Trademark

BY ERIC C. BELANGER, ESQ.

belanger@endeavorlegal.com

A trademark is a word, name, symbol, phrase, logo, color or sound used to distinguish a particular business’ products from the products of another. Really, anything that distinctly identifies your business product can be a trademark. A trademark is often indicated by the symbol ™, and when registered with the United States Patent and Trademark Office (USPTO), by the symbol ®. A trademark is a valuable business asset which permits a business to establish its reputation and safe-guard against another company from entering into the marketplace and diminishing the reputation of the first party or reducing its profits by deceiving consumers with the introduction of inferior products bearing the first party’s identifying marks. ENDEAVORLEGAL attorneys can assist you in the process of preparing and completing Federal trademark applications.

A mark used to identify a particular company’s services in the national and global marketplace is known not as a trademark but rather as a service mark. A service mark also can include words, names, symbols, phrases, logos, colors or sounds. While trademarks are displayed on a company’s products or packaging, service marks appear predominantly in advertising for the services proposed to be rendered. When the term trademark is used below, the reference is intended to apply both to trademarks and service marks. ENDEAVORLEGAL attorneys can assist you in the process of preparing and completing Federal service mark applications.

It should be noted that trademarks, unlike patents, can be renewed forever as long as they are being used in commerce. Trademarks are intellectual property rights which are established by actually using the mark in the marketplace or completing an application to register a mark with the USPTO. Registering a trademark with the USPTO is not required to establish trademark rights. However, registration of a mark secures stronger intellectual property protections, including an official notice of your claim to the mark, evidence of ownership, the ability to invoke Federal judicial protections, a basis for obtaining registration in other countries and preventing the importation of infringing products from abroad.

In general, the first party to use a mark in commerce or who files an application with the USPTO holds the right to registration. The right of use of a mark is often more difficult to judge. The difficultly in determining the right to use a mark arises when two parties implement similar trademarks in commerce without being aware of the existence of the other and without completing an application for registration of the trademark with the USPTO. When a situation such as this arises, the parties must submit the matter to the court system for a determination as to who possesses the right of use of the trademark. In the event you find someone using your trademark, Federal registration of a trademark provides a significant advantage in court proceedings.

It is a good idea to complete a trademark search prior to using a mark in commerce as you can create significant liabilities by infringing upon the established trademark rights of another party. In addition, if you file a trademark application and there is an existing trademark in conflict with your mark, the application will be rejected and filing fees are not refundable. You can search for registered trademarks on the USPTO’s website: http://tmsearch.uspto.gov/. Also, remember that trademarks can be created by common law, so it is advisable to complete a common law trademark search. Today, a common law trademark search is made easier by the Internet and the availability of a variety of search engines.

The mark application must be filed under the name of the actual holder of ownership to the mark. The owner of the mark is the party controlling the nature and the quality of the products sold or the services rendered under the mark. The owner can be an individual, partnership, corporation, limited liability company or other organization The applicant must specify its national citizenship on the application. The applicant is not required to possess U.S. citizenship. The application must be based on actual use or a real intent to use the mark in commerce.

For applications based on actual use, the application should indicate on which products the mark has actually been placed and sold in commerce. A mark for services is considered to be in “actual use” when it is used or displayed in advertisements for services and the services have actually been rendered.

For applications based on intent-to-use, it is sufficient to make a statement in good faith that there is a plan in place to use the mark in commerce. The mark must actually be used in the marketplace before it can be registered. In intent-to-use, the USPTO issues a Notice of Allowance, which allows six months to either use the mark in commerce or file for an extension. Once the mark is used in commerce, a Statement of Use must be filed with the USPTO and an additional filing fee must be paid prior to the USPTO issuing a registration certificate.

A drawing of the mark and a specimen of the mark must be submitted when an application is based on actual use. Labels, tags or containers for the goods are acceptable specimens or examples showing the USPTO how the trademark is actually used on products in the real world. In regard to a service mark, a specimen may be advertising, such as a newspaper advertisement or marketing materials.

A drawing depicts the mark the application seeks to register. In an application based on actual use, the drawing must show the mark as it is actually used. For applications based on a intent-to-use, the drawing must depict the mark as the owner intends to use it. A drawing is necessary even where a specimen is submitted with the application.

Every application must include a clear representation of the mark you want to register. The USPTO uses this representation to file the mark in their search records and to print the mark in the Official Gazette and on the registration certificate. The Official Gazette is the official journal of the USPTO, published weekly, which includes bibliographic information and a representative drawing for each trademark published on that issue date.

There are two possible mark formats: standard character format or stylized or design format. The standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element and/or word(s) and/or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark. An applicant cannot submit a representation of a mark that attempts to combine a standard character format and a stylized or design format.

The USPTO charges fees ranging from $225 to $375.00 for the filing of a trademark application. Once the application has been filed, the registration process normally takes approximately six months, although if legal issues arise during the process it can last substantially longer. Once the application is filed, the USPTO assigns the file a serial number and delivers a receipt to the applicant. A lawyer for the USPTO is charged with examining the application and publishing the mark in the Official Gazette. Other parties are given thirty days from the publication date to make an objection to the mark. Once this waiting period is finished and no objections have been made, the USPTO either issues a Certificate of Registration, in the case of actual use, or a Notice of Allowance, in the case of intent-to-use. Once a trademark is registered, you possess legal ownership of the trademark. Let a ENDEAVORLEGAL attorneys guide you through the process of preparing and completing Federal trademark applications.

For a trademark registration to remain valid, an Affidavit of Use must be filed between the fifth and sixth year following registration, and within the year before the end of every ten-year period after the date of registration. Assuming that an affidavit of use is filed in a timely fashion, the term of registrations is ten years. Each renewal of registration has an additional ten year term.