By Maria Tzokova, Esq., Counsel, Solomon Blum Heymann LLP
New York, NY and St. Thomas, U.S. Virgin Islands
Manufacturers and service providers who wish to protect the brand names and symbols which distinguish their goods or services from those of competitors may do so by registering a trademark or service mark. Words, logos, phrases, colors, sounds, or some combination of these, used on goods or in connection with services, are all capable of protection.
To register a trademark in the United States there are a number of different steps required in the process. Even after the trademark has been registered there are actions that need to be undertaken in order to continue to maintain the trademark in good standing.
A trademark may be registered on a federal level or state level. A federal trademark registration is accomplished by making the appropriate filings with the U.S. Patent & Trademark Office (USPTO) while the agency to file state trademark registrations varies from state to state. While state trademark registration is relatively quick and inexpensive, federal trademark registration, although more complex and expensive, offers far more protection since state registration protects the trademark only in the state where it is registered. This article will focus on federal trademark registration only.
Benefits of Federal Trademark Registration
Some of the benefits of federal trademark registration are that it: (i) creates a legal presumption of ownership of the mark and right to use it nationwide for the class of goods or services identified in the registration; (ii) grants the right to use the registered trademark symbol: “®”; (iii) grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees; (iv) acts as a bar to the registration of another confusingly similar mark for related goods or services; (v) serves as a basis for obtaining an international trademark application; and, (vi) allows registration with the U.S. Customs and Border Protection Service to prevent infringing products from being imported.
Selecting a Mark
Selecting a trademark is an important step in the registration process because not every mark is registrable or legally protectable with the USPTO. It should be noted that company names (“trade names”) that do not function as trademarks cannot be trademarked. Thus, use of a business name does not necessarily qualify for trademark protection unless the business name is also used as the source of goods or services and creates a separate and distinctive impression.
Search for Prior Trademarks and Pending Applications
Prior to filing a trademark application, it is recommended to conduct a search of prior trademarks and pending trademark applications to determine whether any person or company is using a mark confusingly similar to the proposed one. Trademark searches are often conducted by either online searches with commercial databases or by obtaining comprehensive trademark searches from recognized trademark search firms such as Thomson & Thomson. A comprehensive trademark search involves a search not only of the USPTO trademark database but also state trademarks, common law trademarks, and the Internet. Although more expensive, performing a comprehensive search is recommended to avoid another confusingly similar trademark that would likely prevent a successful application, as well as to avoid the possibility of an infringement lawsuit by unregistered users of identical or confusingly similar trademarks.
Preparation of the Trademark Application
There are two types of federal trademark applications: an “intent to use” application, and a “statement of use” application. If the mark is already in use in interstate commerce, a statement of use application should be filed. If the mark has not yet been used in commerce, but the owner is planning to use the mark in the future, then an intent to use application should be filed. A trademark may not be officially registered, however, until the mark is actually used in commerce and the period for the commencement of such use is limited.
The application must contain the following information: the name and address of the applicant, a specimen of use of the mark, the proposed International Class or Classes of the mark, and the identification and description of the type of goods and/or services represented by the mark.
After the USPTO determines that the minimum filing requirements have been met, an application serial number is assigned and the application is forwarded to an examining attorney. Assuming that there are no major difficulties during the examination process, approval of a federal trademark registration normally takes approximately 12 months; however, this period may be longer, particularly if the examining attorney identifies any issues that must be addressed and resolved.
The Examination Process
The examining attorney at the USPTO will check all of the following: (1) the description of goods or services as set forth in the application; (2) whether the mark is “inherently distinctive” or is merely “descriptive” and has not acquired any “secondary meaning” or become “generic”; (3) whether the mark is too similar to another mark and therefore may lead to a “likelihood of confusion”; and (4) whether the mark falls within certain excluded categories. These categories may include the following: the mark is scandalous or immoral; the mark constitutes a generic name by which particular products or services are known; the mark consists of the insignia of a government entity; the mark is primarily a surname that has not acquired a secondary meaning; or the mark identifies, without consent, a living individual.
Frequently the examiner will issue an “Office Action” that requires the trademark applicant to respond. If the Office Action rejects the registration and there exist arguable grounds for contesting the examiner’s determination, the applicant can file a “Response,” usually in the form of an Amendment of the application, to overcome the rejection. If the Response ultimately does not change the examiner’s determination to reject the mark, the trademark applicant may appeal the decision to the Trademark Trial and Appeals Board of the USPTO and, ultimately, the applicant may seek judicial review. If the rejection is solely because the mark is descriptive and without secondary meaning, it may still be registered on the Supplemental Trademark Register, rather than the Principal Register.
Publication for Opposition of a Trademark
After the examining attorney approves a trademark for registration (or after a successful appeal of a rejection), the mark will be published in the “Official Gazette,” a weekly publication of the USPTO. Persons who believe that they would be harmed by the registration of the proposed mark have thirty days after the publication (or longer if an extension is granted), to file an “opposition.” Generally, an opposition is appropriate if the applicant’s use of the trademark is perceived by the opposer to create a likelihood of confusion with respect to the opposer’s trademark for the same or related products or services. If an opposition is filed, a formal trial-like proceeding will be conducted by the Trademark Trial and Appeals Board. After the proceeding, the Board will make a decision to allow or deny registration of the opposed trademark.
Allowance of a Trademark
If the trademark is not opposed during the thirty-day opposition period, or if the applicant prevails in any opposition proceeding, the USPTO will register the trademark and, in about three months, it will issue a Certificate of Registration for the trademark. At this point, the trademark owner may begin using the trademark registration symbol ® with their goods or services. However, if the mark was filed based on intent to use rather than actual use of the mark, and no opposition was filed after its publication, the USPTO will instead issue a Notice of Allowance. This gives the applicant six months from the date of the Notice of Allowance to either use the mark in commerce and file a Statement of Use, or request a six-month extension of time to file a Statement of Use. After the filing of a Statement of Use, the Certificate of Registration will be issued.
Maintenance of Trademarks
For a trademark registration to remain valid, an Affidavit of Continuing Use must be filed between five and six years after registration, and also between nine and ten years after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, but this option requires payment of an additional fee. The owner of the trademark should continuously use the mark in connection with the goods or services to avoid abandonment of the mark, since the failure to use a mark for any considerable length of time maybe be considered an abandonment and will lead to the loss of the registration. Trademark protection only comes through continuous use of the mark in commerce.
Finally, it is important for the trademark owner to preserve its rights by enforcing them and preventing the use of identical or confusingly similar marks by others with respect to the same or related goods or services. To accomplish this, a trademark owner may file oppositions of pending applications with the USPTO, notify infringers of its federal registration and trademark rights, or bring a legal action to prevent a party from using an infringing mark. Of course, regularly checking the Internet and the USPTO database for infringing uses is prudent. Also, there are companies that specialize in monitoring trademark usage which will inform the trademark owner of any similar uses which may be of concern.
For additional questions regarding trademark registration and defense, please contact Solomon Blum Heymann’s team to speak with one of their intellectual property lawyers. To read the original article on their blog, click here.
Disclaimer: This article is intended to convey general information only and does not provide legal advice or create an attorney-client relationship. No action should be taken in reliance on the information contained in this article and both the author and Solomon Bum Heymann LLP disclaim all liability in respect to actions taken or not taken based on any or all of the contents.