Trademarks

What Is A Trademark?

A trademark is a recognizable symbol, design, logo, phrase, word, or combination of these elements, which is used to identify and distinguish a particular brand or product from those of others. It is used to protect the unique identity and reputation of a business and its products or services. Trademarks can be registered with the United States Patent & Trademark Office (USPTO) in order to receive legal protection, which can prevent others from using similar symbols, logos, or names in the marketplace that might confuse consumers or harm the reputation of the original business. A trademark owner has exclusive rights to use the trademark in connection with the goods or services for which it is registered, and can take legal action against others who use similar marks without permission. Trademarks are valuable assets for businesses and can be sold or licensed for use by others.

What Are The Different Types of Trademarks That May Be Registered?

There are 6 types of trademarks that may be registered with the USPTO:

• Trademarks: A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.
• Service Marks: A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Service marks are similar to trademarks, but are used to identify and distinguish a service rather than a product. Service marks can include logos, taglines, or other elements that help identify the source of a service, and they can be registered with the USPTO to provide the owner with legal protection and exclusive rights to use the mark in connection with the services for which it is registered. Like trademarks, service marks serve to protect the unique identity and reputation of a business and its services, and to provide consumers with a means of identifying the origin of the service.
• Trade Dress: Trade dress refers to the overall appearance of a product or its packaging, including its shape, color, graphics, and other design elements. Trade dress can be a key factor in the distinctive look and feel of a product, and can play an important role in creating and maintaining the reputation of a brand. In order to be protectable as trade dress, the overall appearance of a product or its packaging must be non-functional and must be distinctive and capable of identifying the source of the goods. Trade dress can be registered with the USPTO, providing the owner with legal protection and the exclusive right to use the trade dress in connection with the goods for which it is registered. This helps to prevent others from using similar trade dress and confusing consumers as to the source of the goods.
• Collective Marks: A collective mark is a trademark or service mark used by members of a cooperative, an association, or other collective group or organization. Collective marks are used to identify and distinguish the goods or services of members of a particular group or organization, such as a trade association or cooperative. The use of a collective mark indicates that the goods or services are provided by members of the group and meet certain standards or criteria established by the group. Collective marks are typically owned by the group or organization and are used to promote the goods or services of the members. Collective marks help to promote the quality and reputation of the goods or services provided by the members of the group, and provide consumers with a means of identifying the origin of the goods or services.
• Certification Marks: A certification mark is a trademark or service mark used to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone else’s goods or services. Certification marks are used to certify that the goods or services of others meet certain standards or criteria established by the owner of the mark. They differ from other types of trademarks in that they are used to certify the quality or characteristics of the goods or services of others, rather than to identify the source of the goods or services. Certification marks serve to promote the quality of goods or services and to provide consumers with a means of identifying goods or services that meet certain standards or criteria. They also help to enhance the reputation of the owner of the mark by demonstrating a commitment to quality and accuracy in the goods or services that are certified.
• Trade Names: A trade name is typically used to refer to the name of a business or company, and is sometimes used interchangeably with doing business as (DBA) name or fictitious business name.  Registering a trade name can help protect the name and prevent others from using it in a manner that would cause confusion or lead consumers to believe that the business is affiliated with another company.

Trademarks & The Spectrum of Distinctiveness

The Spectrum of Distinctiveness is a framework used by the USPTO to classify trademarks based on the degree of distinctiveness or how easily a trademark can be recognized as serving as a source indicator for goods or services. The Spectrum of Distinctiveness ranges from generic terms, which are not registrable as trademarks, to fanciful or arbitrary marks, which are the most distinctive and easily registrable.

The categories of the Spectrum of Distinctiveness, in order of increasing distinctiveness, are:

• Generic: A generic term is the common name of the goods or services and cannot serve as a trademark. For example, “coffee” cannot serve as a trademark for coffee.
• Descriptive: A descriptive term describes a characteristic or quality of the goods or services and can only become distinctive and registrable as a trademark if it has acquired secondary meaning, meaning that consumers associate the term with a particular source.
• Suggestive: A suggestive term suggests, but does not describe, a characteristic or quality of the goods or services and is considered inherently distinctive and registrable without proof of secondary meaning.
• Arbitrary: An arbitrary term is a word that has a common meaning, but has no relationship to the goods or services and is considered inherently distinctive and registrable. For example, “Mayhem” as a trademark for Surfboards.
• Fanciful: A fanciful term is a made-up word that has no meaning other than as a trademark and is considered the most distinctive and easily registrable. For example, “Billabong” as a trademark for surf apparel and accessories.

By classifying trademarks into these categories, the USPTO helps to determine the registrability of a trademark and the level of protection that can be provided. Trademarks that are more distinctive, such as fanciful or arbitrary marks, are more easily registrable and enjoy a broader scope of protection, while generic and descriptive marks face greater obstacles to registration and may be more limited in the scope of protection they can receive.

How To Select A Trademark For Registration With The USPTO

The following is a step-by-step process of selecting a trademark to be registered with the USPTO:

• Choose a Distinctive Trademark: The more distinctive a trademark is, the easier it is to register and the stronger its protection will be. Choose a trademark that is fanciful, arbitrary, or suggestive, as these types of trademarks are considered the most distinctive. Descriptive trademarks may be eligible for registration if they have acquired secondary meaning, meaning that consumers associate the term with a particular source.
• Consider the Goods or Services: The trademark must be related to the goods or services for which it will be used. Consider the goods or services you offer and choose a trademark that accurately reflects the nature of your business.
• Conduct a Trademark Search: After selecting a trademark, it is important to conduct a comprehensive trademark search to ensure that the proposed trademark is available for use and registration. It is highly suggested that the trademark search be conducted by a trademark attorney.  Many people make the costly mistake of trying to conduct a trademark search by solely using the USPTO Tess database. Unless you are a master at boolean searches, it is highly likely that your searches will not identify all of the appropriate pending and registered trademarks that may conflict with your proposed trademark.  Remember, you are not only identifying identical trademarks, but all trademarks that are similar and cover related goods are/or services.

By following this process, you can increase the chances of successfully registering a trademark with the USPTO and protecting your brand.

Should I Hire A Trademark Attorney To Conduct A Trademark Search?

The USPTO strongly suggests that any person or entity seeking to register a trademark consult with a trademark attorney.  As such, it is recommended to consult with a trademark attorney for a thorough trademark search, especially if you are unfamiliar with the process or have concerns about the availability of your proposed trademark. A trademark attorney can provide guidance on the availability of the proposed trademark, the strength of the trademark, and the likelihood of success in registering the trademark. They can also advise you on the best course of action if any issues arise during the trademark search or registration process. In addition, a trademark attorney can assist in preparing and filing a trademark application, responding to any objections or objections from the USPTO, and enforcing your trademark rights.

Two Types of USPTO Trademark Applications

The USPTO offers two types of trademark applications:

Both types of trademark applications are processed in the same manner by the USPTO, and both require a fee for filing. However, the use-based trademark application has some advantages over the intent-to-use trademark application, such as a shorter processing time and a greater likelihood of success in registering the trademark.

• Use-Based Trademark Application: A use-based application is filed when the trademark is already in use in commerce. This type of application requires that the trademark be used on or in connection with the goods and services specified in the application. The trademark must be in use in commerce before the application is filed, and the applicant must provide a specimen (or evidence) showing how the trademark is used in commerce.
• Intent-To-Use Trademark Application: An intent-to-use application is filed when the trademark has not yet been used in commerce but the applicant has a bona fide intent to use the trademark in the future. This type of application allows the applicant to reserve a trademark before actually using it in commerce. After the application is approved, the applicant must file a statement of use or an amendment to allege use within a certain time frame to show that the trademark is in use in commerce.

What To Expect During The Federal Trademark Application Process With The USPTO

The federal trademark registration process with the United States Patent and Trademark Office (USPTO) can be described in the following steps:

• Conduct a Trademark Search: Before filing a trademark application, it is important to conduct a comprehensive search to determine if the trademark you want to register is available and not already in use. A trademark search can be done online or through a trademark attorney, who can conduct a more thorough search.
• Choose the Appropriate Trademark Application: The USPTO offers two types of trademark applications: use-based and intent-to-use. The choice of application will depend on whether the trademark is already in use in commerce or not.
• Prepare and File the Trademark Application: The trademark application must include a description of the goods and/or services that the trademark will be used for, a representation of the trademark, and the fee for filing.
• Examination by the USPTO: After the application is filed, it will be reviewed by an examining attorney at the USPTO. The examining attorney will determine if the trademark meets all requirements for federal registration, including distinctiveness and compliance with the Trademark Act.
• Respond to Office Actions: If there are any legal problems with trademark or issues with the trademark application, the USPTO examining attorney will issue an office action, which must be responded to within three months. The office action may also require the applicant submit additional information or a change to the trademark description or representation.
• Publication: If the trademark application meets all requirements, it will be published in the Official Gazette, a weekly publication of the USPTO, to give the public notice of the trademark application.
• Opposition: After publication, any person who believes that the trademark should not be registered can file an opposition to the trademark application. The opposition process is conducted through the Trademark Trial and Appeal Board (TTAB) and can be a lengthy and complex process.
• Registration: If the trademark application is approved and no opposition is filed, the trademark will be registered and a certificate of registration will be issued.

This is a general overview of the federal trademark registration process with the USPTO. It can be a complex and time-consuming process, and it is recommended to consult with a trademark attorney to ensure a successful outcome.

What Are The Most Common USPTO Office Actions Issued To Trademark Applicants?

The USPTO may issue refusals or objections to trademark applications for a variety of reasons. Some of the most common trademark refusals include:

• Likelihood of Confusion: The trademark is similar to another trademark already registered or pending registration, creating a likelihood of confusion among consumers.
• Descriptiveness: The trademark describes the goods or services, rather than serving as a source indicator for the goods or services.
• Genericness: The trademark is a common name for the goods or services, rather than a source indicator.
• Merely Ornamental: The trademark is used merely as ornamentation and does not serve as a source indicator for the goods or services.
• Deceptive: The trademark is misleading or deceptive as to the nature, quality, or origin of the goods or services.
• Functional: The trademark is functional and cannot be trademarked because it is essential to the use or purpose of the goods or services.
• Lack of Distinctiveness: The trademark is not distinctive and does not function as a source indicator for the goods or services.
• Illegal or Scandalous Matter: The trademark includes matter that is illegal or scandalous.
• Failure to use the Trademark in Commerce: The trademark has not been used in commerce or the specimen of use provided with the application is unacceptable.

These are some of the most common trademark refusals issued by the USPTO. It is important to carefully review the requirements for federal trademark registration before filing an application to avoid these and other objections to your trademark application.

How Common Are Trademark Oppositions?

The frequency of trademark opposition filings varies, but it is not uncommon for a third party to file an opposition against the registration of a trademark application with the USPTO. A trademark opposition is a legal proceeding that takes place after the trademark has been published for opposition and allows interested parties to challenge the registration of the trademark.

Oppositions can be filed for a variety of reasons, including confusion with an existing trademark, a belief that the trademark is descriptive or generic, or a belief that the trademark is scandalous or immoral. The opposition process can be time-consuming and expensive, and often requires the involvement of a trademark attorney.

It is difficult to quantify the exact percentage of trademark applications that result in an opposition, as it can depend on a variety of factors, such as the type of goods or services involved, the strength of the trademark, and the competitiveness of the trademark landscape. However, it is important to thoroughly research and consider potential conflicts with existing trademarks before filing a trademark application to reduce the risk of opposition.

Do I Need To Maintain My Trademark Registration Once It Is Registered With The USPTO?

Yes, you need to maintain your trademark registration once it is registered with the USPTO. The registration of a trademark is only the first step in protecting your trademark rights. In order to keep your trademark registration active and enforceable, you need to take certain steps to maintain your trademark registration. These steps include using the trademark in commerce and renewing your trademark registration with the USPTO on a regular basis. The USPTO requires that you file certain trademark maintenance documents between the 5th and 6th year anniversary of the date your trademark was registered.  Failure to file these maintenance documents will result in the automatic cancellation of your trademark registration.

Failure to properly maintain your trademark registration can result in the cancellation or forfeiture of your trademark rights. For this reason, it is important to understand the requirements for maintaining a federal trademark registration with the USPTO and to take steps to comply with these requirements.

When Do I Need To Renew My Trademark Registration?

Trademark registrations must be renewed every ten years with the USPTO. The exact renewal deadline is based on the date of initial registration. It is important to timely renew your trademark registration, as failure to renew your trademark registration can result in the cancellation or forfeiture of your trademark rights. In some cases, you may be able to revive a forfeited trademark registration, but this process can be time-consuming and expensive, and there is no guarantee of success.

Additionally, even if your trademark is still in use and you are still selling goods or services under that trademark, you must still renew your trademark registration with the USPTO in order to maintain your trademark rights.

Do I Need To Police The Marketplace For Suspected Trademark Infringers After Receiving My Trademark Registration?

Yes, you need to police the marketplace for suspected trademark infringers after receiving your trademark registration. As the owner of a registered trademark, it is your responsibility to enforce your trademark rights and prevent others from using your trademark or a confusingly similar trademark in connection with similar goods or services.

This includes monitoring the marketplace for suspected trademark infringers and taking appropriate action to stop any unauthorized use of your trademark. The action that you take may include sending cease-and-desist letters, negotiating a resolution, or filing a lawsuit, depending on the circumstances.

Enforcing your trademark rights is important because it helps protect the strength and value of your trademark. If you do not take action to stop unauthorized use of your trademark, you may risk losing your trademark rights through a legal doctrine known as “trademark abandonment.” Additionally, if you wait too long to take action, you may be barred from pursuing a remedy for infringement due to the legal principle of “laches.”

For these reasons, it is important to take the enforcement of your trademark rights seriously and to police the marketplace for suspected infringers on an ongoing basis. If you have any questions or concerns about enforcing your trademark rights, you may wish to consult with a trademark attorney who can provide you with guidance and assistance.

Should I Hire A Trademark Attorney?

Yes, it is highly recommended. Our experienced trademark attorneys can provide valuable guidance and support throughout the trademark registration process, from conducting a comprehensive trademark search to determine the availability of the trademark, to preparing and filing the trademark application, to responding to any objections or challenges that may arise during the review process, and can represent you in any legal disputes or opposition proceedings.

Furthermore, our trademark attorneys can help you to navigate the complex and sometimes confusing legal requirements for trademark registration, and can help you to ensure that your application is complete and meets all of the necessary legal requirements. We can also help you to properly maintain your trademark registration, which is an ongoing process that requires ongoing monitoring and enforcement.

In short, engaging our trademark attorneys can help you to ensure that your trademark application is properly prepared, that it meets all of the legal requirements, and that you receive the full benefits of trademark protection. While it may cost more upfront to engage us, it can often save you time and money in the long run because we can help you avoid costly mistakes and ensuring that your trademark application is successful.

If you would like to contact us to discuss your trademark matter, give us a call or fill out our online contact form – it only takes a few seconds. Once you send your message, one of our attorneys will contact you within one business day.