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The information you obtain through this page, site, and/or any of of social media accounts is provided to help the general public and current clientele understand the in’s and out’s of the trademark registration process and the basics of trademark law.
Please note that all information provided on this page and on this Website is for educational, informational, and entertaining purposes only and is not, nor is it intended to be legal advice. You should seek the counsel of a trademark attorney to assist you with any legal questions that are specific to your matter. You should not rely upon any information contained on this account for legal advice. You should consult an attorney for advice regarding your individual situation. We invite you to contact us and welcome inquiries! Be advised that contacting us does not create an attorney-client relationship. Read More
Dis·claim·er /disˈklāmər/ noun
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What is a Trademark?
Trademarks are typically words, phrases, symbols, and/or designs that are used as source identifiers for particular products. Service marks are the same as trademarks, except that they are used as source identifiers for particular services. However, both trademarks and service marks are commonly referred to simply as “trademarks” or “marks.” BUT...Other Materials may be Eligible such as:
LOGO ( McDonald's Golden Arches),
SLOGANS (I'm Loving It OR Just Do It),
SIGNATURE SERVICES (Big Mac, McFlurry, Happy Meal)
COLORS (the robin’s egg blue of a Tiffany box),
SOUNDS (NBC’s chimes),
CHARACTER (Mickey Mouse), and
PRODUCT PACKAGING, also known as “trade dress” (Coca-Cola’s fluted bottle).
The purpose of trademark law is to aid consumers in identifying and differentiating between brands, as well as to protect the trademark owner’s goodwill and reputation. Preventing third parties from using another’s trademark, or a mark that is confusingly similar assures consumers that the products or services offered under the subject mark will be the same or similar to those that they have purchased from that producer in the past. Thus, trademark law seeks to protect against consumer confusion in the marketplace.
A common misconception is that having a trademark means you legally own a particular word or phrase and can prevent others from using it. However, you don’t have rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services.
For example, let's say you use a logo as a trademark for your small woodworking business to identify and distinguish your goods or services from others in the woodworking field. This doesn't mean you can stop others from using a similar logo for non-woodworking-related goods or services.
Another common misconception is believing that choosing a trademark that merely describes your goods or services is effective. Creative and unique trademarks are more effective and easier to protect. You will learn more about strong trademarks below.
What are the Different Types of Trademarks?
*Please note that all the examples given here are registered Conventional and Non-Conventional Trademarks. They belong to their rightful trademark owners and have been quoted only for the sole purpose of educational and explanation purposes.
Word mark (or slogan)
U.S. Reg No: 1508297
U.S. Reg No: 1530904
U.S. Reg No: 6030951
U.S. Reg No: 5794674
U.S. Reg No: 5467089
U.S. Reg No: 4623610
2d Still Images
U.S. Reg No: 3598848
U.S. Reg No: 2359351
2d Moving Images
U.S. Reg No: 2793439
American Express' hologram for the surface of its credit card
U.S. Reg No: 3,045,251
U.S. Reg No: 4242307
U.S. Reg No: 3361597
U.S. Reg No: 3896100
U.S. Reg No: 2775235
U.S. Reg No: 4277914
Many may be surprised to see that trademark rights can cover such a wide array of subject matter, however while various marks have managed to qualify for trademark protection, various other marks also have failed to qualify. By far the most important requirement for trademark protection is that the trademark be “distinctive.” It's important to make sure you are selecting a distinctive mark when you are in the trademark selection process.
Which Mark would be consider as a "Stylized Mark" ?
A stylized word trademark, generally, include words, letters, and/or numbers that are written in a particular font, configuration, and/or color.
How Do You Select a Trademark?
It is important to select a trademark that is both federally registrable and legally protectable. Not all trademarks are registrable and not all trademarks are enforceable. Under the Abercrombie spectrum, suggestive, arbitrary, and fanciful marks qualify as inherently distinctive and may be protected without a showing that the mark has developed secondary meaning as a designation of source.
Fanciful & Arbitrary
Fanciful trademarks are invented words. They only have meaning in relation to their goods or services. Arbitrary trademarks are actual words that have no association with the underlying goods or services.
A term is suggestive if it requires imagination, thought, and perception to reach a conclusion as to the nature of goods.
A generic term is one that refers or has come to be understood as referring, to the genus of which the particular product is a species.
A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities, or characteristics of the goods.
Descriptive marks do not qualify as inherently distinctive and require a showing of secondary meaning to be protected. Generic marks may not be protected regardless of any showing of secondary meaning.
How to use the Trademark Symbols TM, SM, and ®?
Every time you use your trademark, you can use a symbol with it. The symbol lets consumers and competitors know you’re claiming the trademark as yours. You can use “TM” for goods or “SM” for services even if you haven’t filed an application to register your trademark.
Once you register your trademark with us, use an ® with the trademark. You may use the registration symbol anywhere around the trademark, although most trademark owners use the symbol in a superscript or subscript manner to the right of the trademark. You may only use the registration symbol with the trademark for the goods or services listed in the federal trademark registration.
What are the Different Categories of Trademark Protect?
A registered trademark is a type of trademark that have been registered by the United States Patent and Trademark Office ("USPTO"). Only registered trademarks are permitted to use the ® symbol.
State trademarks are trademarks that have been registered by a state, and not by the USPTO. These trademarks are only valid in the state where they are registered. State trademarks use the ™ symbol.
Common Law Trademarks
Common law trademarks are trademarks that have not been registered by the USPTO, nor in any state. Common law trademarks use the ™ symbol.
Trade dress is the characteristics of the visual appearance of a product or its packaging and protects all elements used to promote a specific service or product.
What's the Difference Between Owning a Trademark vs. a Registered Trademark?
A person becomes a trademark owner as soon as you start using your trademark with your goods or service. Rights are establish in your trademark only by using it, and those rights are limited. They only apply to the geographic area in which you’re providing your goods or services.
If you want stronger, more comprehensive protection with nationwide rights, you’ll need to apply for a Federal Trademark registration with the United States Patent and Trademark Office. ("USPTO") Although you are not required to register your trademark, a registered trademark provides broader rights and protections than an unregistered one.
What are the Benefits of Having a Trademark Registration?
You gain the right to use the federal trademark registration symbol, ®, with your trademark to show that you are registered with us. This may help deter others from using your trademark or one too similar to yours.
You gain the exclusive right to use the Mark for the goods/services identified on your federal registration.
Your trademark is listed on the USPTO database of registered and pending trademarks. This provides public notice to anyone searching for similar trademarks. They will see your trademark, the goods and services on your registration, the date you applied for trademark registration, and the date your trademark registered.
You gain the right to bring a lawsuit concerning the trademark in federal court.
You gain the legal presumption that you own the trademark and have the right to use it. So, in federal court, your registration certificate proves ownership, eliminating the need for copious amounts of evidence.
You can use your registration as a basis for filing for trademark protection in foreign countries.
A PEACE OF MIND KNOWING YOUR TRADEMARK IS PROTECTED FEDERALLY!
Why is it Important to Hire an Attorney?
Although it is not required for a U.S Domicled company to hire an attroney to file trademark registration, the USPTO strongly encourage applicants to hire a U.S.-licensed attorney who specializes in trademark law to guide them through the registration process. Hiring an attorney not only increases your chances of having a successful trademark registration process, but a good attorney will be able to: conduct trademark clearance searches; provide crucial legal advice; help you enforce and maintain your trademark rights; and represent you at the USPTO's Trademark Trial and Appeal Board.
Conducting a Trademark Clearance Search
According to the USPTO, to determine whether a likelihood of confusion exists, the marks are first examined for their similarities and differences. Note that in order to find a likelihood of confusion, the marks do not have to be identical. When marks sound alike when spoken, are visually similar, have the same meaning (even if in translation), and/or create the same general commercial impression in the consuming public’s mind, the marks may be considered confusingly similar. The similarity in sound, appearance, and/or meaning may be sufficient to support a finding of likelihood of confusion, depending on how related or similar the goods/services are.
The following are examples of marks that would likely be considered similar:
Likelihood of Confusion Example
Although spelled differently, the marks sound alike; i.e., they are “phonetic equivalents.”
The marks look very similar, even though the one on the right uses a stylized font.
The marks are similar because, when the Italian word “fenicottero” is translated into English, it means “Flamingo.”
Because the marks include the same design element, they create a similar overall commercial impression, even though the one on the right also includes words plus the design.
The marks convey a similar general meaning and produce the same mental reaction.
Providing Legal Advice
Lawyers who are licensed to practice in the United States and are experienced in trademark law can advise you on many important legal matters. A lawyer can:
Ascertain and advise you on whether the selected trademark can be protected by law.
They can determine the appropriate application fililng basis for the trademark you are looking to obtain federal protection for.
They will be able to prepare and submit to the USPTO a complete and accurate trademark application that identifies your products and services which includes the ablilty to choose an appropriate sample that shows how your trademark is being used in interstate commerce.
An attorney will be able to legally answer any questions and refusals to register your trademark from the USPTO's examining attorney.
They will also be able to assist you with understand the scope of your trademark rights and how to protect and enforce those rights.
Prepare and submit documents to the USPTO to Maintain your registration.
Keep you updated on any new changes to law and monitor your trademark for future infringements.
Enforcing and Maintaining Trademark Rights
In order to keep your federal trademark registration up to date, you must prove that you are actively using the trademark after registration. The USPTO requires registration holders to periodically submit a renewal declaring that you are still using your trademark in commerce. The USPTO will only send email reminders that the deadline is approaching; the responsibility for tracking the renewal date and submitting the appropriate renewal documents on time falls entirely on the trademark owner.
This is why it's important to have a trademark attoney so that they can keep you up to date on your renewal requirements. However, if you miss the renewal date and six months have passed, your trademark will be cancelled and you will have to go through the trademark application process ALL OVER AGAIN FROM THE BEGINNING. This will also cause you to lose out on all the federal priority established during the previous registration.
Important dates to remember:
Five years after the first registration date, you must file a Section 8 declaration, proof of use, and appropriate filing fees on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for you may file within the six-month grace period following the sixth (6th) anniversary date).
Nine-year after the first renewal you must subsequently file a Section 8 declaration, proof of use, and appropriate filing fees on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the registration, and each successive ten-year period thereafter.
Also, while you properly maintain your trademark, you would need to properly enforce your trademark. Here are a few ways an attorney can help you properly enforce your trademark.
Sending Cease-and-Desist Letters
Monitoring Your Trademark
Filing Opposition/Cancellation Proceedings
Filing Trademark Infringement Litigation
Registering with U.S. Customs and Border Protection
USPTO's Trademark Trial and Appeal Board ("TTAB")
The TTAB is an administrative board that hears and decides adversary proceedings between two parties, namely, oppositions (party opposes a mark after publication in the Official Gazette ) and cancellations (party seeks to cancel an existing registration). The TTAB also handles interference and concurrent use proceedings, as well as appeals of final refusals issued by USPTO Trademark Examining Attorneys within the course of the prosecution of trademark applications.
What is the Trademark Registration Process?
Although each law firm has its own particular process, here is a general overview of how a law firm's process will be if you decided to hire an attorney.
AGAIN, EACH FIRM IS DIFFERENT.
Process Flow Chart
Submit Your Order & Complete Mark Questionnaire
Generally, after a consultation, or a prescreen questionnaire, if a firm determines that you all are a good fit to work together, the firm will send you a link to submit your order. Once you have submitted your order, you will receive a Trademark questionnaire form which will allow the firm to get a better understanding of your proposed Trademark. This questionnaire will also help them be able to conduct a narrow comprehensive search.
Issue of Search Report & Strategy Call
After a firm conducts their particlar trademark comprehensive search, you will be issued a search report and an opinion letter that includes legal analysis, advice, and recommendations on whether your proposed trademark is available to use and/or register in the United States based on the results of our clearance search.
Prepare & Submit Trademark Application w/ USPTO
If you agree to move forward after a review of your proposed trademark search report and opinion letter, the firm, generally, moves forward to file your trademark application.
Issue of Examination Report
Approximately 3-4 months after your application is filed with the USPTO, If the minimum filing requirements are met, the application is assigned to an examining attorney. The examining attorney conducts a review of the application to determine whether federal law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. Approximately 1 month after your application is issued to an examining attorney they will either send...
Comprehensive Search & Analysis
A Trademark Comprehensive Search allows the firm to conduct a search to check your desired trademark against any similar, exact, or phonetic matches; identical results from all trademark classifications on Good/Services; words with a similar prefix, suffix, or infix variations; abbreviations and acronyms.
Your Trademark Is Registered!
If no opposition or extension of time to oppose is filed or if you successfully overcome an opposition, your application will automatically be entered into the next stage of the process. Absent any opposition-related filings, the USPTO generally will issue a registration certificate about 11 weeks after publication, if the application is based upon the actual use of the mark in commerce.
Notice of Publication
Approximately 1 month after approval for publication, your trademark will publish in the OG for a 30-day opposition period. The OG is a weekly online publication which gives notice to the public that the USPTO plans to issue a registration. Parties who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. If an opposition isn't filed then...