CONSIDERATIONS FOR TRADEMARK APPLICATIONS
Gary M. Schuster, Esq. Partner, J&G Law, LLP gms@jglaw.law
Gary M. Schuster, Esq. Partner, J&G Law, LLP gms@jglaw.law
INTRODUCTION
A “trademark” is a word, phrase, symbol or design placed on a product or the packaging or advertising for a product. The purpose of a trademark is to distinguish the goods of the trademark owner from the similar or competing goods of others In addition to trademarks, there are “service marks,” which are used in connection with services rather than products. Services include things like construction, transportation, advertising, medical care, and accounting or legal services The word “mark” applies to both trademark and service marks. The most common marks are words and graphic designs, but colors, sounds, shapes and even scents can qualify as trademarks
Applying for a federal trademark is often as much art as science There are numerous considerations which are listed below. If possible, discuss all these considerations before you invest in labels, packaging, advertising, promotional materials, and the like
SEARCH
It is vital that before an applicant makes a substantial investment in the mark, the applicant conduct a search for similar, conflicting or prior marks. There are professional search firms that conduct very thorough searches at very reasonable prices. Professional advice should be sought in analyzing the meaning of the search results and the advisability of using and applying to register a mark
Unfortunately, the search conducted by the Trademark Office, in the course of its examination of the application, cannot be relied on. The Trademark Office has been known to make mistakes and register marks in instances where a third party, not found by the Trademark Office or the applicant, had superior rights to the mark. The later user, even though it was the owner of a registered trademark, had to cease using it, destroy packaging and advertising and promotional materials, create and implement a new mark, and pay damages and legal fees. The value of a thorough search cannot be understated
USE AS A TRADEMARK
The mark must be used as a trademark That is, it must identify the source of the goods or services, which is to say, the manufacturer, producer, or service provider. It must identify the brand of the goods or services. Labels and packaging often contain other material which may be described as informational, functional or decorative Those are not trademarks, even if they appear on every package A trademark must identify the source and be a symbol of the brand.
GROUNDS FOR OBJECTION
There are numerous reasons why a proposed trademark will be objected to or rejected, including the following:
a Mark is confusingly similar to another mark already in use.
b Mark contains the name of a real person without the person's consent.
c Mark is primarily merely a surname.
d. Mark is geographically misleading (erroneously suggests the goods come from a certain place, i e , Napa Valley, Bordeaux)
e. Mark does not function as a trademark (e g , is informational, functional or decorative)
f. Mark is immoral or scandalous
g Mark disparages a person, institution, belief or national symbol
h Mark is a flag, coat-of-arms or other insignia of a nation, state or municipality.
i. Mark is a generic terms of the goods, such as the “Apple” brand of apples.
j. Mark is merely descriptive Marks are “merely descriptive” when they “immediately convey” the ingredients, characteristics or qualities of the goods or services. Since the mark describes the goods, it cannot distinguish the goods of one producer from those of competitors. Two familiar examples are “Holiday Inn” and “Rent-A-Center”. Although these two marks are descriptive, they may have been accepted for registration on the basis of having acquired “secondary meaning,” described below
INTERSTATE COMMERCE
Registration of a trademark with the Patent and Trademark Office is permitted only if the trademark or service mark (“mark”) is used in interstate commerce. That means the goods or services have been sold or offered for sale across state lines If you have a website for your goods or services, that is generally sufficient. If not, you need to swear in an affidavit that you sold the goods or services in a state other than your own. It would be prudent to have proof to back up this sworn statement such as a sales receipt or the like.
DATE OF FIRST USE OF INTERSTATE COMMERCE
The application requires the date that the mark was first used in interstate commerce. Interstate commerce is described above. You do not need to show proof, but you should have some proof of the date you are claiming It could be the date you first sold something, or the date you opened a store, or the date you started a business It will depend on your circumstances and should be discussed
DATE OF FIRST USE ANYWHERE
The application requires the date that the mark was first used anywhere This is contrasted with the date of first use in interstate commerce Use anywhere can be within a state.
CLASSES
The Trademark Office has designated classes of goods and services applicable to marks. A separate application is required for each class of goods and services for which registration is sought The Trademark Office will assign the class if the applicant does not know it
DESCRIPTIONS
Every application also requires a specific description of the goods or services for which registration is sought. The Trademark Office has a large number of pre-written descriptions for common goods and services. If the pre-written description is not adequate, the applicant can prepare its own However, with a customized description, the application fee is higher because the Trademark Office has to spend more time reading and considering the description
BASIS OF APPLICATION
There are two bases for registering a mark with the Trademark Office.
ACTUAL USE
“Actual Use”, where the applicant has actually been using the mark in interstate commerce In this instance the applicant must disclose the date the mark was first used in commerce anywhere, and the date the mark was first used in interstate commerce In addition, the applicant must submit a specimen” showing the mark used directly on the goods, or on labels, packaging, trade dress or the like. With respect to goods, showing use of the mark on stationery, business cards and advertising is not sufficient, although it may be with respect to services. Submitting specimens is generally done by taking digital photos and uploading them to the Trademark Office website. A successful “actual use” application results in a formal registration of the mark with a registration certificate and number
INTENT TO USE
It is also possible to apply for a federal registration prior to actually using the mark in commerce. This is called the “intent to use” basis This is valuable because an applicant wants to be certain it will own the mark before investing heavily in manufacturing and advertising and promotional materials A successful “intent to use” application results in a “Notice of Allowance,” giving the applicant six months in which to file a sworn Statement of Use As in the actual use application, the Statement of Use contains the date the mark was first used in interstate commerce and requires submission of a specimen. If the Statement of Use is accepted, the formal registration certificate and number will issue. Extensions of time may be requested, giving the applicant up to three years in which to file the Statement of Use. If the Statement of Use is not timely filed, then the application is deemed abandoned and the applicant must start over again
DRAWING
The application requires the submission of a drawing of the mark The mark must also be described in words.
a Word(s) Only. Some marks are comprised only of one or several words, without a graphic or design element. Words are called the “literal” element of the mark There are two possibilities here
(i) Block Lettering Words without a specialized font are referred to having block lettering When a mark is registered in block lettering, registration covers all possible fonts.
(ii) Special Fonts. Words that are registered with specialized fonts are more limited. Protection is only afforded to that particular font.
b. Graphic Only. A graphic, without any words, can also be registered as a trademark Graphics are referred to as the “design” element of the mark It must be submitted as a JPG image file with a range between 250 and 944 pixels, in any direction The applicant must declare whether colors are a permanent part of the mark or may change.
c. Words and Graphic. Some marks contain both words and graphics. The applicant must decide whether to register the entire mark, or to separately register words and graphics.
SPECIMENS
The application requires the submission of a specimen of the mark. A specimen is a real-life sample of how you are actually using your mark with your goods or services in the marketplace (e g , on your product packaging or website). It is not the same as the drawing of the mark. A specimen is generally what consumers actually see when they are purchasing your goods or services. Specimens are photographs of the goods, and each photo should be less than 5 megabytes.
PRINCIPAL OR SUPPLEMENTAL REGISTER
a Federal registration is primarily on the Principal Register, which offers a number of advantages for the trademark owner including:
(i) Prima facie evidence of the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services designated in the registration.
(ii) A legal, rebuttable presumption that the registrant is the owner of the mark
(iii) Constructive notice of the claim of ownership of the mark.
(iv) Listing of the mark in the Trademark Office’s online database.
(v) The ability to record the mark with Customs and Border Protection to stop the importation into the United States of infringing or counterfeit goods
(vi) The right to bring an action in federal court for infringement of the mark.
(vii) The ability to use the registration as the basis for a trademark application in many other countries/jurisdictions.
(viii) The right to use the “registered” (®) symbol with its mark when the mark is used on or in connection with the covered goods and/or services
(ix) The possibility that the mark may become incontestable after five years of registration
(x) Provisions for treble damages, attorney's fees, and various other remedies.
PRINCIPAL OR SUPPLEMENTAL REGISTER CONTINUED
b. It is possible to seek registration on the Supplemental Register if the applicant believes the mark is not yet qualified for the Principal Register, or if the Trademark Office rejects an application for the Principal Register and gives the applicant the option to amend the application to the Supplemental Register.
(i) A mark must actually be used in commerce at the time the applicant seeks registration on the Supplemental Register. Marks not in use may not be registered on the Supplemental Register
(ii) Like a registration on the Principal Register, a registration on the Supplemental Register (i) entitles the owner to use a notice of federal trademark registration, such as the ® symbol;(ii) gives the owner the right to bring a trademark infringement suit in federal court, along with a claim of unfair competition; and (iii) can be cited by a Trademark Office examining attorney against a later-filed application to register a confusingly similar mark for related goods/services, even on the Principal Register
(iii) Once a mark on the Supplemental Register acquires “secondary meaning,” also referred to as “acquired distinctiveness,” (generally 5 years) a new application can be made for the Principal Register.
(iv) Secondary meaning arises when a nondistinctive mark becomes known to consumers as an indication of source for particular products or services as a result of the mark’s longterm and extensive use The exact amount of use needed to demonstrate that a mark has achieved secondary meaning varies depending on the mark’s level of descriptiveness and consumer perception of the mark, but a presumption of secondary meaning may arise after five years of substantially continuous and exclusive use of a mark in commerce
TIME AND PROCEDURE
a The most rapid and trouble-free trademark registration will take six to eight months from application to registration. More troublesome applications can take years
b. When an application is submitted, it is immediately given a serial number and application date, and is assigned to an Examining Attorney at the Trademark Office. However, the application will not be examined for several weeks
c. Once the examination begins, the Examining Attorney will review the application, as well as the specimen to de- termine that the mark is being properly used. The Examining Attorney will search the records of federal and state trademark offices, dictionaries, business directories, the internet and other sources to determine the meaning of the mark, whether confusingly similar marks are already in use, and whether the mark is objectionable for any of the reasons listed above If the Examining Attorney has questions or reasons for objecting to registration, the Examining Attorney generates an “Office Action” which is sent to the applicant or the applicant’s attorney. The Office Action is usually issued 45 - 90 days after the application date The applicant then has six months in which to respond to the Office Action If no response is submitted within that time, the application will be deemed abandoned There is a procedure for reviving an abandoned application within a specified period, for good cause shown and on payment of a fee. If there is no good cause, or the request is made too late, an entirely new application will have to be filed
d. After a response to an Office Action is submitted, the Examining Attorney can issue another Office Action, and the applicant can respond, and this can go back and forth for some time If the Examining Attorney issues a “final refusal”, the applicant can appeal to the Trademark Trial and Appeal Board. A trial within the Trademark Office is held If the applicant is dissatisfied with the ruling of the Trademark Trial and Appeal Board, the applicant can bring a lawsuit in federal court.
e If the Trademark Office finds no basis for objection to registration of the mark, the mark will be published in a Trademark Office publication, the Official Gazette This publication allows the public a 30-day period in which to review and object to marks that are scheduled for registration. If no objections are received, then the registration will be issued, and the applicant will receive a formal certificate of registration with a registration number and date. If objections are received, then the objection procedures must be followed. Those procedures are beyond the scope of this document
Brief Overview.
The foregoing is a brief overview of trademarks. As with anything in the law, there are more rules, more details, and exceptions to the rules. Someone considering applying for registration of a mark should seek the advice of legal counsel with experience in the field.
