About Trademarks
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Mission Statement
Practice Areas
About Patents
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About Trademarks
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About Trade Secrets
About Stephen
About Charity

This purpose of this article is to provide general information to readers who may be considering trademarking their product or business name, or who otherwise have an interest in the subject of trademarks.

 When a client contacts me about protecting their trademark, the first thing that I normally recommend is a trademark search.  For this I need the trademark, a drawing of the mark if it includes a design, and my fee.  I will first search for similar federally registered trademarks and pending trademark applications at the headquarters of the U.S. Patent & Trademark Office (“PTO”), which is across the street from my office.  I printout the most relevant trademarks that I find.  I then search state trademark registrations, using the SAEGIS on-line trademark searching system, to which I have a subscription.  Finally, I search for common law (unregistered) trademarks, using resources that are available on the Internet.

 I then write a search report, listing the most relevant trademarks and the goods and/or services that they are used to identify, and give the client my opinion about whether or not their invention can be registered.  I then have the search report and the copies of the trademarks bound together and mailed to my client.  (I may also e-mail it to them, if they want it right away.)

 When I started doing trademark searches at the PTO, the trademarks were on paper, in boxes on dusty shelves, similar to the “shoes” holding paper patents.  The trademarks in the PTO are now all on computer.  There are now computers in the PTO that can be used by the public free of charge to search trademarks (though the PTO does charge to print copies).  You may also search trademarks though the PTO website on the Internet, but this is not as fast as using the computers in the PTO.  My experience has been that it takes less time to search trademarks on computer than it did on paper, but as the number of trademarks to be searched continually increases, the process is not necessarily shorter.

If the client decides that they want to apply to register a trademark, I then prepare a trademark application. The application almost always includes a drawing (which may simply be a “typed form” if the trademark consists only of words or phrases that are not in stylized letters) which may be black and white or in color.  If the trademark is, or includes, a design, the application must include a detailed description of the design.  The application must also identify the goods and/or services in which the applicant is using, or intends to use, the trademark, and the international classes in which they fall.

A trademark registration will be essentially the trademark application, as amended during the examination process.  You may find examples of trademark registrations on my website at swift.law.pro or on the PTO’s website at uspto.gov.

 When I began practicing trademark law, all trademark applications were filed on paper.  The paper had to be mailed or delivered to the PTO.  Now, most trademark applications are filed electronically.  (The PTO encourages electronic filing of trademark applications by charging higher fees for trademark applications that are filed on paper.)  Filing fees are paid when the application is filed, by credit or debit card, direct debit from a bank account, or from a deposit account with the PTO.  (Paper filers may still pay by check or money order.)  An acknowledgment of filing is provided immediately upon electronic filing. 

After a trademark application is filed, it will be assigned to a Trademark Examining Attorney.  He or she will review the application to see that it is in proper form, and will do his or her own trademark search, to make sure that the mark is not confusingly similar to a mark that has been already registered (or for which a prior application is pending) for the same goods or services. 

If the Trademark Examining Attorney sees a problem, he or she will issue an Office action, to which a response must be made within six months, which may include arguments, an amendment to the application, a disclaimer or additional information.  When the Trademark Examining Attorney is satisfied with the application (as amended) it is published for Opposition.  If no Opposition is filed, the trademark will then be registered.

Unlike patent applications, trademark applications are made available on the PTO’s website shortly after they are filed, including any subsequent correspondence to or from the PTO regarding the application or registration. 

 Interviews with Trademark Examining Attorneys are normally by telephone.  To represent clients in trademark cases before the PTO, one generally must be licensed as an attorney in a state or territory of the United States.  (There is an exception for registered Canadian trade-mark agents.)  Unlike for patent attorneys, there is no special registration requirement for trademark attorneys. 

A final rejection of a trademark application by the Trademark Examining Attorney may be appealed to the Trademark Trial and Appeal Board, for which additional filing fees are required.  (The process of applying for trademark registrations and responding to Office actions is called “trademark prosecution”.) 

After a trademark has been registered, the registration can potentially go on forever, provided that it is renewed at the required interviews.  A Declaration of Continued Use must be filed within six years after registration, or the registration will be cancelled.  It is usually advisable to combine the Declaration of Continued Use with a declaration of exclusive and continuous use (a “Declaration of Incontestability”).  An Application for Renewal must be filed ten years after registration, and every ten years thereafter, or the registration will expire.  Filing fees must be paid to the PTO with all these documents.  These documents can be filed up to six months late with the payment of a surcharge. 

Under the Paris Convention for the Protection of Industrial Property, if you file a trademark application in one country, and you then file a trademark application in another country for the same mark with the same goods/services within six months, you have priority from the date of the first application.  The Madrid Protocol provides for an International Trademark Application, based on a trademark application in one country, to apply for trademark registrations in a plurality of other countries at one time.  In Europe, one can obtain a Community Registration of a trademark that is enforceable the European Community. 

It should be noted that in the United States of America, ownership of trademarks is based on use, rather than registration.  (In some other countries, ownership is based on registration.)  Even if you never register a trademark, you still can have rights to it based on state common law.  These rights will be limited to the geographic area in which you use the mark, and the types of goods and/or services for which you use the mark.  But it is to your advantage to register the trademark with the PTO, because that gives you nationwide priority, from the date that you file your trademark application, over anyone who files a trademark application or begins using the mark later.  After you have registered your trademark, have had five years of substantial and continuous use, and have filed a Combined Declaration, your trademark registration becomes incontestable for most purposes. 

A trademark should, if possible, be registered on the Principal Register, as that gives you stronger rights.  If you cannot get it on the Principal Register, then it can be registered on the Supplemental Register.  One common reason marks are on the Supplemental Register is that they are merely descriptive of the goods, and secondary meaning has not been established.  Once they acquire secondary meaning, they can be moved up to the Principal Register.  Secondary meaning means that consumers identify the mark with the goods/services.  This may be shown by consumer surveys.  Once a mark has been on the Supplemental Register for five years, the PTO may presume that it has acquired secondary meaning, but this is not automatic.

 A trademark registration on the Principal Register gives its owner a presumption of an exclusive right to use the trademark, for the goods/services identified, in the United States of America.  Trademark registrations from other countries likewise apply only in the country that issues them.  Unlike patents and copyrights, trademark are not expressly provided for by the U.S. Constitution, but Congress has enacted the Trademark Act under the clause giving it the power to regulate commerce. 

There are five categories of trademarks, which ranked in order of strength are:

  1. Fanciful marks, which have no meaning except as trademarks.  Example: KODAK for cameras.
  2. Arbitrary marks, which have a meaning, but it is unrelated to the goods/services that they identify.  Example: APPLE for computers.
  3. Suggestive marks, which suggest a characteristic or result of the goods/services that they identify.  Example: COPPERTONE for skin tan lotion.
  4. Descriptive marks, which can only be registered on the Supplemental Register, until they acquire secondary meaning.
  5. Generic marks, which never can be registered.

Sometimes trademarks may become generic terms for the product they identify.  For example, ASPIRIN was once a trademark owned by the Bayer Corporation, and only Bayer could use it.  When a trademark becomes a generic term, the PTO will cancel the trademark registration, and anybody will be allowed to use it, which is what happened to ASPIRIN.  (However, BAYER ASPIRIN is still a registered trademark.)  This is why the Xerox Corporation used to run advertisements asking people not to use XEROX as a generic term for photocopy.

Trademark can be used in a broad sense to mean marks for both goods and services, but it is also used in a narrow sense to refer only to marks for goods.  Service mark means a mark that is used to identify services in commerce.  Trademarks and service marks are sometimes referred to as just “marks”.  Other types of marks include certification marks, which indicate that a good/service meets standards of the owner of the mark, and collective marks, used by a group.

In Canada only, the term is trade-mark.  (Other countries no longer use the hyphen.)

Registered trademarks should be indicated by using an R in a circle (“®”) after the trademark.  This puts potential infringers on notice that it is a registered mark, so that they cannot claim to be innocent infringers.  But note that it is against the law to use ® with a mark that has not been registered, even if a trademark application is pending.  After an unregistered trademark, one can use TM, to indicate that it is claimed as a trademark.  After an unregistered service mark, on can use SM, to indicate that it is claimed as a service mark.

A trademark application may be based on actual use of the trademark in commerce, or it may be based on a bona fide intent to use the trademark in commerce.  When an intent-to-use trademark application is approved, a Statement of Use of the mark in commerce must be filed within six months.  The time for filing the Statement of Use can be extended for an additional six months by filing an Extension Request.  No more than five Extension Requests can be filed.  With the original six months, the time for filing the Statement of Use can be extended for up to three years after the date of the Notice of Allowance (or about four years after filing the trademark application).  Thus, an intent-to-use application allows a trademark to be reserved for future use, but not indefinitely. 

A Specimen of Use must be submitted with an actual-use trademark application or a Statement of Use.  If the filing is electronic, a photographic image of the specimen in JPEG or PDF may be submitted in lieu of an actual physical specimen. 

Any person who feels that the registration of a trademark, for which an application has been filed, would violate their rights, may file an Opposition to the trademark application within thirty days after it is published, with the Trademark Trial and Appeal Board.  (A request for an extension of time to file an Opposition may also be filed within those same thirty days.)  A Petition for Cancellation may also be filed after a trademark has been registered.  The procedure for both Oppositions and Cancellations is similar.  There is probably a slight advantage to filing an Opposition before registration, rather than a Petition for Cancellation after registration, though the advantage may be mainly psychological.  The Opposition or Petition for Cancellation must detail the reasons why registration will or does violate rights of the party filing it.  The Applicant or Registrant must respond, or the Opposing Party or Petitioner will win by default.  There will then be a discovery period, during which the parties exchange documents and information.  Testimony is generally taken by deposition only, with the attorneys questioning the witness, but without a judge being present.  A court reporter will record the dialog at the deposition of each witness, and prepare a transcript that the judge will review.  The parties then file briefs, with detailed arguments about why each party should prevail.  Oral argument may then be scheduled.  The judges then make their decision.  The decision of the Trademark Trial and Appeal Board may be appealed to the U.S. Court of Appeals for the Federal Circuit. 

Grounds for Opposition or Cancellation include that a mark is confusingly similar to a mark of the Opposing Party.  The mark of the Opposing Party does not have to be a federally registered mark, but can also be a state trademark registration, or even an unregistered “common law” trademark.  A mark may also be opposed as disparaging.  For example, a group of American Indians (or “Native Americans”, as they prefer to be called) has had a long running litigation to cancel the trademark registration of the football team known as the WASHINGTON REDSKINS as disparaging. 

A trademark registration is infringed by the use an identical mark for the same goods or services listed in the registration.  It may also be infringed by the use of a mark that is not identical, but that is sufficiently similar to create a likelihood of confusion among consumers.  Trademarks registrations are generally not infringed by the use of the same or a similar mark for different goods or services, but there is an exception for “famous marks”.  Most members of the general public must recognize a mark as identifying particular goods for it to be famous.  For example, BUICK ASPIRIN would infringe the BUICK mark for cars, even though it is used for entirely different goods, because BUICK is a famous mark that most people recognize.  There is no special registration for famous marks; the PTO or the courts must determine whether or not a mark is famous. 

Because federal registration of trademarks is based primarily on the power of Congress to regulate interstate commerce, registration of trademarks is not exclusively federal, but the states also register trademarks that are used within their territory.  Every state and organized territory of the United States has it own trademark registration system, except the District of Columbia (because it is a federal enclave).  State trademark registration is generally less expensive than federal registration.  However, most trademark holders only seek federal registration of their marks.  It should be noted that state registration that comes before federal registration can preempt federal registration of a trademark, or at least limit its enforceability to states where there are not prior state registrations. 

Besides being words and static designs, trademarks can also be moving designs, colors, sounds, smells, or designs that can be felt by touch.  (So far as I know, no one has yet trademarked a taste.)