TrademarksA2®

Trademark Registration Services

What is a Substantive Office Action?

After a trademark application is filed, an Examining Attorney at the USPTO will be assigned to review the application against the statute that governs whether something can be registered as a trademark or not.  In addition, the Examining Attorney will ensure that the application meets all of the various "technical" requirements that are set forth in the Trademark Rules of Practice.  The latter are usually easily addressed and in fact are often taken care of by the Examining Attorney herself.  These "office actions" are referred to as non-substantive office actions.  The attorney representing the applicant will typically not need to spend much time addressing these technical deficiencies.  However this is not the case with the so-called substantive office actions.  These are refusals to register a trademark based on one of the many statutory requirements that determine what may qualify for registration.  The most common of these refusals are that the subject matter sought to be registered 1) is confusingly similar to an existing trademark registration or application, 2)  is merely descriptive in relation to the any of the goods or services in the application, and 3) is merely a surname.  There are many others (see FAQ below for a list).  To overcome these refusals, an attorney must present cogent legal arguments supported by facts and evidence in an attempt to convince the Examining Attorney that the refusal is not well grounded.  This is where the skill of a trademark attorney comes into play.  TrademarksA2R is the ONLY online service that includes responses to substantive office actions in the flat fee.

May a trademark filing company (e.g. LegalZoom) represent me before the USPTO in connection with my trademark application or must I hire a trademark attorney?

Only licensed attorneys (preferably attorneys who specialize in trademark law), may represent you before the U.S. Patent and Trademark Office (USPTO). If you hire someone to represent you, he or she must be a trademark attorney licensed to practice law in a U.S. state and be a member in good standing of the highest court of that state. Attorneys from other countries, except certain Canadian attorneys and agents representing Canadian filers, may NOT practice before the USPTO.

Does it matter where my trademark attorney is located?

Absolutely not.  Trademark registration is federal law and therefore may be practiced across state lines.  There is not need to find a local lawyer although of course if you are local that's fine with me!  More and more types of legal practices are going virtual. Trademark registration lends itself well to this kind of practice.

What is the timing for getting a trademark registered?

If you have not yet used the trademark:  

http://www.uspto.gov/trademarks/process/tm_sec1btimeline.jsp 

If you have already begun using the trademark on or in connection with the sale of goods and/or services:

http://www.uspto.gov/trademarks/process/tm_sec1atimeline.jsp 

What are the benefits of a trademark registration?

Owning a federal trademark registration on the Principal Register (see next FAQ on Supplemental Registrations) provides several advantages, including:

  • Public notice of your claim of ownership of the mark and priority over all other trademarks used or applied for after your filing date;

 

  • Nationwide rights to your trademark  - a benefit to those who are only using their trademark on a local geographic basis without a registration (such as a small bakery in a single town), in which case "common law" trademark rights extend only to those geographic regions where the trademark is used to sell goods and/or services);

 

  • Enhanced rights referred to as "incontestability" after five years of registration (most notably, an automatic defense against certain claims of invalidity that may be alleged by others);

 

  • 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. trademark registration as a basis to obtain registration in foreign countries;

 

  • 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 databases which, when it appears in a trademark search by others, acts as a deterrent to those who may otherwise have chosen to use or apply to register a confusingly similar trademark.

What is the Supplemental Register?

Certain trademarks are not eligible for, but may still be capable (in the future) of, registration on the Principal Register. Specifically, "trademarks" that are merely descriptive, geographically descriptive, or otherwise ineligible for registration without a showing of "Secondary Meaning" (surnames, product designs, non-distinctive product packaging, and ornamental subject matter) may be eligible for registration on the Supplemental Register.   In order to qualify, the trademark must be in use. "Intent-to-Use" applications are not allowed on the Supplemental Register.  The applications are not published for opposition purposes but are subject to cancellation actions.   Resulting registrations do not receive all of the benefits of a registration on the Principal Register, primarily the presumption of validity afforded a Principal Registration.  

 However, there still are other significant benefits to having registrations on the Supplemental Register.  These are as follows:

  • Protects against third-parties registering confusingly similar trademarks at the USPTO because the Supplemental Registrations will appear in trademark searches AND USPTO Examiners will cite your trademark against similar trademarks (so it's a great shield if not so much a sword). 
  • The right to use the ® symbol

  • Ability to obtain foreign trademark protection in countries with international treaties. 
  • After five (5) years of use and/or registration on the Supplemental Register, the registrant can apply for registration of the mark on the Principal Register 

So, although a Principal Registration may not be in the cards for you, there is the possibility that a Supplemental Registration will be available.  The simple fact of the matter is that all in all it is a pretty good alternative to nothing and should always be pursued over the "nothing" option for the reasons given above.

Does having a trademark allow me to prohibit all uses of the trademark?

No.  A trademark does allow you to prevent any use that the law considers to be an infringement.  Infringement is defined as any use of a trademark, word, symbol, or any other "device" that causes a likelihood of confusion on the part of a significant number of your actual or potential consumers or those of the infringer.  Likelihood of confusion is a legal determination made by a court after taking into account several factors.  Although the specific list varies according to the court you may find yourself in, they are all somewhat similar.  An example taken from the courts of the Second Circuit (which includes New York) is as follows:

(1) strength of the trademark;   (2) similarity of the marks;   (3) proximity of the products and their competitiveness with one another;   (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product;   (5) evidence of actual consumer confusion;   (6) evidence that the imitative mark was adopted in bad faith;   (7) respective quality of the products; and   (8) sophistication of consumers in the relevant market.   In addition, most courts will take into account any other factors which shed light on the ultimate question of whether, under the facts of any case at hand, consumers are likely to be confused by the defendant's use of its "junior mark" or other designation (whether intended to be used as a trademark or not).

Does a federal trademark registration on the Principal Register give me exclusive rights to the trademark and will it prevent anyone from suing me for trademark infringement?

A U.S. trademark registration on the principal register provides you a presumption of exclusive rights.  For the first five years of its life, the registration is subject to cancellation on the same grounds that it could have been opposed.  These are the grounds listed below in the FAQ entitled "What are the grounds for which my trademark could be refused registration by the USPTO?"  After five years, a more limited number grounds are still available to cancel a registration, most notably fraudulent obtaining of the registration, abandonment of the trademark and the trademark becoming a generic term for the goods or services it once was a trademark for (for example, "aspirin" was once a trademark).  Aside from that there is one small "quirk" that should be mentioned, although it a rare occurrence indeed.  Anyone who has used a trademark, and obtained common law rights in a certain geographic locality (which theoretically could be all of the U.S.) BEFORE the filing date of the registration, retains these rights as against the registrant.  Again, due to practical reasons, this is a very rare occurrence but it is worth mentioning.  A good comprehensive search undertaken before a trademark application is filed can often locate these common law marks and this is a way to avoid this surprise from happening to you.

Priority in trademark law is an extremely complicated subject.  Many odd fact scenarios exist for which the law applies in ways that, for those who have not studied every word of the Lanham Act (including many trademark attorneys), which is one of the most convoluted statutes ever written, are not immediately obvious.  This underscores the importance of never jumping to conclusions about which party in a trademark dispute has the right to stop the other party's use, when either dueling registrations are involved or all the facts about the timing of first use are unknown.  An experienced trademark attorney can sort this out for you and ensure that you do not take action that will compromise your position with another party.

When can or should I use the TM and the ®?

A "TM" can be used ANYTIME and with ANY TRADEMARK (even if it's not registered) if you believe in good faith that you have a legitimate common law trademark.  Any word(s) or logos or unitary combinations of these that you believe nobody else has used prior to you for similar goods or services can be common law trademarks.  The primary exception is that you can't claim "TM" rights for descriptive or generic terms as they relate to your goods or services (e.g. Tasty Pies), UNLESS you have used such a term for a very long time and believe that consumers associate it uniquely with your products as a source designator for them (e.g. American Airlines...assuming they never registered their trademark up to now).  A "TM" does not give you a trademark, nor does the non-use of it with an otherwise valid common law trademark take away such rights.  It is merely a claim (be it correct or incorrect).

On the other hand, a ® can ONLY be used with REGISTERED TRADEMARKS and only in connection with goods and services for which the trademark is registered.  It is not necessary to use the ®, but failure to use it at all MAY have detrimental effects in litigation when it comes to trying to get damages from an infringer.  It is recommended legally but it seems that in this aesthetically oriented world, an increasing number of companies are foregoing the use of the ®.  The ® should NEVER be used on a trademark/goods combination that is NOT registered.  The penalty for doing so is  prohibition from ever registering your mark for such goods or services.  This comes up for example when a competitor wishes to have your trademark cancelled on these grounds and can prove the facts supporting such an allegation.

What is the difference between an Intent-to-Use application and a Use-Based application?

An "Intent-to-Use" (ITU) application is one that is filed BEFORE you have used your trademark in any manner whatsoever (i.e. it's just a gleam in your eye).  With that said though, you must have a real, "bona-fide" (lawyers like to talk funny), intention to make actual "use in commerce" of your trademark at some time in the future (within about 3-4 years, for practical purposes).  On the other hand, a "use-based" application is one that is filed at any time after you have already been using your trademark (which can be ANY period of time after you first used it).  In either case, you will have to submit evidence to the USPTO that you are using the trademark (in the form of a "specimen" of use, which can be a photograph of a label, store sign, etc.).  The only difference is the timing of when this evidence of use is filed.  For ITUs it is filed some time after the application is filed and for applications based on use, it is filed WITH the application.

For an ITU, you have up to three years after "allowance" of the trademark to submit a proper specimen. "Allowance" takes place after all examination is complete and after the trademark is published for possible third-party oppositions to be filed.  For each six month period of time that you want to extend your time to file your specimen you must pay a $150 fee and provide a reason for the non-use (so you can file up to five extensions after the first free six month period).  A Use-Based application is less expensive because it avoids the $100 Statement of Use fee (and any extension fees).  However it is a real advantage to be able to file on an ITU basis so that you can preserve your rights to the trademark.  Your date of filing will serve as your date of first use IF and WHEN you ultimately get the registration (think of it as a stake in the ground as of the filing date).  Nobody can come in after you stake your claim and either file for or start using a confusingly similar trademark.  You may not be able to stop them until you start using your mark but any second comer proceeds at their own risk in light of your prior filing (which can be easily searched on the USPTO's online database by anyone doing a trademark search).

Can a Personal Name be Trademarked?

One may register a personal name as a trademark.  However, the USPTO does not allow the registration of trademarks that are merely surnames.  So for example, one may not register "SMITH" (unless it can be shown that the name has acquired distinctiveness in the marketplace through use) but one may register "JJ Smith" and "James Smith" because these marks are considered primarily personal names (not merely a surnames).  Oddly, the USPTO will consider the mark "J. Smith" to be primarily a surname (go figure...apparently the idea is that a single initial is not enough to remove the mark from the "merely a surname" category). When applying to register a full name and the name identifies a living individual, the applicant must state this in the trademark application.  Additionally, if the public is likely to know who the individual is (through the association of the name and the products or services) then that individual's consent must be obtained (this protects the right of publicity of the person whose name is being used, or intended to be used, as a trademark).  The registration of names, in general, is one of the most confusing and often inconsistently applied areas of trademark law.  In no other area is it more appropriate to say "contact a trademark attorney" (if you want to register a personal name trademark, including names of authors).

What are the differences among trade names, trademarks, and service marks?

As between trademarks and service marks, the only difference is that trademarks apply to GOODS and service marks apply to...drumroll...SERVICES.  It's really a distinction without a difference.  From a legal standpoint, they are treated identically in every way.  In fact, when the word "trademark" is used, it is generally meant to include service marks.  On the other hand, trade names are NAMES of entities (ABC Corp.).  These can not be registered like trademarks and service marks can (although they are protected by "common law").  However, it is often the case that a trade name is also a trademark but that does not have to be true.  For example, "Apple" is both a trade name (the name of Apple Corp.) and a trademark (i.e. a brand of computer and other electronic products).

What are the grounds for which my trademark could be refused registration by the USPTO?

The USPTO may refuse to register your mark on numerous grounds. The most common are:

Likelihood of Confusion: The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, neither the marks have to be identical nor the goods and services exactly the same; instead, it is sufficient if the marks are similar and the goods and or services related. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.

When a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.

Merely Descriptive and Deceptively Misdescriptive: The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. A mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.

Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive: The examining attorney will refuse registration of a mark as primarily geographically descriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the mark identifies the geographic origin of the goods or services.

A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the goods or services do not originate in the place identified in the mark.

Primarily Merely a Surname: The examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a surname.

Ornamentation: In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the "dress" of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant's goods from those of others.

Censored: The proposed trademark consists of or comprises immoral, deceptive, or scandalous matter.

Right of Publicity Violations: The proposed trademark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute.

Government Symbols: The proposed trademark consists of or comprises the flag, coat of arms, or other government insignia of the United States or any state, municipality, or foreign nation.

Living People: The proposed trademark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased U.S. President during the life of his widow, if any, except by the widow's written consent.

Functionality:  The mark is "functional". This is a robust area of law in and of itself. It applies to trade dress, the design of which is dictated by purely utilitarian functional reasons (such as it's the cheapest way to design something or the design works better than all other designs).

What must I know about how to use my trademark and what proof of such use I will need, in order to qualify for registration?

Before a trademark can register, the applicant must state under oath that she is using the mark on all of the goods listed in the application.  In addition, she must submit one "specimen" demonstrating such use for one of the goods listed in each Class (e.g. 2 classes, two specimens - one representative of each class). The USPTO adheres to a rather archaic rule that says in order to prove that you are using your trademark.  A valid specimen of use for goods (as opposed to services) is one of the following: 

  • A label (one that is actually used on your product of course) 
  • A hang tag
  • Any kind of documentation that comes with the product 
  • For Internet sales, you can show a copy of a web page where someone can order your product AND where the trademark applied for is seen in close proximity to where the customer orders the product on the site

 

Although you only have to submit ONE specimen per class you still have to allege that you are in fact selling (using the trademark) all of the specific goods that you have listed in your application.  If you don't want to wait for that, you can always divide up applications to get registrations for goods that are in use with the trademark without waiting for those that you merely have plans for.  The best news is that for ALL of the goods you apply for, you have priority as against the rest of the world (i.e. nobody can begin using or applying for similar marks for similar goods). So filing is like staking your legal claim to the mark, conditional upon ultimately using and then registering your trademark.You can either file multi-class applications or multiple single class applications and the cost is the same.  I will be happy to explain all of this further as we discuss your specific situation and plans.

How Do I Get a Trademark in Another Country?

That is an excellent question (so what if I wrote it...I'm assuming you would have asked it anyway).  Just tell me where else, besides the U.S., you want to register your trademark.  I can do this for you in most countries in the world including all of the European Union with one registration.  

 

 

Summary of the basics:

Trademarks exist only in connection with particular goods or services and are only valid so long as they are actively in use on or in connection with those goods or services which are available for purchase, rent, or otherwise, to relevant consumers. In short a trademark is as a trademark does. As long as a trademark is used as per the above description, someone will own it as a common law trademark. While the law gives some protection to common law trademarks, it is more difficult to prove ownership of a common law trademark (especially for smaller companies and individuals) than it is to prove ownership of a registered trademark.

Trademark attorneys do not like to hear the word "trademark" used as a verb. The reason for this is that it implies that there is some magic process by which something becomes a trademark. The fact of the matter is that even though there is a process for registering a trademark, the trademark registration will only issue after the trademark is put into use as a trademark. So it's actually the use that makes something a trademark, even though registration of a trademark is important and provides many benefits over relying merely on common law rights.

One of the best benefits of applying to register a trademark is that one can apply before there is any use of the trademark and this reserves the trademark for the applicant. Nobody can either begin using or apply for a confusingly similar trademark after the first one is filed. However, this protection is contingent upon, and will be lost unless, the eventual registration of the trademark. Various conditions exist that will prevent the trademark from registering. However, if a proper trademark search is performed and a trademark attorney has evaluated the trademark for any issues of protectability (for example, will the trademark be deemed merely descriptive of the goods or services for which it is applied? If so, can evidence of acquired distinctiveness through extensive prior use as a trademark be provided?).

Perhaps the biggest stumbling block that first time trademark applicants face and a frequent stumbling block when it comes to how to trademark a brand, is the requirement that a so-called specimen of use must be provided, along with the sworn statement that the trademark is in use for the goods and services listed in the application. There are some very stringent requirements that apply to specimens that can cause real problems if they are not anticipated early in the process. There are different requirements for specimens depending on whether the trademark is for goods or for services (or it can be for both). Goods and services are classified into groups called "classes" at the USPTO. Each class into which the goods and/or services in the trademark application fall requires a specimen of use. The specimen only needs to apply to one of the goods or services listed in each class and it can be the same specimen for more than one class as long as it is appropriate for the goods or services it relates to.

A proper specimen for goods must be a picture of a label, tag, or some other item that shows the trademark either on the product or in some other way used in connection with the sale of the product (for example, a point of purchase display in a supermarket or a purchasing catalog entry). One of the easiest ways to create a specimen for goods sold on a website is to simply display the trademark on the website in close proximity to the point on the website at which someone orders the product (e.g. "Add To Basket"). A simple screen shot of the web page will suffice as a specimen for e-commerce based businesses. It is important to note that advertisements, business cards and letterhead do not qualify as proper specimens for goods as they do not meet the "affixation to the goods" requirement.

Unlike specimens for goods, specimens for services are not limited by the affixation requirement (because there is nothing to affix to). Therefore, these are usually easier to come by and include such items as ads, brochures, business cards and anything else used to promote the availability of the services. However unlike goods specimens that do not have to show the goods themselves (a mere picture of a label unattached to any product would suffice as a valid specimen for the goods on which the applicant alleges the label is used), a services specimen must have some indication of the services being offered for sale. Thus a brochure will describe the services and a business card will indicate the type of services provided by the business.

The final issue involving specimens is that they must show the trademark that was submitted in the application drawing. If they differ in a material way then either a substitute specimen must be submitted or else a new application will have to be filed. The lesson here is that when submitting a trademark drawing, be sure that you will not be changing the trademark in a material way down the road. Once you submit your specimens for each class of goods and services and they are accepted by the USPTO, you are well on your way to knowing how to trademark a brand.