We offer a full array of trademark services. Our practice has managed thousands of trademarks, and performed due diligence searches for some of the largest brands in the world. There is not a trademark that our firm cannot handle. We have the capacity to add large corporate trademark portfolios to our management system, and offer low-priced maintenance for maintaining large portfolios of trademarks.
TechLaw LLP’s trademark practice represents single trademark owners, as well as larger enterprises with portfolios of more than 100 trademarks. We perform various searches and analyses of trademarks for infringement determinations and registrability. We offer cost-effective trademark monitoring services that insure our clients’ marks are policed worldwide and often take on trademarks that other law firms have “given up” on, and argue them through to registration.
In today’s world of IP-driven value, your business cannot afford to ignore its trademark portfolio. It is essential that every business protect its goodwill and its brands with the assistance of diligent trademark counsel, and aggressive representation before the United States Patent and Trademark Office.
What is a Trademark?
A trademark is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Throughout this letter the terms “trademark” and “mark” are used to refer to both trademarks and service marks whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.
A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.
Establishing Trademark Rights
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (“PTO”) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.
There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO’s authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice. Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10‑year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.
Types of Applications for Federal Registration
An applicant may apply for federal registration in three principal ways. (1) An applicant who has already commenced using a mark in commerce may file based on that use (a “use” application). (2) An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an “intent‑to‑use” application). For the purpose of obtaining federal registration, commerce means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as “use in commerce.” If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark. (3) Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.
A United States registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.
What are the benefits of federal trademark registration?
1. Constructive notice nationwide of the trademark owner’s claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Who May File an Application?
The application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark.
Searches for Conflicting Marks
There are two issues pertinent to a search. First, can you use a mark without infringing a prior user? This question can be analyzed by a private trademark attorney, and is not part of the PTO’s analysis.
Second, if there is no infringement risk, the mark must be analyzed to determine whether it can be registered and protected. This is also determined on a preliminary basis by a private attorney. But, the PTO also makes a determination as to registrability once the trademark application is submitted.
An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO. However, some people find it useful. In evaluating an application, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.
To determine whether there is a conflict between two marks, the PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be 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, the marks need not be identical, and the goods and services do not have to be the same.
The PTO does not conduct searches for the public to determine if a conflicting mark is registered, or is the subject of a pending application, except as noted above when acting on an application.
Can the PTO refuse to register a mark?
Yes. The PTO will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.
Additionally, Section 2 of the Trademark Act (15 U.S.C. §1052) contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as:
1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States , or of any State or municipality, or of any foreign nation;
4. the proposed mark 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 President of the United States during the life of his widow, if any, except by the written consent of the widow;
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant’s goods or services are likely to cause confusion, mistake, or deception;
6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant’s goods or services;
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant’s goods or services; and
8. the proposed mark is primarily merely a surname.
Use of the “TM,” “SM” and “®” Symbols
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be improper.
PROCEDURAL ISSUES AND THE TRADEMARK PROCESS
The Difference Between Trademarks and Service Marks
The PTO has established a system for the classification of goods and services. All states have similar classification systems. Marks are registered as associated with or applied to particular goods or services and placed in the appropriate class. Trademarks apply to goods; service marks to services. Those goods or services are the goods and services set forth in the application. For that reason, the description of goods or services given in the application should be done with care, and will likely be prepared with a particular class of goods or services in mind.
Examples of the classification system and the difference between goods and services are as follows, and apply to both state and federal registrations:
1. If a client has a retail store called “XYZ” that sells cameras with other names or logos, the client must show use in connection with the retail store, for example, on signs, and the application is filed in International Class 35 for retail services.
2. If a client uses the name “XYZ” for computer equipment which the client sells to retailers which then resell the “XYZ” computers to the public, the application is filed in International Class 9 for electronic equipment.
3. If a client uses the name “XYZ” for t-shirts, International Class 25, and souvenir glasses, International Class 21, the t-shirts and glasses are listed as goods, and the mark has to be used on the goods to show use. This is a multi-class application, which requires a separate filing fee for each class. We generally file these as two separate applications so if the PTO has an objection to the mark in one class, it will not delay or prevent the registration of the mark in the other class.
State Trademarks/Service Marks/Trade Names
State registration provides trademark protection within the geographic confines of a state. All states, and Nevada Revised Statutes specifically, require use of the mark in the state before an application for registration of a trademark, service mark or trade name can be filed. Use is generally defined as the display of the mark on goods or packaging of goods which are sold or in the sale or advertising of services which are provided. Furthermore, the goods must be sold or services rendered in the state in which registration is sought.
Federal Trademarks/Service Marks
Federal registration provides trademark protection nationwide and in U.S. territories. As to federal trademarks or service marks, the owner of the mark can file an application if it is presently using the mark (called a “use” application) or has a bonafide intent-to-use the mark in the future (called an “ITU” application).
The first concern is always that your use will infringe the trademark rights of a prior user, whether or not that user has chosen to register the mark. Secondarily, a preexisting registration or application will serve as a bar to your registration on both the state and federal level. It is best to conduct a trademark search prior to filing an application to register the mark to assess the infringement risk associated with the adoption of the mark and to ascertain whether a state or federal registration would be available. We note that trademark application fees are nonrefundable.
To evaluate infringement risks, a trademark search should be performed prior to choosing the mark for use. Initially, we recommend a computerized search done in our offices to investigate preexisting state or federal applications or registrations. We charge $295 for this search, which can be done in a day or two. The on-line search can eliminate from consideration trademarks which have been previously registered, but cannot clear all rights. Conclusions with respect to infringement issues cannot be reached from a search of only registered marks. Therefore, in most cases, a full search should be ordered, which also covers “common law” users of the mark who also have trademark rights but who have not obtained a state or federal registration for the mark, as well as Internet domain names. The cost of this search is $650, plus our hourly rates to analyze the search and research the uses of the same or similar marks revealed by the search. The time required to review the search depends on the sheer number of references in the search, the number of references which must be investigated to determine whether and how a similar mark is used, and the ease of or difficulty in investigating those similar uses. We estimate that a minimum of 3-4 hours will be required for our review, and often much more time is involved. The normal turn around time for the search from the search firm is one week from the placement of the order, but can be expedited for an additional fee.
The Trademark Application Costs and Procedure
State applications: Our fee to file a state trademark application is $300 per class, and the registration typically issues in one to three months, although the application can be expedited by payment of an additional fee. We will notify you when the registration issues. To file the application, we need to know 1) the name and address of the owner of the mark and, if a business entity, the type (e.g. corporation, limited liability company, partnership) and state of incorporation or organization, 2) the name of the officer, member or partner who will sign the application if the owner is a business entity, 3) the date the mark was first used anywhere in the U.S. and in Nevada, and 4) the goods or services involved. We will also need two specimens of the mark as used on goods, such as tags, packaging, or the products themselves showing the mark; or for services, such as advertisements, marketing materials or signage. Photographs of any of these items are sufficient. Photocopies are not permissible. If the mark is a design or stylized mark, we will need an exact black and white drawing of the mark as it is used. The application must be signed by the owner, or officer of the owner, of the mark before a notary public. We provide this notary service free of charge if you come into the office. The costs and procedure for other states are comparable.
Occasionally, the Office of the Secretary of State will reject an application. In this event, we will notify you and ask whether you want to correct the deficiency, if possible. Any further work required for the application will involve additional fees and will be billed on an hourly basis.
Federal applications: The initial federal trademark application fee is $995 per class, and the registration process typically takes at least one year if all goes smoothly. We need much the same information and specimens for the application as with state applications. Note that for design or stylized marks, the drawing must be a 4″ x 4″, or smaller, line drawing of the mark in black and white only, with no grey shaded areas.
The process for federal registration is far more complicated than with states and will always require additional work down the road, which is billed on an hourly basis. At a minimum, we will have to review the filing receipt from the Trademark Office, the notice of publication of the mark and the issuance of the registration, track due dates, and provide information on these stages to you.
Moreover, most applications are refused at least once by the PTO, for either technical problems with the application or substantive problems with the mark. The PTO sends its objections to the application (called an “Office Action”), to which we file a “Response.” Our time required to respond to an Office Action is billed on an hourly basis.
We estimate that the processing of a “use” application will cost approximately $1,400 if there are no major problems with the application, such as a prior similar registration or a determination by the PTO that the mark does not constitute registrable subject matter, for example, that the mark is descriptive. Additional fees are involved for ITU applications to file the statement of use within six months after the PTO has issued a notice of allowance, meaning that the mark has been cleared for registration once use has been shown, or to request extensions of up to thirty additional months for the filing of the statement of use. There are fees for each extension and for filing the statement of use, once a trademark is in use. Lastly, while we will keep track of the post-registration dates on which action must be taken to preserve the registration, the client should also be certain to calendar these dates to ensure that they are not missed.