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TRADEMARKS

 

WHAT IS A TRADEMARK OR SERVICE MARK

• A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms "trademark" and "mark" refer to both trademarks and service marks.

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DO TRADEMARKS, COPYRIGHTS AND PATENTS PROTECT THE SAME THINGS?

No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention.

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IS REGISTRATION OF MY MARK REQUIRED?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,

  • constructive notice to the public of the registrant's claim of ownership of the mark
  • a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration
  • the ability to bring an action concerning the mark in federal court
  • the use of the U.S registration as a basis to obtain registration in foreign countries; and
  • the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

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WHEN CAN I USE THE TRADEMARK SYMBOLS TM, SM AND ®?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark , and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

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WHAT DOWS THE USPTO DO?

The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. We do not decide whether you have the right to use a mark (which differs from the right to register). Even without a registration, you may still use any mark adopted to identify the source of your goods and/or services. Once a registration issues, it is up to the owner of a mark to enforce its rights in the mark based on ownership of a federal registration.

USPTO employees will gladly answer questions about the application process. However, USPTO employees cannot:

  • conduct trademark searches for the public;
  • comment on the validity of registered marks;
  • answer questions on whether a particular mark or type of mark is eligible for trademark registration; or
  • offer legal advice or opinions about common law trademark rights, state registrations, or trademark infringement claims

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REQUIREMENTS FOR FILING

Basis for Filing
The application should include your "basis" for filing. Most U.S. applicants base their application on their current use of the mark in commerce , or their intent to use their mark in commerce in the future.

What is "use in commerce"?
For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.
If you have already started using the mark in commerce, you may file based on that use. A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimin showing use of the mark in commerce.

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WHAT HAPPENS AFTER I FILEMY APPLICATION?

Legal and Procedural Review of Application
After the USPTO determines that you have met the minimum filing requirements, the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes and includes all required fees. Federal registration of trademarks is governed by the Trademark Act of 1946, 15 U.S.C. §1051 et seq. , and the Trademark Rules of Practice, 37 C.F.R. Part 2.

A complete examination includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office action, the applicant's response to the Office action must be received in the Office within six months of the mailing date of the Office action, or the application will be declared abandoned.

If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO.

Does the examining attorney search for conflicting marks?
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 USPTO will not provide any preliminary search for conflicting marks before an applicant files an application . 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.

Can I search for conflicting marks before filing?
Yes. You should search the USPTO records before filing your application to determine if any party is already claiming rights in a particular mark. You may conduct a search online at http://tess2.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk , or by visiting the USPTO Trademark Public Search Library at 2900 Crystal Drive, 2 nd Floor, Arlington, Virginia. The library is open between 8:00 a.m. - 5:00 p.m., Monday through Friday. Both on-line searching and use of the Public Search Library are free.

Additionally, registered and pending trademarks may be searched at a Patent and Trademark Depository Library (PTDL). PTDLs are located throughout the U.S. See http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html for a listing of their locations, or Private trademark search firms will conduct a search for a fee. A listing of search firms can be found in the Yellow Pages of local phone directories or through an Internet search. The USPTO cannot assist you in selecting a search firm.

You can check the status of any pending application or registration through the Trademark Application and Registration Retrieval (TARR) database, available on-line at http://tarr.uspto.gov. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199 (or (703) 308-9000 if you live in Northern Virginia) to request a status check.

Are there other reasons the examining attorney might refuse my mark?
Yes. In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the mark is:

  • primarily merely descriptive or deceptively misdescriptive of the goods/services;
  • primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods/services;
  • primarily merely a surname; or
  • ornamental.

This is not a complete list of all possible grounds of refusal. See Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP), available at http://tess2.uspto.gov/tmdb/tmep/ , for a complete discussion of the grounds for refusal of registration of a mark.

PUBLICATION FOR OPPOSITION
If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette , a weekly publication of the USPTO.

The USPTO will send a NOTICE OF PUBLICATION to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. If no opposition is filed or if an opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.

CERTIFICATE OF REGISTRATION OR NOTICE OF ALLOWANCE
If the mark is published based upon the actual use of the mark in commerce, on a foreign registration under section 44 of the Trademark Act, or on an extension of protection of an international registration to the United States pursuant to section 66(a) of the Trademark Act, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published.

If the mark is published based upon the applicant's bona fide intention to use the mark in commerce, the USPTO will issue a NOTICE OF ALLOWANCE about twelve (12) weeks after the date the mark was published, if no party files either an opposition or request to extend the time to oppose. The applicant then has six (6) months from the date of the NOTICE OF ALLOWANCE to either:

  • use the mark in commerce and submit a STATEMENT OF USE; or
  • request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE.

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MAINTAINING A FEDERAL TRADEMARK REGISTRATION

Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times. In general, the owner of a registration must periodically file:

• Affidavits of Continued Use or Excusable Nonuse under 15 U.S.C. §1058; and
• Applications for Renewal under 15 U.S.C. §1059.

Forms for filing these documents are available at http://www.uspto.gov/teas/. For further information on maintaining a federal trademark registration, please contact the Post Registration Division at (703) 308-9500.

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