A trademark is either a word, phrase, symbol or design, or combination thereof which identifies and distinguishes the source of one party’s goods or services from those of others (people do not have to know exactly where the goods are made, just that there is a specific source).
A service mark is the same except that it identifies and distinguishes the source of a service rather than a product. 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 which protects an original artistic or literary work, or a patent which protects an invention.
Trademark rights arise from either:
- actual use; or
- filing a proper application with the Patent and Trademark Office (“PTO”) stating the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress; or
- more limited rights by filing a state trademark registration in an individual state(s).
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.” Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark, but can secure benefits beyond the rights acquired by merely using a mark, e.g., 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.
Period of protection
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.
A United States registration provides protection only in the United States and its territories. To protect a mark in other countries the owner must seek protection in each country separately under the relevant laws.
TM (trademark) or SM (service mark) and ® ( registration symbol)
Anyone claiming rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to their 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. Symbols should be omitted from the mark in the drawing submitted with your application as they are not considered part of the mark.
An applicant may apply for federal registration in 3 principal ways:
- based on existing use of a mark in commerce (“use” application);
- based on a bona fide intention to use the mark in commerce (“intent-to-use” application); and
- 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.
The application must be filed in the name of the owner of the mark, who controls the nature and quality of the goods or services identified by the mark. The owner may submit and prosecute its own application for registration, or may be represented by an attorney.
Class of goods or services
The applicant must be careful in identifying the goods and services because the filing of an application establishes certain presumptions of rights as of the filing date, and the application may not be amended later to add any products or services not within the scope of the identification. E.g., the identification of “clothing” could be amended to “shirts and jackets,” which narrows the scope, but could not be amended to “retail clothing store services,” which would change the scope. Similarly, “physical therapy services” could not be changed to “medical services” because this would broaden the scope of the identification. Also, if the identification includes a trade channel limitation, deleting that limitation would broaden the scope of the identification.
If the applicant has already used the mark in commerce and files based on this use in commerce, then the applicant must submit 3 specimens per class showing use of the mark in commerce with the application. If, instead, the application is based on intention to use the mark in commerce, the applicant must submit three specimens per class at the time the applicant files either an Amendment to Allege Use or a Statement of Use. The specimens must be actual samples of how the mark is being used in commerce, and may be identical or examples of three different uses showing the same mark. If it is impractical to send an actual specimen because of its size, photographs or other acceptable reproductions that show the mark on the goods or packaging for the goods must be furnished. Invoices, announcements, order forms, bills of lading, leaflets, brochures, catalogs, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods. If the mark is used for services, examples of acceptable specimens are signs, brochures about the services, advertisements for the services, business cards or stationery showing the mark in connection with the services, or photographs which show the mark either as it is used in the rendering or advertising of the services. In the case of a service mark, the specimens must either show the mark and include some clear reference to the type of services rendered under the mark in some form of advertising, or show the mark as it is used in the rendering of the service, for example on a store front or the side of a delivery or service truck. Specimens may not be larger than 8.5 inches by 11 inches (21.59 cm by 27.94 cm) and must be flat. Smaller specimens, such as labels, may be stapled to a sheet of paper and labeled “Specimens.” A separate sheet can be used for each class.
Intent to use
A registration may be filed based on intent to use. See notice of approval, below.
Search for conflicting marks
An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO, however, it can be useful to determine if a conflicting mark is in use. There are a variety of ways to get this type of information:
- PTO public search library located on the second floor of the South Tower Building, 2900 Crystal Drive, Arlington, Virginia 22202;
- by visiting a patent and trademark depository library;
- a private trademark search company or an attorney who deals with trademark law; or
- the internet or other electronic information services (The PTO does not conduct searches for the public).
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 (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 are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. The marks need not be identical and the goods and services do not have to be the same.
The PTO reviews an application for minimum requirements before giving it a filing date assigning a serial number and sending the applicant a receipt, typically about two months after filing. If the minimum requirements are not met, the entire mailing is returned to the applicant, including the filing fee. About four months after filing an examining attorney at the PTO reviews the application and determines whether the mark may be registered. If the examining attorney determines that the mark cannot be registered they issue a letter listing any grounds for refusal and any corrections required in the application, or they may contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter or the application will be abandoned. If the applicant’s response does not overcome all objections the examining attorney will issue a final refusal, and the applicant may appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.
Common grounds for refusal are:
- likelihood of confusion between the applicant’s mark and a registered mark;
- marks which are “merely descriptive” in relation to the applicant’s goods or services or a feature of the goods or services; or
- marks consisting of geographic terms or surnames.
Marks may be refused for other reasons as well. If there are no objections or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. The PTO will send a Notice of Publication to the applicant indicating the date of publication. In the case of two or more applications for similar marks, the PTO will publish the application with the earliest effective filing date first. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts but is held before the Trademark Trial and Appeal Board. If no opposition is filed the application enters the next stage of the registration process.
If the application was based upon the actual use of the mark in commerce prior to approval for publication, the PTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published if no opposition was filed.
Notice of allowance
If there is no opposition filed after publication, a notice of allowance will be issued.
If the mark was published based on intention to use the mark in commerce, the PTO will issue a Notice of Allowance about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the Notice of Allowance to either: (1) use the mark in commerce and submit a Statement of Use, or (2) request a six-month Extension of Time to File a Statement of Use. The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the Statement of Use is filed and approved, the PTO will then issue the registration certificate.
Solicitations Offering to Maintain Your Trademark Registration 11/22/11
Trademark applications are stored on publicly accessible databases, so private entities can identify trademark applicants, and send them these solicitations offering to maintain their trademark. Some of these solicitations are formatted to resemble official documents, but are not. Some solicitations may be for watching services, and others request fees for listing on directories of no apparent merit.
If you used trademark counsel to apply for your trademark registration, they have “watching services” for infringing uses, and will follow-up regarding the affidavit to be filed between the fifth and sixth year following registration, and again for the ten year renewal, and so these services are not required.
Following is a list prepared from such solicitations and from “warning” notices (there are undoubtedly other similar businesses not listed). I cannot comment on the legitimacy of any of the entities on this list, but you typically do not need these companies’ services:
- American Trademark Agency
- Company for Economic Publications Ltd. – Vienna, Austria
- CPI (Company for Publications and Information Anstalt, and not be confused with Computer Packages Inc. of the U.S. and the Netherlands)
- Globus Edition S.L. – Spain
- INFOCOM – Switzerland
- Publication et Information SARL – Liechenstein
- Societe pour Global Edition KFT
- TM-Collection Kft – Hungary
- TMI Trademark Info Corporation – Texas
- Trademark Renewal Service – Washington D.C.
- U.S. Trademark Maintenance Service – Houston, TX
- U.S. Trademark Protection Agency – Washington DC
- United States Trademark Protection Agency in Seattle, Washington
- United States Trademark Maintenance Service Border Protection Service located in Houston, Texas
- ZDR – Datenregister GmbH in Germany
- Globus Edition S.L. in Spain
- Company of Economic Publications Ltd. in Austria
- The Marks KFT in Hungary
- Commercial Centre for Industry and Trade located in Switzerland — CPI (Company for Publications and Information Anstalt) in Liechtenstein (a phantom company which says it works with The Publication of Brand Names of the International Economy – another phantom company)
- IDM International Data Medium AnsbH in Liechtenstein
- S.A.R.L. – Societe pour Publications et Information in Austria
- TMI Trademark Info Corporation located in Pearland, Texas
- IT&T AG in Switzerland
- Federated Institute for Patent & Trademark Registry in Coconut Creek, Florida
- Central Data Register of International Patents in Germany
- CPTD – Central Patent & Trademark Database in Austria
- European Institute for Economy and Commerce in Belgium
- INFOCom in Switzerland — International Organization for Patent & Trademark Service in USA
- Register of International Patent Bulletin in Germany
- TM Collection KPT in Hungary