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What is a Trademark?
A trademark is a name or symbol used in connection with the sale of goods and services. Some trademark rights accrue under common law with the use of a trademark in commerce; however, federal registration of a trademark confers more comprehensive rights upon the user of the mark. For this reason, federal registration of a trademark is the recommended path for mark users. Trademark rights and the process for registering a trademark are explored in more detail below.
Common Law Trademark Rights
Under the common law, the right to exclusive use of a mark accrues with the use of a mark in commerce. Nonetheless, the user’s exclusive right to use of a mark is limited to the geographic area where the user has conducted business and/or extended goodwill. A user who holds the common law right to a trademark without more faces the possibility that other users will hold rights to the identical mark in different geographic areas, which is problematic in today’s national and global marketplace.
Federal Trademark Registration
Users who register their trademark on the United States Patent and Trademark Office’s (USPTO) Principal Register – one of two trademark registers maintained by the USPTO – enjoy more comprehensive rights to the use of their mark in commerce, namely a presumption of nationwide exclusivity in the use of the mark and a presumption of mark ownership. Additionally, users may establish prospective rights to use of a mark by registering it prior to using the mark in commerce. More specifically, federal trademark registration confers the following rights upon registrants:
- Standing to bring infringement actions in federal court;
- Constructive notice of the mark’s nation-wide use;
- Ability to prevent importation of infringing or counterfeit goods by recording the mark with U.S. Customs and Border Protection;
- Ability to use the federal registration symbol (®);
- Potential to avail themselves of statutory trademark remedies;
- Ability to file foreign trademarks on the basis of their U.S. registration; and
Policing of the mark on the Federal Register.
The USPTO also maintains the Supplemental Register, on which users can register descriptive marks, surnames, geographic terms, and non-distinct trade dress. Registration on the Supplemental Register allows users to police the mark, bring suits in federal court, and use the federal registration symbol. It does not, however, confer a presumption of exclusivity in the mark’s use.
Users may register their mark by filing an application with the USPTO, or may establish prospective rights to a mark by filing an intent-to-use application with the USPTO. In the latter case, the user completes its registration when it shows that the mark is being used in commerce. Regardless of when the registration is completed, the user’s rights to the mark accrue on the date the initial application is filed.
What is the difference between a standard character mark and a stylized mark, and which should I file?
Standard character marks refer to the protected use of a word or words without regard for the way in which the words are presented – so long as the presentation of the mark does not cause confusion with another mark-holder’s stylized mark. In other words, the word or words can be presented in any configuration, font, color, or capitalization style. Axenfeld Law Group generally advises its clients to pursue standard character marks because the protection provided to such marks allows for marks to evolve over time.
Stylized marks are marks that are not for standard characters; they include stylized word marks – words written in a particular font, color, or configuration; stylized graphic marks – illustrations or symbols that function as a mark; and three-dimensional marks – three-dimensional objects, like the shape of a product or the product packaging, that relate the source of the goods to consumers. In some instances, stylized word and graphic marks may be combined in one mark. In those cases, however, only the specific configuration identified in the application will be protected. For this reason, Axenfeld Law Group generally advises its clients to separately pursue word and graphic marks, which allows the two to be used together in any configuration.
What is a trademark search and do I need one?
A trademark search is any action that seeks to identify whether and how a trademark is used in commerce. Trademark searches can vary significantly in breadth and purpose. The primary purposes for conducting trademark searches include: evaluating the likelihood of a successful trademark application; assessing the infringement risk of a mark; evaluating the strength of a particular mark given its other uses in commerce; and informing a user about the scope of its rights in a particular mark. The purpose of the search will impact the type and breadth of the search conducted. A proper searching strategy should consider the mark’s nature, the type of goods and services covered by the mark, the proposed timeline for bringing the mark to commerce, and the resources an applicant has allocated to registering the trademark.
Comprehensive trademark search results allow attorneys to advise applicants about potential issues a mark may face — or a lack thereof — which allows applicants to realistically evaluate the likelihood of an application’s success. Additionally, a search may identify potentially problematic marks and allow applicants to proactively and strategically overcome those issues before applying for a mark. Comprehensive searches also allow applicants to evaluate a mark’s infringement risk because they evaluate all potential avenues for trademark protection, not just the risk of conflict with marks that are federally registered.
Finally, comprehensive trademark searches allow applicants to evaluate the strength of their mark and the scope of trademark protection afforded to a particular mark. Searches that return a high number of similar marks may indicate that a particular mark is weak and its protection may be narrow. Because a comprehensive search allows a trademark user to determine the scope of its rights and, accordingly, can assist a user in determining how to enforce the mark, the utility of a trademark search is not limited to users seeking trademark registration.
Two Types of Trademark Searches: Knock-Out Searches vs. Full Searches
Knock-out searches are often the first step in a trademark search because they determine if a particular trademark application is likely to fail. The term refers to searches of the USPTO Trademark Electronic Search System (TESS) database, which includes both applied-for and registered marks, as well as previously registered marks and abandoned applications. Typically, a knock-out search looks only for uses of the actual mark an applicant is seeking to register, not variations upon it. Accordingly, a knock-out search will identify identical or close matches for a trademark, which will allow an applicant to abandon a mark that is likely to fail before expending large amounts of time or money in the pursuit of the mark. For this reason, applicants may choose to conduct knock-out searches on lists of potential trademarks before narrowing their search to the most viable marks. It is important to remember, however, that a successful knock-out search is not an accurate predictor of an application’s success: a knock-out search is not a comprehensive search of a trademark’s use or availability, and it cannot fully assess the potential infringement risk of a mark.
Full searches are comprehensive searches that evaluate all potential avenues for trademark protection in a particular trademark system. Trademark system refers to all avenues for trademark protection available within a particular country; in some instances, however, a trademark system provides for trademark protection across more than one country. The Office for Harmonization in the Internal Offices (OHIM) in the European Union is one example. A full search should include a search of all trademark systems where the applicant is interested in securing trademark rights. Within each relevant system, the full search should consider all avenues through which trademark rights can arise. In the United States, for example, trademark rights arise from federal and state registrations, as well as from common law use of marks. Thus, in addition to searches of the federal and state registers, a full search must explore all uses of the mark, including uses on the internet and registered business names. Finally, unlike a knock-out search, which only identifies marks that are identical to the one in question, a full search should also identify all similar marks that cover potentially related goods and services.
Full searches are typically conducted by search firms that utilize software programs to run the searches, categorize the results, and compile search reports that provide essential data concerning the marks identified in the search. Because of the breadth of full searches, search reports are often hundreds of pages long, which attorneys then review to narrow the results to include only marks that are actually similar to the prospective trademark, and which cover similar goods and services.
Design mark searches are a third category of searches, which identify similar graphics or stylized fonts that are used in connection with similar goods and services.
How are trademark search results interpreted?
There are two primary objectives when interpreting full trademark search results: 1) assessing the strength of a proposed mark’s rights if it were registered; and 2) determining the infringement risk associated with a proposed mark.
With regard to the former inquiry, we look at the elements of the proposed mark and how common those elements are in the related field, as well as how many similar marks exist for related goods and services. The more common elements or similar marks that exist, the weaker the mark will be.
With regard to the latter inquiry, we assess the potential problems that similar marks may pose to the proposed mark by evaluating each similar mark’s scope of protection. By means of example, RUG COMPANY might conflict with a registered mark for RUG STORE. If, however, there were another registered mark for RUG SHOP, it may indicate that marks using the term “rug” with a word describing the retailer are able to co-exist, which would imply that RUG COMPANY may not have an infringement risk.
How much does a trademark search cost?
A full trademark search includes the cost of a third-party search firm to conduct the search, and an attorney’s time to review the search results and provide a written analysis.
How do you Federally Register a trademark?
In order to register a trademark, users must apply for federal registration with the USPTO. Applications are either considered “actual-use” applications, meaning that the applicant is already using the mark in commerce, or “intent-to-use” applications, where the applicant is not yet using the mark but intends to use it in the future. Filing an intent-to-use application allows a user to secure its rights in the mark at the time the application is filed with the USPTO; however, a mark protected under an intent-to-use application will not register until after the user demonstrates that the applied-for mark is actually being used in commerce.
How much time does it take to Federally Register a trademark?
It depends. The registration process may be completed as quickly as nine months when there are no issues, or may take up to or more than four years. On average, applications take approximately one year to register. There are two stages of the trademark application process: the examination and the publication, which are explained in more detail below. The publication period usually takes around thirty days; however, issues may arise during the examination that impact the overall timeline. For example, when an Examiner identifies an issue, applicants usually have six months to resolve the issue. Likewise, applicant arguments in response to substantive refusals must also be considered by Examiners, which may delay registration. In other cases, a trademark registration may be conditioned upon the timeline for another mark. Delays by the Trademark Office may also contribute to the uncertain timeline of a registration.
What is the USPTO’s process for evaluating a trademark application?
Each application submitted to the USPTO is assigned to a Trademark-Examining Attorney (sometime referred to as an Examiner) who examines the application to decide whether the mark is entitled to Registration. This examination includes a search of other marks to ensure there is no conflict between the prospective mark and those already registered. Depending upon the examiner’s findings, the examiner may issue a refusal to register on the basis of confusion with other marks, or may request amendments to the application, which could include disclaimers, translations, or amendments to the description of goods and services.
What is a substantive refusal of a trademark application?
A substantive refusal is an objection to an application based upon the type mark, which results in a refusal to register the mark. The primary bases for substantive refusals include: likelihood of confusion, lack of distinctiveness, merely informational, disparaging, and deceptively mis-descriptive.
Likelihood of Confusion
A likelihood-of-confusion refusal relies upon other registered marks as the basis for a substantive bar to registration when there are such similarities between the applied-for mark and other registered marks that consumers may be confused. This type of refusal is one of the most common and can be one of the most difficult to overcome.
When evaluating the likelihood of confusion, an examiner looks to sight, sound, and meaning of the mark, as well as to the goods and services covered by the mark. If the goods and services covered by similar marks are related, there is a greater likelihood that the Examining Attorney will refuse to register the mark based on likelihood-of-confusion.
Applicants may attempt to overcome likelihood-of-confusion refusals by responding with arguments that undercut the Examining Attorney’s rationale for the refusal. The arguments typically explain why the marks or the goods and services are not confusingly similar. Applicants may also submit evidence of other trademark registrations that demonstrate the field is already diluted. The success of an applicant’s arguments depends upon the degree of confusion presented. Where there is a nearly identical conflicting mark, overcoming the refusal is more difficult than situations where the examiner’s likelihood of refusal argument is less clear-cut. The examiner reviews an applicant’s arguments and can either withdraw the refusal or reject the applicant’s arguments and issue a final refusal.
Axenfeld Law Group strives to objectively assess a likelihood-of-confusion refusal and appropriately advise its clients concerning the merits of fighting such a refusal.
Lack of Distinctiveness
Trademarks are characterized according to their distinctiveness, of which there are five echelons: generic, descriptive, suggestive, arbitrary, and fanciful. Generic marks are not registerable; descriptive marks can only be registered in certain cases. And suggestive, arbitrary, and fanciful marks can be registered because they are inherently distinctive.
Generic names cannot receive trademark protection because they are actual name of a product or service. The test to determine whether a name is generic is whether the primary significance of the proposed mark to the relevant public is also the product or service’s generic meaning. For example, the mark “Tires, Tires, Tires” was held generic for retail tire services, and “Footlong” for a type of sandwich was held generic for sandwiches. Moreover, a registered trademark that becomes generic may be invalidated. Although applicants may attempt to overcome a refusal on the basis of a generic mark by arguing against the examiner’s evidence, most refusals on this basis have strong support.
Descriptive marks either describe the good or service or a primary feature or function of the good or service. While some descriptive marks are clearly descriptive, like an adjective describing a product, or a generic word like “store,” others acquire descriptiveness over time as a result of being used in connection with certain goods and services. Additional marks that fall into the category of descriptive are geographically descriptive marks, mere laudatory phrases, and surnames. Applicants can overcome a descriptiveness refusal by contesting the examiner’s evidence or by showing that the descriptive mark has acquired distinctiveness. Alternatively, applicants may amend their applications to the USPTO’s Supplemental Register, which provides some trademark rights, but not the important presumption of exclusivity in a mark’s use provided by the Principal Register.
Suggestive, arbitrary, and fanciful marks are considered inherently distinctive. Suggestive marks inform consumers about the goods or services through imagination; for example: GLOW is a suggestive mark for skin care, or ROACH MOTEL for insect traps.
Arbitrary marks consist of common words in linguistic use, but when used with the goods or services they are associated, neither suggest nor describe those goods or services. An example of an arbitrary mark is “AMAZON,” referring to an e-commerce and cloud computing company.
Finally, fanciful marks are coined words that are created solely for the purpose of functioning as a trademark for a good or service, but which are either meaningless in language or totally unfamiliar to the ordinary consumer. Examples of fanciful marks include CLOROX (for bleach), and GOOGLE (for a search engine).
Words or phrases that are merely informational cannot function as trademarks.
Marks that are disparaging, falsely suggest a connection, or bring a person, institution, or national symbol into contempt or disrepute are not registrable with the USPTO.
Marks that include a geographic reference which consumers are likely to believe references the product’s region of origin when it does not are considered deceptively misdescriptive and are not registrable with the USPTO. For example, using the term “Vermont” to describe a cheddar cheese produced in Pennsylvania may be deceptively misdescriptive.
What is a non-substantive refusal of a trademark application?
Non-substantive refusals refer to issues that occur in connection with trademark registration applications that do not relate to the mark itself. Refusals on this basis may made in connection with the description of goods and services, the specimen, or the additional statements made by an applicant in the application. These issues are not typically fatal to an application; however, it is vital to effectively address them in order to satisfy the examiner’s requirements and avoid introduction of additional issues.
Description of Goods and Services
Each trademark application includes a list of goods and services covered by the mark; the description must be categorized in one of forty-five classes and must include a detailed description and enough detail to avoid refusal on the basis of vagueness or lack of clarity. A non-substantive refusal may be issued when a description of goods and services includes improper wording, insufficient detail, or is miscategorized. Such errors are usually remedied by an amendment to the description of goods and services.
All trademark applications must include a specimen of use, which is evidence of the mark in use. The specimen should show the mark in use, and enough visual context that will allow the examiner to conclude that the mark is actually in use in connection with the listed goods or services. If these three elements are not met, the examiner will issue a specimen refusal. An applicant may overcome a specimen refusal by submitting a verified substitute specimen that was in use at least as early as the date on which the application was filed. (For intent-to-use applications, the specimen must have been in use at least as early as the date on which the Statement of Use was filed). Specimens for goods should depcit the mark on the actual good, on a point of sale display, or on materials attached to the good, like a tag, label, product packaging, or instruction manual; marketing or advertising materials are not generally accepted for goods. Marketing or advertising materials may, however, be used as specimens for services; business cards, word product, company letterhead, and invoices are other acceptable specimens of use for services.
Depending upon the circumstances, applicants may be required to include additional statements or information in a registration application. Failure to comply with requirements may result in a non-substantive refusal of the application. These requirements include the following:
- Disclaimer. Applications for non-descriptive marks that include generic or descriptive content must disclaim the descriptive content. In other words, the applicant must state that it will not claim exclusive rights to the disclaimed content.
- Translation. Applications for marks containing foreign language require disclosure of the English translation of that language.
- Additional classes. When the description of goods and services in an application includes goods and services in a class separate from that which was applied for, the description must either be amended to ensure the content of the description falls only within the class applied for, or the application must be amended to add the other classes that apply, which requires additional filing fees.
- Substitute drawings. Applications for logos require high-resolution images and may initially be refused if images of the required resolution are not provided.
- Additional action. For certain types of marks, documentation in addition to the application is required in order to register. Non-traditional marks, for example, like scents, movements, or three-dimensional objects often require additional evidence of distinctiveness, exceptionally detailed descriptions of the marks, or additional drawings.
There are three specific types of marks that require additional documentation:
- Certification marks, which are not actually used by the mark-holder but, rather, are used by third parties to certify that their goods and services comply with standards represented by the mark. Examples include certification of geographic origin, quality standards, or labor standards. Applicants for certification marks must explain how they certify a user’s compliance with the standards the mark represents.
- Trademarks for an individual’s name. If a mark is based upon a living person’s name, signature, or portrait, the application must identify the living person and provide documentation demonstrating the person’s consent to registration of the mark.
- Collective membership marks. Members of certain organizations may use a mark maintained by the organization to show their membership in it. Organizations seeking to register a collective membership mark must explain how the organization controls the use of its mark by its members.
What is the USPTO’s publication process for a trademark registration?
After a mark application has been successfully examined and all issues are resolved, the mark is published in the Trademark Official Gazette. The date of publication initiates a 30-day period for third parties to oppose registration of the mark. If a third party determines that registration of the published mark will impact their rights, the third party may either attempt to resolve their issues with the applicant or file an opposition proceeding.
Should a third party feel that the 30-day opposition period is insufficient for them to properly investigate and/or resolve their issues, the third party may file for an extension of the opposition period, which can extend up to 90 days.
What happens to a trademark application at the conclusion of the opposition period?
Following the opposition period and resolution of any issues identified during that period, in-use applications will proceed to registration; intent-to-use applications will receive a Notice of Allowance. A Notice of Allowance approves a trademark for registration pending the applicant’s completion of a Statement of Use, which demonstrates that the mark is being used in commerce.
Statements of Use must include specimens showing the mark in use and must state the date on which the mark was first used in commerce anywhere, as well as the date on which the mark was first used in commerce in the United States. The first date of use for goods is the earliest date on which the applicant sold and fulfilled its goods in the ordinary course of business. The first date of use for services is the earliest date on which the mark was used in connection with the services being rendered by the applicant.
Applicants are required to file a Statement of Use within six months of the date on which the Notice of Allowance is issued. If an applicant will not meet the six month deadline, the applicant may file an extension to file the Statement of Use, which extends the deadline by an additional six months. Extensions will be granted in six month increments for a maximum of three years past the date of the Notice of Allowance.
How much does it cost to register and maintain a trademark?
The cost of registering and maintaining a trademark varies based upon a number of factors. There are application fees that apply to all trademark applications and maintenance fees that apply to all registered trademarks. Additional examination and allowance fees may apply depending upon a particular trademark’s path. In addition to fees owed to the USPTO, legal fees accrue in connection with the preparation of filings.
Trademark application filing fees are based upon the categories, known as international filing classes, into which goods and services fall. Currently, the fee for an online trademark application is $275 per class. Applicants may qualify for a reduced fee of $225 per class if they utilize a USPTO pre-approved description of their goods and services. At Axenfeld Law Group, the attorney fees associated with the preparation and filing of an application typically bring the total cost of a trademark application to between about $525 per class. This includes up to 30 minutes of attorney consultation by phone, and a trademark search and opinion letter.
Additional fees may arise during the examination period if an applicant is required to resolve issues with the application. In most cases, issues that arise are non-substantive and relatively inexpensive — several hundred dollars or less — to resolve. Substantive refusals of trademark applications can be much more costly to challenge, however, because they often require thoughtful and persuasive legal arguments. Typically, the fees to prepare a response to a substantive refusal are between $450 and $3,000.
Notice of Allowance Fees
Trademark registration applications that are filed on an intent-to-use basis do not result in registration of the mark until the applicant files a Statement of Use in response to a Notice of Allowance. As discussed above, applicants must either file a Statement of Use within six months of receiving a Notice of Allowance, or file an extension. Applicants may continually extend the deadline in six-month periods so long as the Statement of Use is filed within three years of the date on which the Notice of Allowance was issued. The fee for filing a Statement of Use is $100 per class, and the fee for filing an extension is $150 per class. In addition, attorney fees will accrue for the costs of preparing each filing.
Following initial registration of a mark, registrants must periodically submit filings and pay fees to the USPTO to maintain the mark’s registered status. The first filing is due between the fourth and fifth year after registration: registrants must submit a Section 8 Declaration of Use, which demonstrates that the mark is still being used in commerce. The fee for filing a Section 8 Declaration of Use is $100 per class. At the same time, registrants also have an option to file a Section 15 Declaration of Incontestability, which costs $200 per class to file. A second Section 8 affidavit and a Section 9 renewal are required to be filed between the ninth and tenth year following registration. The fees for filing a Section 9 Renewal are $300 per class for online renewals and $400 per class for paper submissions. From that point forward, registrants are required to submit the Section 8 and 9 documents every ten years.