WHAT IS A TRADEMARK?
DETERMINING THE STRENGTHS OF MARKS
RIGHTS TO A TRADEMARK AND PROTECTING A TRADEMARK
FEDERAL TRADEMARK REGISTRATION
PRINCIPAL REGISTER ADVANTAGES
REGISTERABILITY SEARCH
THE APPLICATION
USPTO EXAMINATION
WHAT IS A TRADEMARK?
According to the Lanham Act, a trademark is:
"any word, name, symbol, or device, or any combination thereof used or intended to be used to identify and distinguish a producer's goods. . .from those manufactured or sold by others and to indicate the source of the goods. . ."
- 15 U.S.C. Sec. 1127
A trademark can be:
The most important aspect of a trademark is that it identifies the products or services of the trademark owner from products or services of others. Today, most people consider a trademark as a brand.
Whether a company is launching new products or an entrepreneur is beginning a new business, a trademark can become one of the company's most valuable assets. According to a 2005 ranking by Interbrand, the Coca-Cola® brand was valued at $67,525,000,000. It is extremely important that companies identify which marks they use as trademarks, determine the strength of the marks, and protect the marks from infringement, dilution, and becoming generic.
Generic marks are denied protection as a trademark. Trademark law prevents one person from claiming exclusive rights in a generic term so that his competitors are able to effectively describe their product. (Example: "car" for automobiles.)
Descriptive marks encounter a similar hurdle to trademark protection as generic marks. A descriptive mark is a mark that directly describes a characteristic or quality of the underlying product. Descriptive marks are protected only if they have acquired "secondary meaning" in the marketplace. A trademark may acquire "secondary meaning" if the owner has advertised and exposed the mark to the public so thoroughly that the consumers associate the mark with the owners product, rather than as merely a descriptive term. (Example: All Bran® for breakfast cereal.)
Suggestive marks are stronger than generic or descriptive marks, and are therefore allowed greater protection. A suggestive mark, as the term implies, suggests or evokes some benefit or property of the product or service. However, the word is not totally unrelated to the underlying product. (Example: Coppertone® for suntan lotion.)
Arbitrary or fanciful marks bear no logical relationship to the underlying products or services and are given the greatest trademark protection. (Example: Apple® for computers.)
Assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of three ways: (1) by being the first to use the mark in commerce (selling a product or service with the mark); (2) by being the first to register the mark with a state; or (3) by being the first to register the mark with the United States Patent and Trademark Office (USPTO).
By being the first to use the mark in commerce, the owner has the right to prevent others from associating their products with the mark. However, this right is limited to the geographic area in which the trademark owner sells his products or services. This type of mark is called a "common law trademark" and usually has the "TM" (trademark for goods) or "SM" (service mark for services) adjacent to the mark.
An owner of a mark may decide to register the mark with the state in which he operates. State registration is usually sufficient if the owner of the mark intends on operating only within that specific state since state trademark rights protect trademarks only within the state in which it is registered and usually only for the specific product or service for which the mark is used. State registration is significantly less expensive and quicker than federal trademark registration. Typically, applications for state trademark registrations are not examined to determine whether there is any conflict with other marks. As long as the mark is not exactly the same as another registered mark in that state, the trademark owner should be granted state registration. Trademark rights are then gained by the owner developing the strength of the mark itself, rather than based solely on the state registration. There is no specific symbol to indicate state registration; therefore, trademark owners should continue to use the "TM" or "SM" adjacent to the mark.
Federal trademark registration affords the owner of a trademark the most trademark rights and the greatest scope of protection. Federal trademark registration: (1) provides evidence that the mark is valid and has achieved the status of qualifying for federal trademark registration; (2) provides evidence that the owner has exclusive rights to the mark for the specific products or services as well as related products and services for which the mark is used; (3) affords the trademark owner protection throughout the United States; and (4) grants the trademark owner broader judicial remedies (including the possibility of an award of attorneys' fees and treble damages) in case of trademark infringement. This type of mark is called a "federal trademark" and should have the "®" adjacent to the mark in order to indicate that the mark is registered with the USPTO.
There are many other aspects to trademarks that are beyond the scope of this summary. If you would like assistance with any trademark matters, please contact us at 970.612.1208 or info@patterson-tabert.com.
FEDERAL TRADEMARK REGISTRATION
Trademark registration is only available to the first user of the mark in a particular class. There may be multiple registrations for specific words (ie. Apple® computers, Apple® records, Apple® bags, Apple® car dealerships, Apple® gaskets, Apple® books, Apple® chewing tobacco, etc.). However, the trademark must not be confusing to the consumer. Each Apple trademark mentioned was registerable because the class of goods in which the mark is used is distinctive enough that consumers are not confused between the sources of the goods or services. Consumers would not reasonably think that Apple® computers are associated with Apple® car dealerships. The ® symbol represents federal registration of a trademark. Only marks which have been examined and approved by the United States Patent and Trademark Office (USPTO) may use the ® symbol.
PRINCIPAL REGISTER ADVANTAGES
* prima facie evidence of the validity of the mark, ownership of the mark, and exclusive right to use the mark in commerce on or in connection with the goods or services specified in the certificate;
* nationwide priority in the mark from the filing date of the application;
* federal court jurisdiction to hear infringement and related unfair competition claims; and
*
a registration can be recorded with U.S. Customs to prevent importation of goods bearing infringing marks.
REGISTERABILITY SEARCH
The first step in the process is to search for other similar marks to the proposed mark. Pay special attention to visually and phonetically similar marks used in connection with similar or related goods and services. The USPTO contains a searchable database for pending and registered marks. Internet search engines provide means to conduct a remedial search, and there are commercial databases that provide a more comprehensive search.
THE APPLICATION
There are two different types of federal trademark registration application. The intent to use application is used when the mark has not been used in interstate commerce as of the date of filing the application. If the applicant is planning to use a mark, it may file an intent to use application; however, before the USPTO will register the mark, the applicant must actually use the mark in interstate commerce. This requirement ensures that people cannot save or reserve marks forever without actually using the mark. The statement of use application is used when the mark is already being used in interstate commerce.
This application must contain the following information: (1) a description of the mark; (2) a descriptions of the type of goods or services represented by the mark; (3) the International Class of the goods or services; (4) the name and address of the applicant; (5) the date of the first use of the mark in interstate commerce; (6) a copy of the mark; and (7) a specimen of the mark as it is actually used. The applicant must also sign a declaration that to the best of its knowledge, no other entity has the right to use the proposed mark or any close resemblance to the mark such that use of the mark would confuse consumers. The USPTO charges a $245.00 filing fee per class of goods or services, which must be paid at the time of filing the application.
USPTO EXAMINATION
After the application is filed with the USPTO, it will be assigned a serial number and assigned to a trademark examiner. The examiner checks whether the application is complete and examines whether there are any confusingly similar marks. If the examiner determines that there are no similar marks, he then determines whether the mark is in an excluded category. The applicant can overcome the excludability of being descriptive or a surname if the mark has been used more than 5 years and can prove that the mark has acquired a second meaning (i.e., the mark has become so popular that consumers identify the mark with the goods or services rather than its original meaning.)
After the examiner has determined the initial registerability, the USPTO sends an Office Action containing the determination and reasons. If the Office Action contains a rejection, the applicant may file a Response, usually in the form of an Amendment, to overcome the rejection. For example, the examiner may send an Office Action refusing to register the mark because the scope of goods or services is too broad. The applicant may then submit an Amendment which narrows the scope of goods or services.
After the examiner determines that the mark is entitled to registration, the mark is published in the USPTO Official Gazette for opposition. When the mark is published in the USPTO Official Gazette, anyone who feels he would be hurt by registration of the mark can file an opposition (with filing fee). If the mark is opposed, an opposition proceeding commences with the USPTO’s Trademark Trial and appeal board, which determines the rights of registration.
If the applicant filed an intent to use application and succeeded through the publication for opposition stage, the USPTO then issues a contingent Notice of Allowance. The applicant then has 6 months from the date of the Notice of Allowance to either (1) use the mark in interstate commerce and submit a Statement of Use (with a $100.00 filing fee) or (2) request a 6-month extension to submit the Statement of Use. If the USPTO approves the Statement of Use, it will then issue the registration certificate and assign the mark a registration number.
If the applicant filed a statement of use application and succeeded through the publication for opposition stage, the USPTO will register the mark on the Principal Register, issue a registration certificate, and assign the mark a registration number. (If the mark is rejected as descriptive, it may be registered on the Supplemental Register until it acquires secondary meaning.)
There are many complex aspects to trademark registration. If you would like assistance with any trademark matters, please contact us at 970.612.1208 or at info@patterson-tabert.com.
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