Trademark FAQ

Role of a Trademark Attorney

Our role has many facets and depends on the needs of the client customer. Some clients are just beginning a business venture and are thinking of developing a product, brand or company name for the first time, or creating a new product line to an existing business. We provide guidance and legal advice to help an applicant select a mark that has the best chance of being registered and will be the easiest to protect over the many years the mark is in force.

Some clients have been using a mark in business for a period of time. After developing customer good will in the company name, brand name, logo or product name, they wish to protect the investment they have made and prevent late-comers (“copycats”) from encroaching on their market share and the good will created in the mark.

Some clients have been using a mark and have received a communication that there is some potential problem in using the mark. They may need counseling on what they can do to avoid creating consumer confusion with the other mark.

Some clients have a mark registered in the U.S. or another home country and seek to an international trademark registration pursuant to the Madrid Protocol. Our office can file international applications for U.S. clients based on U.S. trademark registrations. We can also assist in the prosecution of the U.S. national phase of Madrid Protocol applications through the World Intellectual Property Organization where the U.S has been named as a designated country where protection is sought.

Some clients need advice on developing a trademark protection program to learn how to properly use their mark on products, advertising, websites and other materials. In some cases, clients require counseling on how to properly let others use the mark (distributors, retailers, other websites, etc.) without negative effects upon their trademark rights and ability to protect the mark.

These are a few of the many services we can provide to clients.

What information is included in a trademark application?

  1. Applicant’s name
  2. Name and address for correspondence (usually the attorney’s firm address)
  3. Depiction of the mark (the “drawing”)
  4. Description of goods or services for which the mark will be used
  5. Application filing fee
  6. Basis for filing (usually actual use in commerce, bona fide intent to use in commerce, or based on a foreign or international application)
  7. Specimen (an actual example of how you are using the mark in connection with the identified goods and/or services, usually a digital image of the mark such as a product label, advertisement, business card, or pamphlet describing the goods or services)
  8. Signature (usually an electronic signature of the Trademark Attorney)

How long does filing a trademark application take?

Once our office has all of the required information, we can usually file an application within one week. For an expediting fee, we can usually file an application within 48 hours from receipt of all of the necessary information.

Who can be an applicant?

The trademark application should be filed in the name of the owner of the mark. The owner can be an individual, a corporation, a partnership, a limited liability company or other legal entity.

Do I have to be a citizen?

No, but if the owner does not reside in the U.S., a domestic representative in the U.S. must be appointed as part of the application process. Our office may serve in this role.

How must I format the drawing of the mark?

Most applications are filed electronically. The requirements for electronic images are .jpg format. If color is included as a feature of the mark, a color claim must be included naming the colors that a claimed as a feature of the mark and a separate statement describing where the colors appear on the mark.

Paper copy images should be prepared on letter sized (8” x 11”) white paper that is non-shiny. The mark can be no larger than 3.5” x 3.5 inches or 8 cm x 8 cm. The drawing page should include a heading with applicant’s name, correspondence address, listing of goods and/or services and dates of use or words “intent to use.” The mark should appear below the heading in the center of the page. If applicable, a statement “The mark is presented in standard character format without claim to any particular font style, size or color.”

The domestic representative is a person upon who notices or process may be served for proceedings affecting the mark. This address must be kept up to date with the Trademark Office.

Can I change the mark once it is submitted?

Once filed, no material changes can be made to the mark. That application can, however, be abandoned and a new application can be filed on the revised mark.

Can I change the goods or services after filing my application?

You can clarify or limit the goods and/or services. However, you may not expand or broaden the identification of goods and/or services after filing the application.

How do I describe my goods and/or services?

When specifying the goods and/or services, use clear, concise terms, common commercial names and language that the general public will easily understand.

Our office will work with you to develop this description if you need our assistance. (There is no additional charge.) Sometimes we can help suggest language that may save up to $50 in filing fees!

What is “use in commerce”?

For the purposes 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 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.

What is “bona fide intent to use in commerce”?

If you have not yet used the mark in commerce, but plan to do so in the future, you may file a trademark application based on a good faith intention to use the mark in commerce. YOU DO NOT NEED TO USE THE MARK BEFORE YOU FILE THE APPLICATION. However, you must begin actual use of the mark in commerce, and submit a specimen showing such use, before the U.S. will place the mark on the Register.

An “intent to use” application must include a sworn statement that you have the good faith intent to use the mark in commerce.

Specimens for Goods

Normally, a specimen for a mark used with goods is an image of the goods showing the mark, the packaging, a container, or a display used in association with selling the goods.

Actual products are NOT accepted by the trademark office; rather a photograph or digital image is submitted.

Invoices, announcements, order forms, bills of lading, brochures, publicity releases, letterhead and business cards are NOT acceptable specimens for goods.

Specimens for services

A specimen for a service mark must show the mark used in the sale or advertising for the services. These may include

  • A sign
  • A brochure about the services
  • An advertisement for the services
  • A business card or stationery showing the mark in connection with the services (a business card showing “XYZ” alone would not be sufficient, but a business card showing ‘XYZ” Real estate would be acceptable)
  • A photograph showing the mark as used in rendering or advertising the services

Other specimens

Some marks, such as sound marks, require submission of a videotape, audiotape, CD or computer diskette. Our office will work with applicants to identify the best specimen in these circumstances.

What happens after I file my application?

The Trademark Office reviews the application to determine that you have met the minimum filing requirements. If you have, the application is forwarded to an examining attorney. This generally takes several months. The examining attorney reviews the application to determine if it complies with all of the required rules and statutes and includes all of the required fees. A complete examination includes a search for conflicting marks (liklihood of confusion), an examination of the drawings and written application, and any specimen submitted if the application is based on actual use in commerce.

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’s attorney (if one is used) by telephone or e-mail and make an Examiner’s Amendment based upon an agreement reached between the two regarding the proposed corrections or amendments.

If the examining attorney sends an Office Action, the applicant’s response must be received in the Trademark Office within six (6) months of the mailing date of the Office Action or the entire 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 of the Trademark Office.

Search for conflicting marks by the examining attorney

The examining attorney will search for pending or registered marks that may be confusingly similar with applicant’s mark. Factors considered by the examining attorney in making this determination include the similarity of the marks and the commercial relationship between the goods and services listed in the application. To find a conflict, the marks do not have to be identical and the goods or services need not be the same, they can merely be related.

If a conflict exists between applicant’s mark and a registered mark, the examining attorney will refuse registration on the ground of liklihood of confusion. If the refusal is based on a pending application, the examining attorney will notify applicant of the other mark, but a refusal will ultimately be issued if the earlier filed application is ultimately registered.

Other reasons an examining attorney may refuse registration of a mark

In addition to liklihood of confusion, other reasons mark are refused for registration include marks that are primarily merely descriptive or deceptively misdescriptive of the good or services, primarily geographically descriptive or primarily geographically deceptively misdescriptive of the goods or services, primarily a surname or ornamental. This is not a complete list of reasons, but the ones most often encountered by applicants.

Publication for Opposition

Once the examining attorney issues a notice or allowance or raises no objections to registration, the application is approved by the examining attorney for publication in the Official Gazette, a weekly publication of the United States Patent and Trademark Office. The publication is available online for review each week.

The Trademark Office will send a Notice of Publication to the applicant’s attorney (if one is used) stating the date of publication. When it publishes, a party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file an opposition of a request for an extension of time to oppose. An opposition is similar to a proceeding in federal court, but it is held in the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A certificate of registration will issue for applications based on actual use or a notice of allowance will issue for intent to use applications. This generally happens within about 12 weeks of publication.

Filing an Allegation or Statement of Use

For applications based on intent to use, a statement or allegation of use must be filed. The allegation is filed prior to publication and a Statement is filed after the Notice of Allowance within six months and includes a digital image of the mark being used in commerce with each class of goods or services identified in th application and payment of $100 per class of good or services upon which the mark is based. An extension of time may be sought to extend the time to file this with a fee of $150 per class of goods or services. Failure to do one of these will cause an application to be declared abandoned. No more than 36 months may pass after the issuance of a notice of allowance and the filing of the statement of use. No further extensions are possible.

Maintaining a registered mark on the federal register

In order to keep a mark in force on the register, periodic filings are required. These include affidavits of continued use or excusable nonuse and applications for renewal. Generally, these are required at the 5 year mark, the 10 year mark, and every 10 years thereafter. The fees generally range around $300-$00 per class of good or services.

Other optional filings such as an affidavit of incontestability may also be filed. Fees are similar to those described above. In theory, a mark may continue as long as it is used in commerce in connection with goods and services identified in the application. It may continue for more than a century, well beyond protections offered by patent and copyright law in most cases.

Translate legalspeak “secondary meaning” into English!

Simply put, it means consumer recognition. It is necessary to gain trademark protection of descriptive marks and can be established by period of sales, use and advertising. In other words, purchasers associate the mark with a single source – they know it is a brand from some business. Ask yourself, when they hear the term or see the mark, do they think of your company or product?

It’s all in the name…

There is a general right to use your name as a merchant except to the extent secondary meaning has been established by another. Personal names are descriptive marks unless not primarily a surname. In other words, look in dictionary. Does the word have a recognized meaning other than as your surname? Consider, for example,

  • Bird
  • White
  • Tiger
  • London

Don’t you think of an animal, place or color rather than a surname?

What is there is another merchant with the same surname? Courts favor allowing use of names. They will strive to find a balanced approach to the respective right when possible. Courts may insist on limitations such as size of lettering or disclaimers to prevent consumer confusion. They may allow for example, “Allen Richard Smith Accounting”, and “A.R. Smith Accounting Associates of Rochester.”

Location, location, location

Geographic related terms can be registered in many cases. The mark will be classified as descriptive if the geographic area is known for the product. Think, for example, about Idaho potatoes, Florida oranges or Washington State apples.

A mark can not be deceptively misdescriptive. For example, since consumers know Florida is known for oranges, a business in Michigan cannot protect the mark “Florida oranges.” Consumers would be misled. A U.S. company cannot protect a primarily geographic mark in “Columbian coffee.” Consumers would mistakenly make the association to Columbia.

However, a mark may not be “primarily geographically descriptive” if there are several different locations for the product, the names is also a surname or the name doesn’t import information about product origin. It may be the case that marks with terms such as Hollywood, New York, Miami Beach, Paris and other famous places are used in marketing but have no relation to the product’s origin.

I’d recognize that a mile away!

Product shapes that attract customers may be protected by design patents and trademarks. The key is source identifying function. We all know the product when we see a Coca Cola bottle or an iPod from across the room. The shape gives it away. That is strong consumer recognition and worthy of protection.

Sexy Slogans

Sexy and catchy slogans increase sales. To be protected by trademark, slogans must create a separate commercial impression from other product material or labels. They must be inherently distinctive not just ordinary. In other words, the slogan must ring in the consumer’s mind as referring to your brand. The customer doesn’t need to see or hear anything else, just the slogan.

I want the strongest mark $$$$ money can buy

It is appealing to chose marks that are related to the product, that describe or suggest something about it. But these are harder to register and harder to protect in the long run. Your best options for a mark are those that are unique and unrelated to the product. Shoot for arbitrary or fanciful marks.

Remember, some marks are not protectable at all: those classified as generic terms or common names for a product. Keep in mind, however, that a term may be generic for one product but arbitrary for another! For example, “spoon” is generic for eating utensils but arbitrary to cigarettes.

Use it or lose it, but use it correctly or lose it anyway

Marks must be used in commerce to be protected. Ceasing to use them, in the absence of excusable nonuse, will negatively impact a registrant’s rights and will prevent an applicant from getting on the register in the first place.

A trademark can lose its trademark status if it is not protected. You MUST chose a product name different than your intended brand name. That sounds easy, but inventors who make new products forget this rule so often it is cliché. We all know the story about Kleenex® brand tissue and Xerox® brand photocopies. Moral of the story: ALWAYS refer to“Your brand of product X.” This reduces the chance of your trademark losing its registered status and becoming generic.

What is a trademark or service mark?

Trade marks protect the consumer from confusing other brands with your brand of product. Put more simply, you want consumers seeking to purchase your brand of product to be able to easily identify it from all of the others in the marketplace; you do not want them to mistake an inferior quality copycat for your product. While trademark rights may be used to prevent others from using a confusingly similar mark, they will not prevent others from making or selling the same goods and services under a clearly different mark (That requires patent protection). Trademarks are used for brand names, store names, product line names, logos, packaging, colors, sounds and even shapes of products.

Sources of Trademark Rights

Trademark rights may be acquired by federal registration, state registration and common law rights through use in commerce.  Unfair competition law also provides some protection.

Why register a trademark?

Trademarks protect the public from confusion and protect the trademark owner from losing his market.  Trademarks serve several functions in the modern marketplace:

  • indicate origin of your product or service allowing customers to easily identify your brand from others in the marketplace.
  • indicate to your customers an assurance of quality.
  • marketing and advertising device to develop and protect your market.

Once registered, trademarks cannot be used by anyone else for the same goods or services for which the trademark is registered. If they are, then the companies can take immediate action to prevent further infringement and seek damages. The acquisition of a federal registration allows the trademark registrant to nationally enforce his trademark in the federal courts.  The national registration serves as constructive notice to others in distant geographic areas.  Federal registration also provides a statutory right of incontestability (after the 5th year of use in commerce).  A trademark or a service mark must be distinctive.  Distinctiveness may come from the inherent nature of the mark (fanciful or coined marks) or developed through marketing.  The test applied by the trademark office is likelihood of confusion.  Would a consumer be likely to be confused, deceived or mistake one mark from another?  Factors considered in making this determination include:

  • similarity of the marks
  • similarity of products
  • area & manner of concurrent use
  • degree of care likely to be exercised by the consumer (related to cost of product and sophistication of purchaser)
  • strength of the mark
  • actual confusion
  • wrongful intent

The inquiry focuses on both the product and the mark.  Without a showing of secondary meaning, a mark must do more than merely describe a product in order to distinguish it from other producers. Secondary meaning is essentially consumer identification. Since the statute prohibits the creation of a monopoly on words necessary to describe the goods for sale many descriptive marks cannot be registered.  Slogans must be unique and non-descriptive. Similarly, deceptively misdescribed terms are not eligible to be registered as marks.  The test applied is “what is the natural meaning of the mark in the particular trade and market.  Is the term primarily distinctive rather than primarily descriptive?

How can one show secondary meaning?

  • Amount of advertising
  • Number of sales
  • Character of mark
  • Evidence of consumer identification and response

The Trademark Examiner will review the mark proposed for registration and classify it as:-

  • Generic
  • Descriptive
  • Suggestive
  • Arbitrary or fanciful

Generic terms define the product or service and refer to the genus of which the product or service is a species. They are not eligible for registration.  An example might be milk or spoon. Descriptive terms identify a significant characteristic of the goods or services. With secondary meaning, they may be registered as marks.  Suggestive marks are primarily distinctive, even if partly descriptive.  The key is that it requires imagination, thought or perception to convey the nature of the product.  Secondary meaning is not required.  Arbitrary or fanciful marks convey nothing about the nature of the product.  A mark may be generic with respect to some products but arbitrary with respect to others.  Marks may lose status and become generic.  “Aspirin,” "escalator," "thermos," "trampoline," "kerosene" and "zipper" are good examples.

What kinds of things can be registered as a Mark?

Letters and words, logos, pictures, a combination of words and a logo, slogans, colors, product shapes, sounds and tag lines. The key is source identifying function of the indicia.

Can I reserve a mark for future use?

Not unless there is a bona fide intent to use the mark in commerce. This makes sense since the premise of trademark protection is protection against consumer confusion in the marketplace. If you are starting a business venture, you can file an intent to use application. You will need to file a specimen of your use in commerce at some time in the future. Use in commerce means:

  • 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.

What is the difference between TM, SM and ®?

Under common law and state law, 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 (This differs from patents where "patent pending" status may be marked on products). 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. Some people use Å to indicate an application for registration has been filed.

Multiple Marks

A business may have several marks or the same name. They may register a standard character mark, a stylized mark and a mark with a logo. They may register a mark with different colors or writing styles. It is not uncommon to have both a trademark and a service mark in the same name. A restaurant is a service but it may also sell take-home products (sauces, ice cream, etc.) . Franchise entities often have trademarks for products and service marks for the franchising consultation services.

If trademark registration is not required, why bother?

According to the U.S. Trademark Office, the advantages of federal registration include:

  • 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 U.S. Customs and Border Protection to prevent importation of infringing foreign goods.
  • Other benefits include a greater weight of evidence in the trademark owner's favor in the event of a domain name dispute over URLs incorporating the mark.

Domain Names

Applicants may want to consider domain names as additional marks.  Domain names are subject to the same rules, thus, a showing of secondary meaning may be required.  It is important, therefore, to use domain names in your advertising to enhance protection.  A trademark does NOT automatically give rise to a claim to domain names related to it.  Federal registration will, however, be a factor in a domain name dispute.

What must the application include?

The application must be filed in the name of the owner of the mark. The owner of the mark is the person or entity who controls the nature and quality of the goods identified by the mark and/or the services rendered in connection with mark. The owner may be an individual, corporation, partnership, or other type of legal entity.

What is a "specimen" of use?

A specimen is an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services. This is not the same as the drawing of the mark you submitted with your application, which merely represents what you are claiming as the mark. It is the mark as it is actually appearing on products and advertising.

What is a proper specimen for use of a mark on goods (products)?

Normally, a specimen for a mark used on goods shows the mark on the actual goods or packaging for the goods. You may submit:

  • a tag or label for the goods
  • a container for the goods
  • a display associated with the goods or
  • a photograph of the goods that shows use of the mark on the goods.

You do not submit the actual product. Generally things like billing invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards generally are NOT acceptable specimens for goods.

What is a proper specimen for use of a mark with services?

A specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. Things you might submit would be a sign, a brochure, an advertisement, a business card, stationery showing the mark in connection with the services. or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e., not just a display of the mark itself.

How do I file the specimen?

If filing electronically, you must attach an image of your specimen in .jpg format. The Trademark Office has precise guidelines on the file size and other technical specifications. In order to show the context in which the mark is used, the image should include as much of the label or advertisement as possible.

If filing a paper application, the specimen submitted with the application must be flat and no larger than 8½ by 11 inches. If you submit a larger specimen, the USPTO will create a facsimile of the specimen, insert it in the application file wrapper, and destroy the original submission. Specimens consisting of videotapes, audiotapes, CDs or computer diskettes are acceptable for sound marks that cannot be used or perceived any other way.

Registering a Trademark Overseas

If you are a qualified owner of an issued registration or trademark application pending before the USPTO, you may file with the USPTO under the Madrid Protocol to seek registration in any of the countries that have joined.

Do I have to be a U.S. citizen to apply?

No. However, if you do not reside in the United States, you may appoint a "domestic representative" as part of the application process.

Nontraditional Marks Under Trademark Law

The Trademark Law classifies perceptory features as descriptive in nature. Therefore, distinctiveness must be shown before protection can be granted to these nontraditional marks.

Colors

If the color is used for source identification rather than a functional aspect, and the choice of color doesn’t affect cost or quality, the color may be protected as a mark if secondary meaning (consumer association and recognition) is established. In other words, the color must be recognized by the consumer as signifying a “brand” or source of the product rather than merely a color selection. For example, in sandpaper, colors are used for color-coding various abrasiveness and therefore are functional in nature and not protectable.

Sound

Sound clips that are source identifying may be protected as marks. Examples are movie and TV studio sound clips.

Scent

The key inquiry is whether it is unrelated to utilitarian aspects or function of the product. For example, scents are utilitarian for air fresheners and perfumes, but not for sewing thread.

Taste

Flavors must be unrelated to product function to be granted trademark protection. They must also be used by a consumer to distinguish products from one another. With respect to pills, flavors are functional in that they make medicaments palatable. Additionally, since consumers don’t taste pills until after purchase, they don’t function for consumer recognition purposes. Therefore, flavors were unprotectable for medicament applications.

Motions

Motions are especially desirable for internet and website applications where a series of motions by digital imagery were source identifying in nature, and therefore, protectable under Trademark Law.

Why are foreign trademarks important?

“Local” products are in the global streams of commerce as national borders no longer define markets. The U.S. Commerce Department shows that Rochester, New York is the 40th largest export area in the United States, and second largest in New York State behind only New York City as the country’s international commercial leader. Rochester exported 4.6 billion dollars in 2006, an increase of 5% from the 2005. Protecting your mark in other countries where you have a significant market should be part of a prudent company’s overall trademark protection strategy.

Source: Sunday, February 24, 2008, Democrat & Chronicle