LOOKING TO MAKE YOUR MARK AND CREATE A BRAND FOR YOURSELF OR YOUR BUSINESS?
Trademarks are an important way for businesses to protect their brands. While registration is not a requirement, a registered trademark is entitled to statutory protections when a business wishes to enforce its trademark rights against an infringing party. Best practice is to register the trademark with the United States Patent and Trademark Office (USPTO) or the business’ respective state, but the rules can be confusing. An attorney can help ensure the mark is trademarkable and all materials are properly submitted so owners can take advantage of the additional remedies under the law.
WHAT IS A TRADEMARK?
A trademark is a word, phrase, symbol or design (or a combination of those things) that identifies and distinguishes the source of certain goods or services. Essentially, a trademark is used to differentiate the goods and services of one company, from those of another. It allows consumers to know exactly where products are coming from.
Technically, a “trademark” applies to marks that identify the source of goods, while a “service mark” identifies the source of a service. However, the words “trademark” or “mark” are generically used to refer to both trademarks and service marks.
WHAT CAN BE TRADEMARKED?
There are several different types of marks that can be trademarked. The most common types are:
- Word mark. A “word mark” is a trademark that is a word or phrase. This type of trademark protects the words themselves, rather than how the words appear in a design or an image. Some examples of word marks include a brand name, slogan, phrase or tagline. The USPTO categorizes such trademark as a “standard character mark.”
- Design mark. A “design mark” is an image that creates brand recognition, such as a logo. This type of trademark protects the visual elements of a brand (i.e., a logo) regardless of the words that may appear in the image.
- Composite mark. This is a mark that is a combination of words and design, like a stylized font for a brand name.
SHOULD TRADEMARKS BE REGISTERED?
Business owners can, but are not required to, register their trademarks. Federal registration with the USPTO gives owners many benefits, including putting others on notice of the company’s mark so they do not use a similar one, recording the registered trademark with the U.S. Customs and Border Protection to stop infringing goods from being imported into the U.S., obtaining access to the federal courts and certain types of monetary damages, and providing a basis for foreign registration allowing for protection of the company’s brand globally. If a business continues to use its federally registered mark in commerce for a period of 5 years after it has been registered, the business may also be permitted to file for “incontestable” status of the mark, which provides additional advantages in a trademark dispute.
States may also allow for registration of trademarks as discussed in the next section.
HOW CAN TRADEMARKS BE REGISTERED?
Generally, the U.S. is a first use jurisdiction. Additionally, trademarks are protected under common law, state law and federal law, each with its own requirements.
A “common law” trademark arises from the actual use of a particular mark in commerce, regardless of whether it is registered. However, a common law trademark does not afford its owner with exclusive, nationwide protection. The rights are limited to the geographic area where the mark is used in commerce and therefore, there is no way to enforce against those in other regions for using the same, or a similar, trademark.
Trademarks can be registered at the state level. Requirements vary by state, as do the benefits of registration. Although state registrations only provide protection in that state, a trademark registered with the state still offers a layer of enforceability against potential infringers.
Federal registration is used by businesses involved in interstate or international commerce. Registration is only valid in the U.S., but it provides a basis for foreign registrations.
Before a trademark can be registered federally, the USPTO will conduct a review to determine whether there is a “likelihood of consumer confusion” between the mark of the applicant and any mark already registered or in a pending application. First, the marks are evaluated for their similarities. They do not have to be identical, but if they are similar in sound, appearance and/or meaning, they may be considered confusingly similar.
However, even if two marks are similar, there might not be a likelihood of confusion unless the goods/services of the parties are related such that consumers could be confused and identify the products as originating from the same source.
FEDERAL APPLICATION PROCESS
The registration process can be confusing with precise requirements for submitting application materials. Key issues include:
- Mark format. The application must include a clear drawing or depiction of the trademark to be registered. If there are variations on the mark, separate applications are required.
- Classes of goods/services. Applicants must clearly identify which class of goods and/or services to register the mark under and provide a description of the goods and/or services the mark has been used for in commerce. As an example, if XYZ Co. wishes to register its trademark XYZ for selling yoga pants, XYZ Co. would apply under Class 25.
- USPTO database and web search. Prior to submitting an application, the applicant should conduct a USPTO search as well as a web search to determine whether anyone else has registered a similar trademark used on related goods/services.
- Filing basis. Applicants must indicate the legal basis of their trademark application and meet the requirements. There are four possible filing bases: (i) use in commerce basis, (ii) intent-to-use basis, (iii) foreign registration basis, and (iv) foreign application basis. Use in commerce basis applies when the applicant is currently using the mark in commerce with their goods and/or services. Intent-to-use basis applies where there is a bona fide intention to use the mark in commerce with the goods and/or services in the near future.
- Online filing. Applications, fees and all materials, including the depiction of the mark, must be filed online through the Trademark Electronic Application System (TEAS).
- Monitor application status. Applicants are responsible for monitoring the progress of their application.
- USPTO examining attorney reviews application. If minimum filing requirements have been met, the USPTO assigns an application serial number and an examining attorney, who reviews the application to determine whether it complies with all applicable rules and statutes and includes all required fees.
- Office Actions. The examining attorney contacts the applicant regarding any issues with the trademark or application by delivering an official notice, known as an Office Action. Applicants must respond to each problem raised by the examining attorney by the deadline.
- Acceptance of the mark. If the USPTO accepts the mark, it is published in the “Official Gazette,” a weekly publication of the USPTO. Third parties have 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose. After that period, the mark is accepted.
WHEN SHOULD TRADEMARK SYMBOLS BE USED?
Owners of common law trademarks may use a “TM” (for trademark) or “SM” (for service mark) symbol to indicate they are using the mark. If the mark is registered, an ® should be used after the mark.
WHEN CAN A MARK BE REJECTED FOR REGISTRATION?
Unfortunately, not every desired mark can be federally registered. Under federal law, trademarks can be rejected if they are:
- confusingly similar to trademarks that are already registered or pending;
- merely descriptive of the specific goods or services or misdescriptive (meaning they deceptively misrepresent or falsely describe the goods or services);
- immoral, deceptive or scandalous; or
- disparaging or falsely suggest a relationship with a person (living or dead), an institution, a belief, or a national symbol, including any mark which brings them into contempt or disrepute.
Note that even once a trademark is granted, it can be subsequently revoked.
HOW LONG DOES TRADEMARK REGISTRATION LAST?
Federal trademark registration lasts as long as owners continue to use the mark in commerce and file all necessary maintenance documents with applicable fee(s), as required.
MAINTAINING OR RENEWING TRADEMARK REGISTRATION
Registrants must file specific maintenance documents as provided by the USPTO rules. In addition, registrants may lose their trademark rights by permitting others to infringe upon the mark. Owners must police and enforce their rights. The USPTO will only prevent future applicants from registering a similar mark, as discussed above.
HOW IS A TRADEMARK ENFORCED?
Trademark owners are responsible for protecting and enforcing their mark. A third-party who infringes or dilutes a trademark may be subject to legal action and significant damages. Owners can protect their rights by sending a cease and desist letter, commencing a lawsuit, participating in proceedings before the USPTO, coordinating enforcement with the United States Customs and Border Protection, issuing take down-notices and filing a Uniform Domain Name Dispute Resolution Policy complaint.
Trademark rights are a valuable asset to any business. As such, owners should seek experienced legal advice to ensure they take appropriate steps to secure and protect those rights from others.
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