Protect Your Name & Your Reputation
Why Register Your Mark?
A successful brand or mark is one the public associates with your product or service. If you see a brown truck driving down the road, you are likely thinking of a well-known package delivery service. And what about the golden arches sign or a shell sign? Are you thinking of hamburgers or gasoline?
Trademarks fall under a category of law called “intellectual property.” I emphasize the word “property” because trademarks can be the most important and valuable asset of your business. Trademarks come to represent all the goodwill and brand reputation you have built around your product. If others copy that brand image in attempts to profit from the goodwill and reputation you built in your brand, it can be costly for your business. Not only does your mark lose that strength of association, but the third party’s use of a similar mark with inferior products can tarnish the reputation of your product simply from consumer confusion.
Federally registering your trademark not only puts the public on notice of your ownership and federal rights to that mark, but it allows for greater remedies in the event a third party infringes your mark.
What is a Trademark/Service Mark?
Trademarks are words, phrases, symbols and designs that identify and distinguish the source of goods. Service marks are words, phrases, symbols and designs that identify and distinguish the source of services. It is common for service marks to also be referred to as trademarks.
What is the difference between Trademarks, Copyrights and Patents?
- A Trademark protects the brand name, logo or slogan used on goods or services.
- A Copyright protects original artistic or literary works (e.g., books, TV commercial, etc.).
- A Patent protects inventions.
Strength of Your Trademark
Fanciful – Words that are made up and have no meaning other than as the brand name for which they are used.
Example: EXXON® VELVEETA® CLOROX®
Arbitrary – Words that may have a common meaning but not in relation to the goods or services for which they are used.
Example: SHELL® APPLE® DOVE®
Suggestive – Words that suggest but do not describe qualities or a connection to the goods/services
Example: GLANCE-A-DAY® NETFLIX®
Descriptive – Words or designs that describe the goods/services
Example: UNITED AIRWAYS® BESTBUY®
Generic – Common everyday name for goods/services; cannot be registered because the word merely defines the product or service, but not its source
Example: ASPIRIN ESCALATOR ZIPPER
How Do You Gain Trademark Rights?
**First to use a mark has superior rights to that mark in the specific area where the mark is used.
- Common law rights are based solely on use of the mark in commerce within a particular geographic area.
- State Registration provides rights within that state only. Common law or state registered marks can be identified with TM for trademarks or SM for service marks.
- Federal registration creates a legal presumption of your ownership of the mark and the exclusive rights to use the mark nationwide. Only federally registered trademarks can be identified by the registration symbol ®.
1. Trademark Search and Clearance Report
A trademark search is an important step before filing an application. The search can identify potential problems in applying for registration – primarily the likelihood of confusion with an existing registered mark or pending application – and help you avoid infringement of those third party marks. Lack of knowledge is not a defense to trademark infringement; it is better to know and avoid potential infringement than defend against your infringement after the fact. The search can also indicate the strength of your mark or prospective mark. If the search results reveal widespread use of the mark or similar marks, this is an indication that your mark or prospective mark is weak and indistinctive, which makes your mark harder to defend against infringement and less valuable in promoting your brand.
Types of Searches:
- Comprehensive – search of federal and state trademark registrations, domain names, company names, and internet products search
- Knockout – search of federal trademark registrations only
* This search is less expensive than a comprehensive search, but it may not be the best search option when your company is considering a new name, logo or slogan.
- Design – search of federal trademark registrations containing designs
Once the search is complete, an analysis of the relevant results are included in a Trademark Clearance Search Report.
2. Filing the Application
There are 2 primary types of federal trademark applications:
Use-in-Commerce (1a) - You are currently using the mark before or at the time of registration.
Intent-to-Use (1b) - You are not yet using the mark, but you intend to use it in the near future.
Information required for the application:
- Name and address of the owner of the mark
- Drawing of the mark
- Date of First Use/Date of First Use in Commerce of the mark for each type of goods and/or services
- Specimen (Use-in-Commerce applications only)
What is a Specimen?
The specimen should be a sample depicting how the mark is actually used in commerce on your goods or with your services.
A specimen for goods can be labels or packaging for goods, or a photograph of the mark appearing on the goods or packaging. The specimen cannot be invoices, announcements, order forms, brochures, business cards or letterhead.
A specimen for services should show the mark in use in an advertisement of the services. For example, a specimen can be a photograph of a business sign, a brochure or advertisement about the services, or a website or webpage.
- Detailed list of goods and/or services for which the mark is used (Class)
What is a Class?
The United States Patent and Trademark Office (USPTO) divides goods and services into categories called “Classes.” Each class is numbered from 1-34 for goods and 35-45 for services.
Classes are important for two reasons:
1) The classes for which you register your mark define the extent of your registration.
Example: If you register your mark under class 14 for jewelry, your trademark registration rights would not extend to clothing, which falls under class 25.
2) When determining the likelihood of confusion between two marks, similarity in the class of goods and services can be a factor.
If you register your mark under more than one class, you must pay a filing fee for each class and provide a specimen showing the mark in use for each class.
Type of Mark
- Standard Character – The mark does not contain special fonts, designs or colors; registration of a standard character mark protects the wording itself, without limiting the mark to a specific font, style, size or color and therefore gives you broader protection than a special form drawing.
- Special Form – The mark includes a design or logo, alone or with wording, or if the particular styles of lettering or particular colors are important, you would submit a special form drawing.
- Color Mark – If you are claiming a specific color(s) as part of your mark, the drawing of the mark must be in color.
- Black-and-White Mark – Even if your mark is in color, if you are not claiming color as a part of your mark, you can submit a black-and-white drawing of the mark which will cover use of your mark in any color.
3. Review of the Application
Once the Application is filed, it can take up to 3 months for it to be assigned to a USPTO examining attorney for review. The examining attorney will review the Application to determine if it complies with all federal requirements. The examining attorney is primarily looking to see if your mark is similar to any federally registered marks.
Common reasons for refusing the trademark registration:
- Likelihood of Confusion
- Registration of your mark will be refused if the examining attorney finds your mark to be too similar to an existing registered mark, and the goods/services of the parties are related in such a way that a consumer might mistakenly believe the goods/services come from the same source.
- Merely Descriptive or Deceptively Misdescriptive
- Merely Descriptive marks are ones that identify a quality, function or characteristic of the goods or services.
- Example: COLD AND CREAMY for ice cream
- Deceptively Misdescriptive are marks that misdescribe the quality, function or characteristic of the goods or services.
- Example: SUPER SILK for shirts not made of silk
- Geographically Descriptive
- The mark may be considered geographically descriptive if the mark primarily indicates the geographic region as the origin of the goods or services.
- Example: BANK OF NEW YORK
- Insufficient Specimen
- Specimen fails to accurately depict the mark, or improper specimen for goods or services
4. Publication for Opposition
If your Application makes it through the review by the examining attorney or overcomes a refusal, the mark will be published in the Official Gazette. The public has 30 days from the date of publication to oppose your trademark registration (“Opposition Period”) if they believe they will be harmed by the registration of your mark.
5. After Publication
If no one objects to the registration of your mark during the 30-day Opposition Period...
- Use-in-Commerce Applications (1a) - The USPTO will issue a registration certificate about 11 weeks after publication.
- Intent-to-Use Applications (1b) - The USPTO will issue a Notice of Allowance about 8 weeks after publication.
- The Notice of Allowance does not mean that your mark is registered. You must file a Statement of Use once the mark is in use in commerce. You have 6 months from issuance of the Notice of Allowance to file a Statement of Use showing the mark in use in commerce. If you are not using the mark at the end of the six months, you can file a Request for an Extension of Time to File a Statement of Use. You can file a maximum of 5 additional extensions for up to a total of 36 months from the Notice of Allowance issue date.
- Between the 5th and 6th year, from the date of registration, a Section 8 Declaration of Use must be filed. Failure to timely file will result in cancellation of your mark.
- Between the 9th and 10th year, and every 10 years thereafter, from the date of registration, a Combined Section 8 Declaration of Use and Section 9 Application for Renewal must be filed. Failure to timely file will result in cancellation of your mark.
Protecting your Registered Mark
Once your mark is federally registered, you must protect and defend your mark from infringers.
A trademark can become generic (and unprotectable) if the public comes to associate that mark as the generic name of a product (example: Aspirin and Zipper). A modern example is Google’s ongoing battle to avoid its brand name from becoming a generic term for internet searching (“googling”).
The best way to protect your mark is to monitor for use of conflicting or infringing marks and to promptly respond with a Cease and Desist Letter, or if necessary, a lawsuit for trademark infringement.