
The cost of the response can vary greatly depending on the objections/rejections presented by the Examining Attorney. In general, preparation of a response that requires arguments against a holding of descriptiveness/genericness and/or a likelihood of confusion with another mark is more expensive.
In some instances, further prosecution may be necessary, such as an appeal to the Trademark Trial and Appeal Board. Costs vary, and an estimate can be given based on the situation.
Once the Examining Attorney approves the application, the mark is published in the Official Gazette of the USPTO for public review. During a 30‑day period following publication, third parties are given an opportunity to oppose issuance of the registration, by initiating an "opposition proceeding". Assuming no opposition occurs, a registration (for actual use application) or a notice of allowance (for ITU application) for the mark will issue.
If an ITU application was filed, an Allegation/Statement of Use must be filed (once the mark is in use in commerce) to obtain federal registration. The Allegation/Statement of Use includes proof that the mark is being used in conjunction with the goods/services. Once a Statement of Use has been filed and accepted by the Examining Attorney, registration for the mark will issue. If filed after the application has been allowed, a request for an Extension of Time is strongly recommended in order to ensure that any deficiencies can be corrected.
G. Trademark Registration Maintenance
After five (5) years of registration and after every ten (10) years of registration, the owner of a federal trademark registration must file an Affidavit of Use (commonly called a Section 8 affidavit) to maintain the federal registration. Failure to file this affidavit will result in abandonment of the registration.
In addition, after five (5) years of continuous use of a registered mark, the owner may be able to file an Affidavit of Incontestability (commonly called a Section 15 affidavit) that affords additional rights to the owner. Incontestability status for a mark extinguishes most grounds for cancellation of the registration.
These two affidavits are frequently combined into one filing.
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