 |  |  |  |  |  |  |  |  |  |  |  |  |
Trademarks
EGBERT LAW OFFICES, PLLC
What are Trademarks (TM) and Service Marks (SM)?
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one
manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A service mark is
any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services
provided by others, and to indicate the source of the services. Trademark and service marks are identical, the names only changing in reference to what is being
protected by the mark., ie, a good or service.
How Are Trademarks Protected?
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in
commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration. However, there are many benefits of
receiving a federal trademark registration. A federal registration is administered by the United States Patent & Trademark Office.
For a party to establish that it has superior rights to a mark based on the party's prior use of that mark, the party must present evidence demonstrating adoption of the
mark and, second, evidence of use of the mark in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as
those of the adopter of the mark.
The use in commerce principle means that a party's receipt of a state corporate charter or assumed name (d/b/a/) registration will neither create protectable rights
enforceable against a prior user nor provide a defense in an infringement action. Only use of the mark in commerce will establish rights in a trademark.
Do I Have To Register My Trademark?
No, but federal registration has several advantages, including nationwide notice to the public of the registrant's claim of ownership of the mark, jurisdiction of federal
courts may be invoked for infringement actions, the registration can be used as a basis for obtaining registration in foreign countries, registration may be filed with U.S.
Customs Service to prevent importation of infringing foreign goods, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in
connection with the goods or services set forth in the registration.
Do I Need A Trademark Availability Search?
The most important step you should take before using a mark for your business is to conduct a search of the trademarks already in use, and determine whether your
proposed mark would infringe any of those prior marks. Failure to take this step could lead to a lawsuit and relinquishment of all your profits, payment of the other party's
attorneys fees, and complete loss of your trademark. Egbert Law Offices can assist you in conducting a trademark availability search.
How Do You File A Federal Trademark Application?
You can file the trademark application using the Trademark Electronic Application System (TEAS) available at http://www.uspto.gov/teas/index.html, where you can file
your application directly over the Internet, or you can have an experienced trademark attorney prepare the application on your behalf.
How Much Does It Cost To File A Federal Trademark Application?
For current fees for trademark applications and amendments, please see the current USPTO Fee Schedule at http://www.uspto.gov/web/offices/ac/qs/ope/. Fee
increases, when necessary, usually take effect on October 1 of any given year. The current fees for trademark applications are $325 per class.
What Types Of Trademark Applications May Be Filed In The U.S?
What Constitutes Interstate Commerce?
For goods, "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services,
"interstate commerce" involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations,
hotels, etc.).
What Is A Proper Trademark "Specimen" Of Use?
A specimen is an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services. This is not the same as the
drawing of the mark, which merely represents what you are claiming as the mark.
-Specimens for Goods: Normally, a specimen for a mark used on goods shows the mark on the actual goods or packaging for the goods. You may submit a tag or
label for the goods; a container for the goods such as a box or bottle; a display associated with the goods such as a sign or rack; or a digital photograph of the goods
that shows use of the mark on the goods. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards
generally are NOT acceptable specimens for goods.
-Specimens for Services: A specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit
a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a
photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e.,
not just a display of the mark itself. For example, if the mark sought to be registered is "XYZ," a business card that only shows the mark "XYZ" would not be acceptable.
A business card that states "XYZ REAL ESTATE" would be acceptable.
Importantly, digital images or scans of all specimens in either .jpeg or .pdf format are now acceptable for submission to the USPTO.
What Happens After The Trademark Application Is Filed?
If the application is not successfully opposed, the USPTO will issue:
Does The Examining Attorney Search For Conflicting Trademarks?
Yes. After an application is filed, the assigned Examining Attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists
between the mark in the application and another mark that is registered or pending in the USPTO.
The principal factors considered by the Examining Attorney in determining whether there would be a likelihood of confusion are: the similarity of the marks, and the
commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the
goods and/or services related. If a conflict exists between your mark and a registered mark, the Examining Attorney will refuse registration on the ground of likelihood of
confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the Examining Attorney will notify you of the
potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.
How Long Does It Usually Take For A Federal Trademark Application To Mature To Registration?
If no substantial objections are encountered or oppositions lodged, it generally takes 12 to 18 months for registration to issue for an actual-use application.
Is A Federal Trademark Registration Enforceable Outside Of The United States?
No. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in
any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the he International Bureau of the World
Property Intellectual Organization, through the USPTO. Also, certain countries recognize a United States registration as a basis for filing an application to register a
mark in those countries under international treaties. The laws of each country regarding registration must be consulted.
How Long Does A Federal Trademark Registration Last?
For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2)
within the year before the end of every ten-year period 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, with payment of an additional fee. The registrant must also file a §9 renewal application within the year before the end of every ten-year period
after the date of registration, or within a grace period of six months after the expiration date, with payment of an additional fee.
Assuming that an affidavit of use is timely filed, registrations have a 10-year term and are renewable indefinitely as long as the mark remains in use in commerce and
the renewal applications are timely filed.
Are There Any Rules For Using My Trademark?
Yes, when using your trademark always keep in mind that the mark is a symbol representing your company's reputation or "good will." Trademarks are one of the most
valuable assets to a company and should be protected as one would any other valuable item.
A trademark should always be used as an adjective, and never as a noun. For example, use "I want an ACME soda" not "I want an ACME." A trademark is a particular
brand of a product, not the name of the product itself. If this rule is violated, you risk the public coming to regard your trademark as the generic name of the product or
service, in which case it will no longer distinguish your products and services from those of others, and it will not be entitled to protection as a trademark due to
becoming generic. In the past, former popular trademarks such as aspirin and escalator have suffered the fate of becoming a generic term for their respective goods.
Also, we should dispel a common misconception: Trade names and trademarks are simply not interchangeable. Although many companies use their trade names as
trademarks, trade names by themselves are not trademarks. In order for a trade name to function as a trademark it must be used in connection with the goods and
services.
You should always identify your mark as a trademark or service mark by marking using:
Marking of a trademark may serve a number of important purposes including:
A trademark should stand out from the surrounding text. This can be accomplished by using ALL CAPITAL LETTERS, bold face type, Initial Capital Letter, italics or, a
unique font.
Avoid all variations. Variations on a trademark can signal to the consuming public that improper usage is okay. It is not prudent to allow spelling changes,
abbreviations, plurals, or apostrophes with the trademark, or to combine it with other words or marks.
Generally, it is not necessary to mark every occurrence of a trademark in an advertisement or other promotional materials but, at a minimum, this identification should
occur at least once in each piece of printed matter, either the first time the mark is used or with the most prominent use of the mark.
Never give permission to use the trademark to a third-party without consulting your trademark attorney. Giving permission to a third party to use a mark without first
having that party sign a written license can result in the loss of rights to a trademark.
What Happens If My Trademark Application Is Opposed?
Once your application is approved for publication, the application will be published for opposition. During this 30-day period, anyone who may be injured by the
registration of your mark may file an opposition to the registration with the PTO's Trademark Trial and Appeal Board. Please review our information regarding
Trademark Oppositions and Cancellations if your application is opposed.
What Happens If I Receive A Petition To Cancel My Trademark Registration?
A petition for cancellation may only be filed after the issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be
damaged by the registration" of the mark. Please review our information regarding Trademark Oppositions and Cancellations if you receive a petition for cancellation.
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one
manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A service mark is
any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services
provided by others, and to indicate the source of the services. Trademark and service marks are identical, the names only changing in reference to what is being
protected by the mark., ie, a good or service.
How Are Trademarks Protected?
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in
commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration. However, there are many benefits of
receiving a federal trademark registration. A federal registration is administered by the United States Patent & Trademark Office.
For a party to establish that it has superior rights to a mark based on the party's prior use of that mark, the party must present evidence demonstrating adoption of the
mark and, second, evidence of use of the mark in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as
those of the adopter of the mark.
The use in commerce principle means that a party's receipt of a state corporate charter or assumed name (d/b/a/) registration will neither create protectable rights
enforceable against a prior user nor provide a defense in an infringement action. Only use of the mark in commerce will establish rights in a trademark.
Do I Have To Register My Trademark?
No, but federal registration has several advantages, including nationwide notice to the public of the registrant's claim of ownership of the mark, jurisdiction of federal
courts may be invoked for infringement actions, the registration can be used as a basis for obtaining registration in foreign countries, registration may be filed with U.S.
Customs Service to prevent importation of infringing foreign goods, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in
connection with the goods or services set forth in the registration.
Do I Need A Trademark Availability Search?
The most important step you should take before using a mark for your business is to conduct a search of the trademarks already in use, and determine whether your
proposed mark would infringe any of those prior marks. Failure to take this step could lead to a lawsuit and relinquishment of all your profits, payment of the other party's
attorneys fees, and complete loss of your trademark. Egbert Law Offices can assist you in conducting a trademark availability search.
How Do You File A Federal Trademark Application?
You can file the trademark application using the Trademark Electronic Application System (TEAS) available at http://www.uspto.gov/teas/index.html, where you can file
your application directly over the Internet, or you can have an experienced trademark attorney prepare the application on your behalf.
How Much Does It Cost To File A Federal Trademark Application?
For current fees for trademark applications and amendments, please see the current USPTO Fee Schedule at http://www.uspto.gov/web/offices/ac/qs/ope/. Fee
increases, when necessary, usually take effect on October 1 of any given year. The current fees for trademark applications are $325 per class.
What Types Of Trademark Applications May Be Filed In The U.S?
- An actual use-based application (1a) may be filed if the applicant is using the mark in U.S. commerce stating the date the mark was first used and providing a
specimen for each class of goods and services evidencing this use.
- An intent-to-use application (1b) may be filed if the applicant has a genuine intent to use the mark in the U.S. in the future; however, the mark will not be registered
until the applicant proves use via an Amendment to Allege Use or Statement of Use.
- A Section 44 priority application (44d) may be filed by an applicant who has a genuine intention to use the mark in commerce and who has applied to register the
mark in the applicant's country of origin.
- A Section 44 application (44e) may be filed by an applicant who has a genuine intention to use the mark in commerce and who registered the mark in the
applicant's country of origin. The applicant will have to submit a copy of the foreign registration to the USPTO.
- A Section 66 application may be filed via the Madrid Protocol. This type of application is filed via an extension of protection from an International Registration with
the World Intellectual Property Organization ("WIPO").
What Constitutes Interstate Commerce?
For goods, "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services,
"interstate commerce" involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations,
hotels, etc.).
What Is A Proper Trademark "Specimen" Of Use?
A specimen is an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services. This is not the same as the
drawing of the mark, which merely represents what you are claiming as the mark.
-Specimens for Goods: Normally, a specimen for a mark used on goods shows the mark on the actual goods or packaging for the goods. You may submit a tag or
label for the goods; a container for the goods such as a box or bottle; a display associated with the goods such as a sign or rack; or a digital photograph of the goods
that shows use of the mark on the goods. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards
generally are NOT acceptable specimens for goods.
-Specimens for Services: A specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit
a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a
photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e.,
not just a display of the mark itself. For example, if the mark sought to be registered is "XYZ," a business card that only shows the mark "XYZ" would not be acceptable.
A business card that states "XYZ REAL ESTATE" would be acceptable.
Importantly, digital images or scans of all specimens in either .jpeg or .pdf format are now acceptable for submission to the USPTO.
What Happens After The Trademark Application Is Filed?
- Most applications will be reviewed by an Examining Attorney 6 to 9 months after filing. The Examining Attorney reviews the application to determine whether it
complies with all applicable rules and statutes and includes all required fees. A complete examination includes a search for conflicting marks, and an examination
of the written application, the drawing, and any specimen.
- The USPTO may issue an Office Action requiring clarification of certain information or objecting to registration of the mark. The applicant must respond to the
Office Action within 6 months of its mailing or email date or the application will be abandoned. Some Office Actions may be resolved by a telephone conversation
with the USPTO; others will require a written response.
- After the application has passed examination, the USPTO will publish the mark in the Official Gazette to allow interested parties to oppose the application.
If the application is not successfully opposed, the USPTO will issue:
- A Certificate of Registration for an actual use or foreign registration based application; OR
- A Notice of Allowance for an intent-to-use application. An applicant has 6 months from the mailing date of a Notice of Allowance to either file a Statement of Use
or a request for extension of time to file a Statement of Use. Either document requires a per class filing fee. A maximum of 5 timely filed extensions will be
granted for a total of thrity-six months after the issuance of the Notice of Allowance. Once the USPTO accepts a Statement of Use, it will issue the Certificate of
Registration in due course.
Does The Examining Attorney Search For Conflicting Trademarks?
Yes. After an application is filed, the assigned Examining Attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists
between the mark in the application and another mark that is registered or pending in the USPTO.
The principal factors considered by the Examining Attorney in determining whether there would be a likelihood of confusion are: the similarity of the marks, and the
commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the
goods and/or services related. If a conflict exists between your mark and a registered mark, the Examining Attorney will refuse registration on the ground of likelihood of
confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the Examining Attorney will notify you of the
potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.
How Long Does It Usually Take For A Federal Trademark Application To Mature To Registration?
If no substantial objections are encountered or oppositions lodged, it generally takes 12 to 18 months for registration to issue for an actual-use application.
Is A Federal Trademark Registration Enforceable Outside Of The United States?
No. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in
any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the he International Bureau of the World
Property Intellectual Organization, through the USPTO. Also, certain countries recognize a United States registration as a basis for filing an application to register a
mark in those countries under international treaties. The laws of each country regarding registration must be consulted.
How Long Does A Federal Trademark Registration Last?
For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2)
within the year before the end of every ten-year period 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, with payment of an additional fee. The registrant must also file a §9 renewal application within the year before the end of every ten-year period
after the date of registration, or within a grace period of six months after the expiration date, with payment of an additional fee.
Assuming that an affidavit of use is timely filed, registrations have a 10-year term and are renewable indefinitely as long as the mark remains in use in commerce and
the renewal applications are timely filed.
Are There Any Rules For Using My Trademark?
Yes, when using your trademark always keep in mind that the mark is a symbol representing your company's reputation or "good will." Trademarks are one of the most
valuable assets to a company and should be protected as one would any other valuable item.
A trademark should always be used as an adjective, and never as a noun. For example, use "I want an ACME soda" not "I want an ACME." A trademark is a particular
brand of a product, not the name of the product itself. If this rule is violated, you risk the public coming to regard your trademark as the generic name of the product or
service, in which case it will no longer distinguish your products and services from those of others, and it will not be entitled to protection as a trademark due to
becoming generic. In the past, former popular trademarks such as aspirin and escalator have suffered the fate of becoming a generic term for their respective goods.
Also, we should dispel a common misconception: Trade names and trademarks are simply not interchangeable. Although many companies use their trade names as
trademarks, trade names by themselves are not trademarks. In order for a trade name to function as a trademark it must be used in connection with the goods and
services.
You should always identify your mark as a trademark or service mark by marking using:
- the words "Registered in U.S. Patent and Trademark Office"; or
- the abbreviation "Reg. U.S. Pat. & Tm. Off."; or
- a superscript ® symbol for a federally registered trademark or service mark; or
- a superscript TM or SM symbol for an unregistered trademark or service mark.
Marking of a trademark may serve a number of important purposes including:
- Providing notice of the owner's claim to ownership of the mark;
- Distinguishing the mark from surrounding text or graphics;
- Distinguishing the mark from another owner's trademark when the two marks appear together on products, packaging or promotional materials;
- Directing the consumer to a notice that identifies the trademark owner, thereby reinforcing the public's association of mark with the owner.
A trademark should stand out from the surrounding text. This can be accomplished by using ALL CAPITAL LETTERS, bold face type, Initial Capital Letter, italics or, a
unique font.
Avoid all variations. Variations on a trademark can signal to the consuming public that improper usage is okay. It is not prudent to allow spelling changes,
abbreviations, plurals, or apostrophes with the trademark, or to combine it with other words or marks.
Generally, it is not necessary to mark every occurrence of a trademark in an advertisement or other promotional materials but, at a minimum, this identification should
occur at least once in each piece of printed matter, either the first time the mark is used or with the most prominent use of the mark.
Never give permission to use the trademark to a third-party without consulting your trademark attorney. Giving permission to a third party to use a mark without first
having that party sign a written license can result in the loss of rights to a trademark.
What Happens If My Trademark Application Is Opposed?
Once your application is approved for publication, the application will be published for opposition. During this 30-day period, anyone who may be injured by the
registration of your mark may file an opposition to the registration with the PTO's Trademark Trial and Appeal Board. Please review our information regarding
Trademark Oppositions and Cancellations if your application is opposed.
What Happens If I Receive A Petition To Cancel My Trademark Registration?
A petition for cancellation may only be filed after the issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be
damaged by the registration" of the mark. Please review our information regarding Trademark Oppositions and Cancellations if you receive a petition for cancellation.
Copyright © 2005-2007 Egbert Law Offices, PLLC, All Rights Reserved Legal Disclaimer
