Trademark Lawyers

A trademark is a source identifier – such as a word, logo, catch phrase, and even sometimes a sound, color, or scent. Many people consider trademarks and brands to be synonymous. While this is not entirely true, there is large overlap between the two terms. Trademarks benefit of the consumer, whereby they can determine what company is providing the goods and/or services – also known as a “source identifier”.

Federal registration of a trademark with the USPTO (United States Patent and Trademark Office) provides a number of benefits, including: (1) presumption of validity, (2) presumption of ownership, (3) right to exclusive use, (4) enforcement through federal law, and (5) a basis for international registration and trademark protection.

A state trademark is a mark filed with a state’s secretary of state and in most cases, provides a presumption of validity. The rights extend only to that particular state in which it is registered. Unlike federal trademarks, state trademark applications are usually not reviewed and tend to be rubber-stamped. Most state laws are based upon federal trademark statutes.

A federal trademark requires a registration of the trademark at the USPTO (United States Patent and Trademark Office). A federal trademark registration provides exclusive use to the mark and allows one to prevent the federal registration and use of a confusingly similar mark anywhere in the US.

A common law trademarks exists in the geographic region in which a mark is used in commerce. The Lanham Act provides enforcement of distinctive common law trademarks in state and federal court. The common law trademark must still meet certain federal requirements, such as being a legal use in commerce.

TM is usually used on an unregistered logo, name, phrase, word, or design to show that there are common law rights in the mark are claimed. The TM mark does not mean that the owner’s mark is protected under trademark law; the owner can even continue to use the TM symbol even if a trademark application has been refused. Usually, the TM mark is used to indicate the company’s belief that they have a valid trademark and want to put people on notice of this this belief, but the mark itself has no legal meaning.

The United States Patent and Trademark Office (USPTO) is an agency belonging to the Department of Commerce. It was formed in 1975, though the type of work it does stretches back to the founding of the United States. It issues patents for inventions and issues trademark registrations for goods and services. The USPTO maintains a permanent historical record for all U.S. patent applications. The USPTO also coordinates with the European Patent Office and the Japan Patent Office and serves as a coordinating entity for patent applications filed under the Patent Cooperation Treat (PCT). The USPTO is unique in that it is not funded by taxpayer dollars, but by fees for its services. In fact, many administrations divert a percentage of the fees generated by the USPTO into the general treasury.

A trademark applicant firsts perform a clearance search of any confusingly similar trademarks at the USPTO’s Trademark Electronic Search System (TESS). The search needs to go beyond just identical marks and look at any trademark that is likely to cause consumer confusion. This is a fact-based search that can take years of experience to perfect. Synonym, similar spelling, and similar sounding syllables may all come into play. In addition, the applicant should also look at common law uses, as trademarks used in commerce will have senior use in the geographic regions it is used in commerce. This can restrict the usage of a new trademark and may reduce its commercial value.

A trademark application must includes a list of the goods and services that are used or have a bona fide intent to use. Trademarks can be filed in a total of 45 classes of goods and services, although one rarely files in more than two to four classes for the desired trademark protection. The International Classes (Nice Classification) were established in 1957 by the Nice Agreement.

Trademark classes are a way for the USPTO to organize the goods and services used in applications, assess fees, and aid in searching the database for registered and pending trademarks.

A “filling basis” is the basis that one files when registering for their mark. Each filing basis has different requirements that must be met before a trademark or service mark may proceed toward registration.

One may select from four possible basis to select during filing:

1. 1(a) Basis: Actual Use in Commerce
2. 1(b) Basis: Intent-to-Use in Commerce
3. 44(d) Basis: Foreign Application
4. 44(e) Basis: Foreign Application

1(a) Basis: Actual Use in Commerce

A section 1(a) filing basis means that one must actually be offering the goods and services listed in the trademark application. Forming the corporation or purchasing the web domain is not enough to qualify, but rather the sales of products and goods must already be in selling. If the applicant prematurely claims a 1(a) basis, the registration may be canceled based on fraudulent or incorrect statements made during the application process.

1(b) Basis: Intent-to-Use in Commerce

In order to claim a 1(b) filing basis, the applicant must have the intent to use the trademark in commerce. This is important because it allows the business to reserve the rights even before the product hits the market.

In the context of a trademark, “use” or “use as a trademark” under the 1946 Lanham Act means use the trademark to identify the source of the goods or services being offered. The way that the trademark is displayed in association with particular goods and/or services communicates to the consumer who is the source. Over time, as consumer consistently see the same trademark used for the same product or service, they come to associate the trademark with the company. Mere artwork or marketing text does not create the same association in the minds of consumers and is therefore unable to function as a trademark, i.e. as a source identified.

Examples of Trademark Use:

• Marquee signage
• Product packaging
• Menus and other consumer-facing product lists
• Shipping manifests
• Online retail page
• Clothing tags

Not a trademark “use”

• Product descriptions
• T-shirt artwork
• Domain names
• Corporate entity registration
• Tradename or DBA registration (A trademark and a tradename have little in common)
• Ornamental use

Application Steps:

If you decide that registering your trademark is the right move for you, here are the steps of how to apply for a federally registered trademark.

Step 1: Search and Clear:

Before filing for trademark protections, make sure to check if the mark can be registered. So, it is important to search for other companies who may have already registered a similar mark. From there, assess whether the mark meets the other requirements for registration with the USPTO.

Step 2: Prepare the Trademark Application

This step will require the applicant to prepare all of the necessary materials to ensure complete registration including: addresses, legal entities, drawing of the mark, a description of the mark, a list of goods and services covered by the application, the basis, the dates of first use of the mark, a specimen if applicable, a verified statement or declaration and the require fees.

Once these steps have been completed, then an application cam be filed!

Step 3: File the Trademark

To file, the applicant will use the Trademark Electronic Application Systems (TEAS). There are two TEAS filing options to choose from: Plus, and Standard. The Plus is the cheaper option, but it has more requirement. While the Standard is more expensive, this application allows the applicant to create a custom description for the goods and services. Talk to your attorney or give us a call to determine what application is best for your needs.

Upon receiving a trademark application, the USPTO examiner will need to determine if the trademark is eligible for registration. If the mark is deemed ineligible for registration, or the examiner feels like there needs to be addition information before reaching a decision, the applicant will receive an Office Action. An applicant and an attorney will work together to draft a response to traverse the issues raised by the examiner

Step 4: Mark is Published

Assuming that the application is approved by the examiner, the trademark will then be published in the USPTO’s Official Gazette, an online publication. The Official Gazette is the official journal of the USPTO which includes bibliographic information and representative drawing for each patent granted or trademark published on that issue date. There is a 30-day period where any party may oppose the registration. If there is an opposition filed, then there will be a court-like proceeding.

If there are no oppositions filed, then the USPTO will register the mark and issue the applicant a certificate of registration so long as the applicant a use-based application to confirmed.

Step 5: Maintenance

Congratulations! You may start using your mark! Remember to renew your trademark registration. A trademark registration will expire if the proper declarations are not filed, at 5 and 10 year increments.

It is the applicant’s responsibility to keep an eye out on their trademarks and similar marks. The applicant can file for an opposition during the timeframe after a trademark has been published in the Official Gazette. Or the applicant can send out a cease-and-desist letter, if applicable. Failure to do so could either led to acceptance, making it almost impossible to take any legal measures later. The existence of a similar mark will weaken the brand and cause confusion in the marketplace.

Trademarks are intended to inform consumers of who the source of a product or service is. Infringement occurs whenever more than one source of goods or services uses trademarks that are either the same, or so confusingly similar that it might confuse consumers about who is who and what products came from which source. This sometimes presents as directly as counterfeit goods, but many infringement disputes result form only partial overlapping words or images. In any infringement dispute the key considerations are whether or not the competing branding is likely to confuse consumers and who has seniority to use the trademark.

Some URLs are trademarks, but not all. Initially, a URL is merely a digital address, a piece of internet real estate that you own and where you can display information. To make your URL a trademark, you would need to “use” it as a trademark… which means to use it as the source identifier for your goods and services. What matters is show you use your URL: is it your trademark or its your address? Well known URL trademarks include GoDaddy.com ® and Bookings.com ®  

Each trademark application claims ownership over the trademark as it appears in the application. So, an application for the word “McDonald’s” does not include a claim to the image of the golden arches. Likewise, registration of only the image of the golden arches does not include the word “McDonald’s.” To protect both, McDonald’s Corporation has registered trademark ownership of both.

Descriptive trademarks (legally, “merely descriptive marks”) are just that: only descriptive. This usually means the mark merely describes the goods or services it is used to identify. Because the purpose of trademarks is to help the consumer identify the source of goods or services, a mark merely describing what it is or does is not actually a trademark at all. Descriptive marks are weak and provide llessprotection. 

A company trying to register “Hot Pizza,” for example, would find little success because, as a general rule, pizza is served hot. Additionally, if issued, the holder of the Hot Pizza mark could try to stop other pizzerias from using the term “hot pizza,” which would be unduly limiting to businesses and unhelpful to consumers.

Using descriptive marks is a legal and time-honored tradition in business but they are not afforded the same level of protection.

Generic words are not trademarks. Generic words identify products and services in the broadest terms. The simplest generic words are nouns used in common communication. Terms like “coffee,” “cars,” “paper,” or “computers” are all examples of generic words. While some generic words can be used as part of a registered trademark, the words themselves will not be protected.

If an application is based on “use in commerce” or “intent to use” basis, then it is required to submit a specimen. A specimen is an illustration of how the trademark applicant is actually using the trademark in commerce. A specimen may consent of a picture of a label, tag, packaging material etc. which shows the trademark. Specimens should not be confused with a drawing as a drawing show what the trademark is and the specimen is proof of the use in commerce requirement. When the USPTO requires an applicant to submit a specimen, there must be one specimen for each class or goods or services.

The purpose of a trademark is to give consumers information about a logo, name, or brand so they may identify and distinguish between goods or services. When submitting a specimen in the trademark application, the examining attorney determines whether consumers would perceive your phrase or pattern as a design for your good, rather than the brand name. In order words, the USPTO believes your mark is “ornamental” or a design for the goods because of the way it is portrayed on the submitted specimen.

Your trademark is the most important intangible asset your business will ever own. Investing in a poor trademark can entangle you in legal disputes and shunt your marketing efforts. How does your company create a trademark that distinguishes it from competition and stands out in a crowd?