Registering a Trademark in the United States of America

Fall 2016 Article

Registering a Trademark in the United States of America

A trademark or a service mark is a word, logo, or slogan that identifies and distinguishes the source of the goods or the services, respectively, of one party from those of another. Companies, either foreign or U.S. entities, should consider registering their trademark in the United States. Why? Here are a few reasons:

1. Protection against future registration of confusingly similar trademarks, as the United States Patent and Trademark Office (“USPTO”) has a duty to (i) cite prior registrations against registration of confusingly similar trademarks, and (ii) refuse their registration to avoid trademark infringement;

2. Providing nationwide notice of ownership of the mark as of the registration date, preventing others from claiming that their subsequent use of the mark was in good faith;

3. Serving as evidence of validity and exclusive ownership of the mark for the goods and services for which a mark was registered;

4. Granting the right to use the ® symbol when the mark is used for the goods and services listed in the registration[1], making the goods and services distinctive and putting competitors on notice that the owner is serious about protecting the trademark;

5. Granting the right to initiate a lawsuit in Federal Court;

6. Providing a basis for foreign registration as to protect the trademark worldwide; and

7. Empowering the U.S. Customs and Border Protection to block imports of goods that infringe on the registered trademark.

I.  HOW TO REGISTER A TRADEMARK

The application may be filed electronically with the USPTO. The forms are available on the USPTO website (http://www.uspto.gov/trademarks-application-process/filing-online).

Trademark Search

If an applicant wishes to submit an application for registration of a trademark with the USPTO, it is recommended to conduct first a trademark search to ensure that the trademark does not infringe upon the rights of an existing registered mark.  A basic search may be conducted on the website of the USPTO by entering the name of your unregistered trademark[2]

While the USPTO database is updated frequently, it is limited only to trademarks registered with the USPTO and does not include the trademarks of another party who may have trademark rights but not federal registration.  These rights, known as “common law” rights, are based solely on use of the mark in commerce within a particular geographic area. Common law rights may be stronger than those based on a registration, if the common law use is earlier than the use that supports the registration. Therefore, applicants may want to consider conducting a more in-depth search. Those searches are more expensive, but they are complete as they analyze the proposed trademark and compare it with pre-existing registered trademarks or common law marks within the same or similar classes of goods or services.

Choose the Trademark Wisely

Not all trademarks are registrable. Trademarks that create likelihood of confusion with pre-existing trademarks will be rejected. The closer is the relationship between the goods or services and the mark, the weaker the mark.

  • Strong Trademarks:

1.      Fanciful and Arbitrary Trademarks: The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks, because they are inherently distinctive. While fanciful trademarks are invented words that cannot be found in a dictionary (i.e., Kodak, Polaroid), arbitrary trademarks are existing words that have no connection with the goods or services that the trademark identifies (i.e., Apple for computers).

2.      Suggestive Trademarks: They are trademarks that do not describe the goods or services represented, but merely suggest a connection or a quality of the goods and services. An example is Jaguar for automobiles.

  • Weak Trademarks:

1.      Descriptive Trademarks:  Those are trademarks that describe the goods or services. These trademarks are considered weaker and the USPTO will deny registration on the Principal Register[3] until they have acquired “distinctiveness”[4] through extensive use in commerce for a period of over five (5) years. Examples may be “Tasty Bread” for bread. 

2.      Generic Trademarks:  generic terms are words used in every-day life, such apple for apply juice. Because other people have the right to use generic terms and trademarking them would be unfair competition toward them, generic trademarks are weak and will not be registered.

Trademark Drawings

Submit a drawing with the application. There are two types of trademark drawings: a (i) standard character drawing, or a (ii) special form drawing or stylized.

1. Standard Character Drawing: This is a trademark composed only of words (the literal element), or numbers.  It is not a design or logo.  In essence, it is just the literal element of the mark.

2. Special Form Drawing: This is the logo or design. If the applied-for trademark consists of a logo or a design, the proper form to select is the special form drawing. Note that even if words are part of the design, the registration only protects the logo or design as a whole, not the words as well.  If applicants wish to protect the literal element as well, they need to submit a separate application for the protection of the words or standard character drawing only and pay the applicable filing fees. 

Black and white or color drawings?  It depends on the protection an applicant wishes to afford to the trademark. The black and white drawing allows the applicant to change the color of the registered trademark in the future, without altering the protection of the trademark in the different color. In the event the applicant wishes to protect the colors of the trademarks as well as features of the trademarks, the color(s) can be changed in the future. However, protection will not be afforded to the trademarks used in a different color from the color indicated in the initial registration because that will be considered a different trademark.  Again, a brand-new application will need to be filed.

Use in Commerce vs. Intent to Use

When filing a trademark application, the applicant must choose a filing basis:

  • Filing Basis 1(a): The trademark is already in use or in the stream of commerce. The applicant will have to indicate the date of first use in commerce and accompany the application with a specimen. A specimen is a sample depicting how the trademark is used in commerce in connection with the goods or services. For example, a picture of a tag or label on the goods. For service marks, a specimen may well be a business sign, a brochure, a webpage, or a business card.
     
  • Filing Basis 1(b):  This filing basis applies to trademarks that are not in use in commerce yet, but there is a bona fide intent to use them in the future. If the application for a trademark under filing basis 1(b) is accepted, the USPTO will issue a Notice of Allowance. Within six (6) months after the issuance date of the Notice of Allowance, either a Statement of Use is filed if the owner has started to use the trademark in commerce, or a request for a six-month extension to file a Statement of Use can be filed. The USPTO allows up to five extension requests. Note that applications for registration filed under 1(b) basis cannot be registered in the Principal Register.

Timing

Once the application is submitted, the USPTO will decide within three (3) to six (6) after the submission date. The USPTO will either accept the application without comments or will issue an Office Action, if it finds the applied-for trademark is descriptive, generic, or creates a likelihood of confusion with pre-existing registered trademarks. If an Office Action is issued, applicants usually must submit an answer or rectify a filing, where possible, within six (6) months.

II.  MAINTAINING A REGISTERED TRADEMARK

Owners should file a declaration of continued use and incontestability of the registered trademark between the fifth (5th) and the sixth (6th) year of the registration date, and a combined declaration of use and/or excusable nonuse application for renewal between the ninth (9th) and tenth (10th) anniversary of the registration and every ten (10) years thereafter.  

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This article is for information purposes only and does not constitute legal advice. The information contained herein may be outdated or incomplete, and shall in no way be taken as an indication of future results. The transmission of this article is not intended to create, nor does its receipt constitute, an attorney-client relationship between preparer and reader. You should not act on the information contained in this article without first seeking the advice of an attorney. Requests for information or insights on the issue discussed in this article may be addressed to Daniela Morrison at daniela.morrison@vallalaw.com.


[1] Unregistered marks may only use the symbol ™

[3] A strong trademark is registered on the Principal Register, which is afforded federal protection. Descriptive trademarks usually end up on the Supplemental Register until they acquire distinctiveness (if used in commerce). Generic marks, as described hereunder, are denied registrations on both registers.

[4] A trademark has acquired distinctiveness or secondary meaning when a consumer associates the trademark with the source of the goods or services (i.e., the company) rather than the product itself.