© 2017 Head, Johnson, Kachigian & Wilkinson, PC

  • Cassandra L. Wilkinson

Trademark Basics


Trademarks are important assets of a business. Trademarks are governed by both state and federal law. Originally, state common law provided the main source of protection for trademarks. However, in the late 1800’s the U.S. Congress enacted the first federal trademark law. Since then, federal trademark law has consistently expanded, taking over much of the ground initially covered by state law. Today, federal law provides the main, and by and large the most extensive, source of trademark protection, although state actions are still available. The discussion below will focus on federal law. A trademark is a name, word, phrase, logo, symbol, design, or a combination thereof. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound. Basically a trademark identifies and distinguishes the source of the goods of one party from those of others. A service mark is a name, word, phrase, logo, symbol, design, or a combination thereof that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks. Benefits to Registering a Trademark Owning a federal trademark registration on the Principal Register provides several advantages, including: • Public notice of your claim of ownership of the mark; • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/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 internationally; • The ability to record the U.S. registration with the U.S. Customs and Border protection (CBP) Service to prevent importation of infringing foreign goods; • The right to use the federal registration symbol ®; and • Listing in the United States Patent and Trademark Office’s online database. Regulations Governing the Use of the Designations “TM” or “SM” or the ® Symbol If you claim rights to use a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol ® after the USPTO actually registers a mark, and not while an application is pending. Steps to be Taken when Preparing to Secure a Trademark It is highly advisable to conduct a search to determine the availability of the proposed trademark. A trademark availability search is more of a screening process to identify existing registrations and applications and to identify possible problems. A trademark search is not to be considered exhaustive, but is a good screening tool. If it is determined that a trademark will have a good likelihood of obtaining registration, then, an Applicant can file an application to register the trademark. The application is then placed in line in the order it was received to be examined by an examining attorney for the USPTO. Following a period of three to six months, the application is reviewed by an examining attorney to make sure that it complies with all requirements in order to be entitled to registration. This review includes procedural matters such as making sure the applicant’s goods or services are identified properly. It also includes more substantive matters such as making sure the applicant’s mark is not merely descriptive or likely to cause confusion with a pre-existing applied-for or registered mark. If the application runs afoul of any requirement, the examining attorney will issue an office action requiring the applicant to address certain issues or refusals prior to registration of the mark. After the examination of the mark has concluded with no issues to be addressed or an applicant has responded adequately to an examining attorney’s concerns, the application will be published for opposition. During this 30-day period, third-parties who may be affected by the registration of the trademark may step forward to file an opposition proceeding to stop the registration of the mark. If an opposition proceeding is filed, it institutes a case before the Trademark Trial and Appeal Board to determine both the validity of the grounds for the opposition as well as the ability of the applicant to register the mark at issue. If no third party opposes the registration of the mark during the opposition period or the opposition is ultimately decided in the applicant’s favor, the mark will be registered in due course. Post Registration Information A registration is valid as long as you timely file all post registration maintenance documents. After registration, the owner of the registered trademark is required to file a Section 8 Affidavit of Continuous Use to maintain the registration between the 5th and 6th year anniversaries of the registration or during the 5-month grace period following the 6th-year anniversary of the registration. Note that if the affidavit is filed during the 6-month grace period, additional fees will apply. In addition to the above requirement, the registration is required to be renewed on or about every 10-year anniversary of the registration of the trademark. The procedure for 10-year renewals is somewhat different from that for the 5th-6th year renewal. In short, registrants are required to file both a Section 8 Affidavit of Continuous Use as well as a Section 9 Application for Renewal every ten years to maintain their registration. General Information There are more numerous processes and procedures than one can mention in this blog, both pre-registration and post-registration. Therefore, the above statements are not to be considered all-inclusive. It is not required to hire an attorney, but because of the legal issues that could be raised by the USPTO and the complexity of the application process, many applicants choose to appoint an attorney to represent them.

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