Trademark
Law
Overview of the U.S. Trademark
Registration Process
The first-ongoing users of marks and those who intend to use them in the
immediate future may register them with the U.S. Patent & Trademark
Office (USPTO) and obtain valuable additional rights and evidentiary points
of law in any subsequent litigation over the mark, including:
(1) use of the symbol ®
with the mark has the effect of giving constructive notice to possible
infringers and thereby satisfying the notice requirement for recovery
of damages against the infringer (for non-federally registered or common
law marks, one would typically uses the symbols TM and SM to give actual
notice),
(2) relief from having to provide
evidence on the issue of ownership and the exclusive right
to use the mark throughout the U.S., except in an area where another,
prior to the applicant's filing date, was using and may continue to use
a confusingly similar mark, and (3) the starting of a five-year clock
towards the incontestability of marks that are merely descriptive or primarily
a surname. The evidentiary value of the mark's registration should not
be under-estimated, since in many trademark disputes it can be practically
dispositive in favor of an outcome beneficial to the registered trademark
owner.
Trademark Litigation Fees
Administrative hearing or litigation with attorneys' fees are up to $125.00
to $300.00 per hour.
Trademark Registerability Search
It is possible for one to proceed with a trademark registerability search
and to then continue on to apply for the trademark registration without
the assistance of counsel. Although the rules for the trademark application
are somewhat complicated, many trademark registrations have been obtained
by applicants who represent themselves before the USPTO. Nonetheless,
many applicants choose to pay an attorney to represent them in the entire
trademark registration process, especially if there is, as is often the
case, any concern of a confusingly similar mark.
Electronic trademark searches
There are many electronic means for performing trademark searches. Unfortunately,
there are not yet any free-of-charge, comprehensive trademark searching
resources on the Internet. However, one can get some preliminary feedback
for a word that is proposed for use as a trademark by doing a word search
with one of the large search engines that are directed at commercial activities,
such as Yahoo's Product and Services Directory at http://www.yahoo.com/Business
and Economy/Products and Services/. <http://www.yahoo.com/Business
and Economy/Products and Services/>
Trademark searches are often conducted by either online searches with
commercial databases or by obtaining comprehensive trademark searches
from recognized trademark search firms such as Thomson & Thomson.
A number of online trademark databases are available, including those
of Dialog, Compuserve and Questel/Orbit. Additionally, a number of companies
have set up sites that permit doing trademark searches through a web interface,
these include:
(1)Micropatent's Trademark Checker: www.micropat.com/indextm2.html
(2) TMWeb: www.tmweb.com
(3) Trademarks Online: www.trademarksonline.com/tm.html
It should also be noted that such searches can be very useful for other
business purposes. For example, before selecting a company name, a similar
type of freedom-to-use search would allow one to knowledgeably select
between alternative, potential company names (all of which might be acceptable
to the state agency that regulates corporations -- they only check to
avoid identical corporate names in the state, not for likelihood of confusion
issues) in order to avoid another's trademark or risk the possibility
of inviting a lawsuit. In many such situations, it is probably advisable
for the accused infringer to give up and use some other company name,
even though it means the loss of any accumulated goodwill in the name.
If an attorney is involved in the trademark registration process, he/she
will perform the registerability search and prepare an opinion letter
based on the search results, especially those that may raise an issue
regarding a commercially confusing mark.
Registerability search and
the preparation of an opinion letter attorney's fee
Are $400.00 to $1,500.00, depending on the number of
databases searched and whether one is searching for words, logos, etc.
to be used as trademarks or service marks).
Preparation of the Trademark Application
There are two types of federal trademark applications:
1. Intent to use application
2. Statement of use application.
If one is already using the mark in interstate commerce,
a statement of use application should be filed, citing the date of first
use. If one has not yet begun using the mark, but is planning to adopt
and use the mark in the future, one may file an intent to use application.
A trademark will not be officially registered, however, until the mark
is actually in commercial use and the period for this to occur is limited,
thus one cannot "reserve" a trademark for an indefinite period
of time.
The application must contain at least:
1. The name and address of the applicant
2. A copy of the mark
3. The designated International Class or Classes
4. A statement of the type of goods and/or services represented
by the mark.
A statement of use application must also contain the
date of first use and specimens of the mark as actually used in commerce.
Additionally, the applicant must sign a declaration that to the best of
his/her knowledge no other entity has the right to use such proposed mark
or any near resemblance to it such that the proposed use would yield commercial
confusion. In many instances, it may prove helpful for the applicant to
have the advice of counsel before signing such a declaration.
USPTO filing fee
For the USPTO to examine a trademark registration application, a required
filing fee of $245.00 per class must be paid at the time the application
is submitted. (Typical legal fees for filing a trademark registration
application and its supporting documentation are $200.00 to $1,000.00,
depending upon the complexity of the proposed mark).
The Examination Process: USPTO examiner
After the application has been filed with the USPTO, it will be assigned
to a trademark examiner. The examiner will check the application to make
sure that it is in proper order, and will also compare the mark with registered,
unregistered and pending marks. Initially, the examiner must determine
whether the proposed mark in the application is likely to be confused
with a similar mark having a superior claim to the use of the mark.
If the examiner can find no similar marks, he/she must then determine
whether the mark falls within certain excluded categories, including those
which: (a) are scandalous (e.g., defecating greyhound for T-shirts), immoral
or a generic name by which particular products or services are known (e.g.,
"Furniture Barn" for furniture retailer), (b) consist of the
insignia of government entities, (c) identify, without consent, a living
individual, (d) are merely descriptive (Note for domain name users: "Skinvisible"
for a type of bandage was registered because running the words together
made it a fanciful/coined word) or misdescriptive of a trait or feature
of the goods or services or their place of origin, or (e) are primarily
a surname (note: "Hutchinson Technology" for electronic components
was registered because the addition of "Technology" made it
not merely a surname) - unless those in the (d) and (e) categories have
taken on secondary meaning after five years of use and therefore do serve
to identify the source. Examples of marks that came to be registered after
having taken on secondary meaning include: Steinway pianos, Parker pens,
Burger King, Park N' Fly and General Electric. The best marks are always
those that are arbitrary or fanciful, even thought it might take the marketplace
longer to associate the goods or services with their owners.
OFFICE ACTION
When the examiner has made his/her initial registerability determination,
the USPTO responds by sending the applicant what is known as an "Office
Action" containing its determination and the reasons for it. If the
Office Action contains a rejection of the registration and there exist
arguable grounds for contesting the examiner's determination, one typically
files a "Response," usually in the form of an Amendment, to
overcome the rejection. There are usually only two Office Actions and
Responses before a final determination is made by the examiner as to the
proposed trademark's registerability. If this determination is detrimental
to the applicant's interests, it can be appealed -- a time consuming and
expensive process. (Typical legal fees for responding to Office Actions
are $500.00 to $3,000.00, depending upon the complexity of the arguments).
Publication - Notice of Pending Registration
and Period for Public Opposition
After the examiner agrees that it appears that the proposed trademark
is entitled to registration, the trademark application will be published
in the Official Gazette of the USPTO for opposition. This publication
begins a thirty day period during which anyone upon payment of the prescribed
$200.00 fee may file with the USPTO a formal opposition to the proposed
registration, if he/she believes that he/she would be harmed by registration
of the proposed mark. This results in a formal, trial-like opposition
proceeding before the USPTO's Trademark Trial and Appeal Board, which
will determine the respective rights of registration.
Allowance of Unopposed Marks
If no opposition was filed and the application was based upon actual use
of a sufficiently distinctive mark in commerce prior to approval for publication,
the USPTO will register the mark on its Principal Register (Note: Marks
that were rejected as descriptive can be registered on the USPTO's Supplemental
Register until they acquire secondary meaning; the benefits of this include:
notice to others of your claim to the mark, USPTO won't subsequently register
another's confusingly similar mark, and allows you to use ® with your
mark which can give it the appearance of more authority) and issue a registration
certificate about three months after the date the mark was published.
If, on the other hand, the mark was published based upon the applicant's
statement of having a bona fide intention to use the mark in commerce
and no opposition is filed, the USPTO will issue a contingent Notice of
Allowance. The applicant then has six months from the date of the Notice
of Allowance to either (1) use the mark in commerce and submit a Statement
of Use along with its $100.00 filing fee or (2) request a six-month extension
of time to file a Statement of Use. Further extensions of time may be
available, if necessary. When the Statement of Use is approved, the USPTO
will then issue the registration certificate. The total period of the
unopposed, trademark registration process typically averages eight months
to more than one year.
Maintenance of Marks
A federal trademark registration can last forever if the mark is correctly
(i.e., its owner must prevent others from using the mark in such a manner
as to lessen its value for identifying the owner's products or services)
and continuously used, and if the required renewal applications and fees
($300.00 per class) are filed every ten years (Note: Those registered
before 11/16/89 don't have to be initially renewed until twenty years
after their initial registrations). Additionally, one can make it harder
for others to challenge the validity of his/her mark after it has been
on the Principal Register and uncontested for five years. This is accomplished
by the filing, between the fifth and sixth year since the mark's registration,
of an affidavit of continued use. This act serves to elevate the mark's
validity to the status of being statutorily "incontestable."
Despite the terminology, the statute actually reveals that the mark's
validity is still quite contestable -- but it is harder, since the challenger
is limited to only a few, very specific grounds upon which to base the
challenge.
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