Trademarks

An actual trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name used in connection with goods (e.g., Nike for shoes, Ford for automobiles, Microsoft for software). Although generally used to refer to all four classes of marks, the true nature of the trademark is as a brand identifier for actual goods alone.

Service Marks

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services. So trademarks are for goods. Service marks are for services. In reality, some of the most famous “trademarks” are actually service marks. Marks such as McDonald’s for restaurant services, American for airline services, and Google for search engine services are all service marks, not trademarks.

Certification Marks

A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

Some example of certification marks would be the Energy Star logo for energy efficient items, the Organic mark certifying certain foods to be organically grown, and the certified NSF designation.

Collective Membership Marks

A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.

What is a Use-Based Application?

A Use-Based Application is an application filed to register a trademark with the U.S. Patent and Trademark Office which is based upon the applicant’s existing use of a trademark. To file a Use-Based Application the applicant needs the owner information for the trademark, the trademark, a description of the goods or services with which it is used, the date of first use of the mark and a specimen of use. The specimen of use is a sample of how the mark is used in commerce filed with the U.S. Patent and Trademark Office. For goods, the best example of a specimen of use is a picture of the packaging in which the goods provided displaying the mark thereon (e.g., the Nike swoosh on the side of a shoe box to show use of the mark in connection with shoes). For services, specimens must show use of the mark in connection with the advertisement of the services. In this era, often the best specimen of use for services is a web page advertising those services (e.g., a screen capture from www.McDonalds.com to show use of the mark McDonalds® in connection with restaurant services.

What Constitutes Use?

For goods, use occurs when goods with the mark displayed on the goods or the packaging for the goods are sent across state lines. With services, use occurs when offering services to those in more than one state or rendering a service, which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

Can I Reserve a Trademark Before I Use It?

Yes. A trademark can be “reserved” with the U.S. Patent and Trademark Office by filing an Intent-to-Use Application for the trademark. Although an Intent-to-Use Application requires additional paperwork to be filed during the Registration Process, it permits persons to reserve a trademark for future use while their business, brand, or product line is developed.

What is an Intent-to-Use Application?

An Intent-to-Use Application is a way to reserve a trademark which is not currently in use for future use by the applicant. All that is needed to file an Intent-to-Use application is the owner information for the trademark, the trademark, a description of the goods or services with which it is used, as well as a statement that the applicant has a bona fide intent to use the trademark in the future. Unlike a Use-Based Application, if an Intent-to-Use Application is approved for publication and published without opposition it does not proceed forward to registration. Rather, U.S. Patent and Trademark Office issues a Notice of Allowance permitting the applicant six months to file a Statement of Use (See Below) establishing that the trademark is now used in commerce.

If at the end of the sixth-month period following the issuance of the Notice of Allowance the Applicant is still not using the mark in commerce the applicant may file an Extension of Time in Which to File a Notice of Allowance (See Below).

Up to 5 Extension(s) of Time in Which to File a Notice of Allowance may be filed for a single Intent-to-Use Application. Each extension grants the applicant another 6 months to file the Statement of Use to establish use of the trademark in commerce.

In sum, adding up all extensions of time an Intent-to-Use Application may utilize from the date it receives its Notice of Allowance an applicant may have up to three years in which to use its mark and file a Statement of Use. If the mark is not in use or if no Statement of Use is filed within an extension period the Application will be Abandoned (See below) and lost forever.

What is a Notice of Allowance?

A Notice of Allowance is issued by the U.S. Patent and Trademark Office once an Intent-to-Use Application has met all requirements for registration (e.g., no Substantive Refusals, Publication for Opposition without opposition, etc.) save for one: use of the mark in commerce. Once a Notice of Allowance is issued the trademark will be “allowed” for registration once the applicant files an acceptable Statement of Use with supporting Specimen(s) of Use.

What is an Extension of Time in Which to File a Statement of Use?

Once an Intent-to-Use Application receives its Notice of Allowance the applicant has 6 months from the date of the Notice of Allowance in which to file a Statement of Use or an Extension of Time in Which to File a Statement of Use. The extension of time permits the applicant to have another six (6) months in which to file its Statement of Use. If the trademark is still not in use at that time the applicant may request a second Extension of Time in Which to File a Statement of Use. In all, five Extension(s) of Time in Which to File a Statement of Use will be permitted.

What is a Statement of Use?

A Statement of Use is the filing which converts an Intent-to-Use Application into a Use-Based Application. It may only be filed after receipt of the Notice of Allowance but MUST be filed within the expiration of the sixth-month period after expiration of the Notice of Reliance or most recent extension request.

What is an Office Action?

An Office Action is official correspondence from the U.S. Patent and Trademark Office sent to an applicant or their counsel concerning Procedural Refusals, (See Below) Substantive Refusals (See Below), or both. The U.S. Patent and Trademark Office permits applicants six months to respond to an Office Action although the sooner a response is filed the faster the application may register. If no response is filed within the response period, the application will be deemed Abandoned.

What is a Procedural Refusal?

A Procedural Refusal is when the U.S. Patent and Trademark Office issues an Office action requesting that the applicant clarify some aspect of the application but not refusing to register the mark on substantive grounds (See Substantive Refusal Below). Typical Procedural Refusals involve clarification of the goods or services with which the mark is used, submitting a better quality of specimen of use, or clarification of the owner of the mark. Through our proprietary business methods, The Trademark Company’s clients receive fewer procedural refusals equating to reduced registration time.

What is a Substantive Refusal?

A Substantive Refusal is a refusal issued by the U.S. Patent and Trademark Office for matters which could block the registration of an applicant’s trademark. Although there are many diverse Substantive Refusals (e.g., the trademark is immoral or scandalous, is merely a surname, or is the name of a living individual whose consent for the trademark is not of record) the primary Substantive Refusals are that the trademark is (1) likely to cause confusion with a previously registered mark or (2) is merely descriptive of the goods or services with which it is used. Concerning a likelihood of confusion, the two most relevant factors in such a determination is the similarity of the trademarks and the similarity of the goods or services. The more similar the trademarks are and the goods or services with which they are used the more likely the applicant’s trademark will be refused. Concerning mere descriptiveness, the U.S. Patent and Trademark Office will refuse to register a trademark if it is merely descriptive of the applicant’s goods or services (e.g., RED SHOES for shoes which are red, DENTIST OFFICE for dental services). Even if rejected, The Trademark Company’s skilled professional can often argue our customers’ marks through to registration past these refusals through our tried and tested innovative ways. Moreover, our Platinum Package pre-clears your mark for registration with our customers Money Back Guarantee should any Substantive Refusal be issued.

What is a Final Office Action?

If in responding to an Office Action the examining attorney does not feel that all issues (Procedural Refusal(s) or Substantive Refusal(s)) have been addressed adequately he or she will issue a Final Office Action. A Final Office Action, in short, states that the trademark is being finally refused for registration by the U.S. Patent & Trademark Office.

What can be Done to Overcome a Final Office Action?

There are two ways an applicant can respond to a Final Office Action. First, an applicant can respond directly to the examining attorney’s requirements or refusal in the Final Office Action by submitting a Request to Reconsider the Final Office Action. Second, the applicant may appeal the refusal to register the mark directly to the Trademark Trial and Appeal Board (See Below). Note, a Request to Reconsider the Final Office Action or a Notice of Appeal to the Trademark Trial and Appeal Board must be filed within 6 months of the issuance of the Final Office Action or the application will be abandoned. Additionally, a Request to Reconsider the Final Office Action does not extend the time to file a Notice of Appeal to the Trademark Trial and Appeal Board. If you receive a Final Office Action contact us to see if we can help.

What is Abandonment?

If an applicant does not take required action within the time allowed to do so (e.g., respond to an Office Action within six months of the same being issued, file a Statement of Use or Extension of Time in Which to File a Statement of Use within six (6) months of receipt of a Notice of Allowance) the application will be abandoned. A Notice of Abandonment will be mailed to the applicant. Quite literally this means that the application is dead, will not register, and will receive no further consideration from the U.S. Patent and Trademark Office.

Can an Abandoned Application be Revived?

Yes. A Petition to Revive the application can be filed with the U.S. Patent and Trademark Office within two (2) months of the Notice of Abandonment being issued. Note, at the time all Substantive Refusals, Procedural Refusals, or other matters which led to the abandonment of the application must also be responded to.

What is a Certificate of Registration?

The document which is provided to you once your mark is registered noting all information pertinent to your registration (e.g., the mark, the goods or services with which it is used, the owner of the mark, etc.)

How long does it take for a mark to be registered?

It is difficult to predict how long it will take for an application to mature into a registration, because there are so many factors that can affect the process. If the trademark is filed as a Use-Based Application it will take less time to mature into registration than if it is filed as an Intent-to-Use Application. See the Trademark Registration Process for more information concerning this topic.

When is it proper to use the federal registration symbol ® with the mark?

The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. But note, several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Thus, use of the symbol by the holder of a foreign registration may be proper even if that holder does not retain a U.S. registration.

How long does a trademark registration last?

For a trademark registration to remain valid it must be periodically renewed. For Trademark Renewal, an Affidavit of Use (“Section 8 Affidavit”) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. The registrant must also file a Section 9 Renewal Application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.

Can the ownership of a trademark be assigned or transferred from one person to another?

Yes. A registered mark, or a mark for which an application to register has been filed is assignable. Trademark Assignments should be recorded in the U.S. Patent and Trademark Office.

Is a U.S. Federal Registration Valid Outside the U.S.?

A U.S. Federal Registration only protects your mark here in the U.S. However, any trademark owner with an application filed in or a registration issued by the U.S. Patent and Trademark Office can extend protection of that trademark into over 71 other countries through a treaty known as The Madrid Protocol.

Do I Have To Register a Trademark to Use a Trademark?

No. However, federal registration has several key advantages which make it important to obtain a registration especially to Enforce a Trademark and preclude others from using your mark or similar marks thereto. A federal trademark registration provides:

Constructive notice nationwide of your claim of ownership of a trademark;
Evidence of ownership of the trademark;
Jurisdiction of federal courts to Enforce a Trademark may be invoked;
Registration can be used as a basis for obtaining Registration in Foreign Countries;
Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

What is the Trademark Trial and Appeal Board?

The Trademark Trial and Appeal Board is the internal court of the U.S. Patent and Trademark Office. It is responsible for hearing Opposition and Cancellation proceedings as well as appeals of refusals to register marks from examining attorneys.

What is a Notice of Opposition?

A Notice of Opposition is a filing which starts an Opposition Proceeding before the Trademark Trial and Appeal Board (See Below). In an Opposition Proceeding a party may object and try to stop another’s registration of a mark by filing a Notice of Opposition thereto. The person who files the Notice of Opposition is called the Opposer.

The person whose mark is opposed is merely referred to as the Applicant.

Typical grounds for an opposition proceeding are that the applied-for trademark is likely to cause confusion with the Opposer’s trademark or that the applied-for mark is merely descriptive of the Applicant’s goods or services.

The Opposition Proceeding may be defended like any trial-like proceeding.

An Opposition Proceeding typically takes approximately eighteen (18) months from start to finish but most cases settle between the parties after only a few months.

What is a Petition to Cancel?

A Petition to Cancel is a filing which starts a Cancellation Proceeding before the Trademark Trial and Appeal Board (See Below). In a Cancellation Proceeding a party may object and try to have cancelled another’s continued registration of a trademark by filing a Petition to Cancel the same. The person who files the Petition to Cancel is called the Petitioner. The person whose trademark is petitioned to be cancelled is called the Registrant. Typical grounds for a cancellation proceeding are that the registered trademark is likely to cause confusion with the Petitioner’s trademark or that the registered trademark is merely descriptive of the Registrant’s goods or services. The Cancellation Proceeding may be defended like any trial-like proceeding. Like an Opposition Proceeding, a Cancellation Proceeding typically takes approximately eighteen (18) months from start to finish but most cases settle between the parties after only a few months.

What Do I Do If I Receive a Notice of Opposition or Petition to Cancel?

Once a Notice of Opposition or Petition to Cancel a trademark is received the Trademark Trial and Appeal Board sets a time to file an Answer in the case which is generally forty (40) days from the date of filing of the matter. If no Answer is filed within that period, the Trademark Trial and Appeal Board will issue a Show Cause Order as to why the Opposer or Petitioner should not win by default. If no response is filed within the time allotted to the Show Cause Order the Trademark Trial and Appeal Board will decide the case in the favor of the Opposer or Petitioner and either refuse to register the pending application or cancel the registered trademark. If you receive a Notice of Opposition or Petition to Cancel Contact Us and we can help you understand when these important dates are in your specific matter and what we can do to assist you in answering and defending the same.

How do I stop or cancel the registration of someone else’s trademark?

Just as other parties may challenge or move to cancel your trademark registration so to can you challenge or move to cancel other trademarks. To see whether you have a case to oppose an application from registering or a registration for continuing to be registered Contact Us today for a free consultation.

Why Have The Trademark Company Prepare and File my Mark?

Should a Trademark Search Be Performed to Make Sure my Trademark is Available Before I File an Application to Register the Trademark or Begin Use Thereof?