In this ‘Intellectual Property Application Series,’ I’ll be discussing the trademark application. I’ll explain what it is, what to know before filing, and why it is an important tool for protecting your product or service.
What a Trademark is:
A trademark is a type of intellectual property that distinguishes and identifies the source of a good and/or service. Trademarks also assert one’s right to use a specific word, phrase, logo/symbol, design or a combination thereof in the market. In short, a trademark is used to distinguish one company’s products/services from another.
The word “trademark” is generally used as an umbrella term to included both trademarks and service marks. More specifically, trademarks protect those marks that indicate the source of a good, rather than the source of a service. The protections provided under either a service or trademark vary slightly. This is because they are specific to the classes of goods/services they protect.
According to the Lanham Act, which governs trademark law in the U.S., from the moment a mark is used by a business in commerce, it is automatically protected as a common law mark. The first individual to use a mark in commerce is awarded the Common law rights to the mark. Nevertheless, common law rights are limited.
Protection of a mark using common law rights only extends to the geographic area in which the mark is used. This limitation could prevent expansion into other geographic areas. A company in a different geographical area that uses a confusingly similar mark would limit that market. Common law rights may preserve one’s rights to a mark, even over a federally registered trademark, but proving the date of first use may be difficult. Contrastingly, federal registration of a mark provides a public record of the date the mark was first used in commerce.
What to Know Before Filing:
One of the first steps to registering a trademark is to investigate the mark and confirm if it is unique. For this, a search of currently used marks must be performed. A search can be attempted by an individual, but a formal search is conducted by a patent attorney, patent agent, or a person who specializes solely in these types of searches. The United States Patent and Trademark Office (USPTO) even has some advice about hiring a private trademark attorney.
To conduct a formal search, an experienced professional uses specialized tools and databases to compare the mark to the millions of published and registered applications. These applications are found in the database of the Trademark Electronic Search System (TESS) of the USPTO and in the state specific Secretary of State Office databases. A thorough search would also include a search of common law marks. Even the most in depth search may still miss a similar mark, but finding out if a mark is already registered could save a company from being sued for accidentally infringing another’s mark. This could not only save time and money, but also a company’s reputation.
Trademark Requirements and Use:
Once a mark is decided on, there are specific requirements that must be met for a trademark application filing to be accepted, and for the mark itself to qualify for federal protection. The trademark application filing requirements are defined by the USPTO. To qualify for federal protection via registration with the USPTO, a potential registered mark must be unique to the individual business that is applying for its use. The mark must also either be currently used in commerce or intended to be used.
Whether or not a mark is used in commerce dictates what type of application can be filed with the USPTO. A statement of use (SOU) application is filed with a specimen that shows how the mark is currently being used. If the mark has not been used in commerce, an intent to use (ITU) application can be filed. This filing will secure the filing date as the date of first use and will create a public record. With an ITU application, the mark must be used within 6-months of receiving the USPTO Notice of Allowance. If not, the application will expire and rights may be lost.
What to Know About the Trademark Filing Process:
After an application is filed with the USPTO, the trademark Examiner will review the mark for adherence to the filing regulations. The mark must be distinctive and the specimen must show the mark being used in commerce. To see if the mark is distinctive, the Examiner will compare the mark to the other marks both published and registered on the USPTO database. If a similar mark is not found, the application will be published on the USPTO Official Gazette. Publication begins a thirty-day Opposition Period. During this time, a third party may contest registration of the mark. To contest registration an opposition to the mark is filed with the Trademark Trial and Appeal Board (TTAB). If no opposition is filed, the mark is allowed for registration on the Principal Register.
If during the Examiner’s review, a similar mark is found, the application will be rejected. Alternatively, the Examiner may give the option of registering the mark on the Supplemental Register, rather than the Principal Register. Supplemental registration is generally used if a mark is seen as currently too generic for registration on the Principal Register. If over a five-year period, while on the Supplemental Register, a mark “acquires distinctiveness,” registration on the Principal Register can be sought. This requires that new trademark application be filed.
Registration on either the Principal or Supplemental Registers allows a mark protection under federal laws. Registration also allows the owner of the mark to use the registration symbol (®) to indicate this protection. This symbol gives constructive notice to the public that the mark is in use. It also discourages others from unintentionally infringing the mark. If infringement is found, the registrant has the right to bring suit in federal court.
Other protections are provided by the USPTO after trademark registration. The office will not accept a competing application for any mark similar to one already on either Register. Additionally, under either Register, a U.S registration can be used as a basis to obtain registration in foreign countries or via the Madrid Protocol.
Protections provided solely under the Principal Register include the presumption of ownership in the entire U.S. This ownership includes the exclusive right to use the mark nationwide in connection with the goods/services listed in the trademark registration. To the extent that a trademark is related to goods, the Principal register grants the right to request U.S. Customs officials to bar importation of infringing trademarked goods.
What to Know About Maintaining a Trademark Registration:
A trademark owner should be weary of solicitations from private companies requesting payments to renew a trademark. Some of these companies simply want to charge for attending to the trademark renewal fee. Unlike a licensed attorney, these companies are under no obligation to continue to monitor a trademark after the initial renewal fee is paid. It should also be noted that there are intentionally misleading or malicious entities that send solicitation letters to trademark owners. These entities request payment without the intent of actually renewing a trademark. In this case, if renewal fees are not paid, the rights to a trademark will be lost, while the trademark owner believes their rights are still protected. To help identify trademark solicitors, the USPTO has included a list of potentially misleading notices.
A registered trademark must be maintained to keep it enforced. This rule prevents trademarks from exclusion from registration without actually being in current use. To maintain a U.S. trademark registration, you must continue to use the mark in connection with the goods/services identified in the registration, and occasionally file certain documents in the USPTO. The time frame for this maintenance is five years after registration, then every nine to ten years thereafter.
Between five and six years after registration, a Declaration of Continued Use (or Excusable Non-Use) must be filed. This is also called an Affidavit of Continuing Use, or a Section 8 Affidavit, since its requirements appear in section 8 of the Trademark Act codified at 15 U.S.C. § 1058. The affidavit also requires a specimen of the mark as used in commerce and a fee for each class of goods. By every tenth anniversary thereafter, a Declaration of Continued Use and an Application for Renewal must be filed. The Application for Renewal, governed by section 9 of the Trademark Act (15 U.S.C. § 1059) also requires a fee for each class of goods covered by the registration.
After a trademark is in use and/or registered, the market must be monitored for infringement. The trademark owner is expected to enforce their ownership or risk losing rights to the mark. If infringement is suspected, a notice of the trademark rights should be sent to the infringer with the request to cease and desist. This cease and desist notice should, at a minimum, advise the infringer to stop the infringement, or expect further action. While it is not required, having an experienced legal team behind a cease and desist notice can help avoid the potential for the tables to turn. A simple cease and desist notice can be justification for a defamation complaint, claim of extortion, or even material for a counter suit.
The trademark owner is responsible for monitoring and enforcing their rights, but third parties can be enlisted to assist. To ensure that a mark is being monitored correctly, we can assist in forming these trusted relationships and maintaining communication. Additionally, if infringement is found, our team is hear to help guide you through the task of trademark enforcement and even litigation.
Why a Trademark is an Important Tool:
Trademarks are important in their ability to protect both consumers and the businesses which serve them. They provide a business with a way to protect their identity and the goodwill associated with their goods/services. The rules that govern trademarks also help businesses compete fairly. To protect from monopolization, a trademark cannot be issued for generic terms that are used across an industry.
Trademark laws also help protect consumers from deceit by counterfeit products or fraudulent companies. Trademarks do this by signifying the goodwill and identity of a company. The goodwill of a company indicates to a consumer a level of quality or trust. If a business can’t protect that reputation, it could be the consumer that pays the greater price.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if have an interest in filing a trademark application or other intellectual property applications.