Trademarks - A General Overview

A trademark is a word, symbol, name, or device, or some combinations of these things, that is used in connection with goods or services to identify the source of the goods or services. Trademarks can also in some cases be colors (e.g., UPS brown), sounds (e.g., the sound mark of the MGM lion's roar), scent (e.g., the scent of Play-Doh), and motion (e.g., the Lamborghini upward door swing). Trademarks are source identifiers that tell the consumer who has provided the goods or services. A trademark that has recognition among the consuming public provides an indication of the quality that can be expected by the consumer. A service mark is used in connection with services, but both service marks and trademarks are referred to generally as "trademarks". A trademark or service mark can serve to distinguish the source of goods or services of one party from those of other parties, which becomes part of the goodwill of a business.

Trademark law is different from other forms of intellectual property (e.g., patents or copyrights) in that there are both state and federal trademark laws that affect the rights of trademark owners. Trademark owners can establish trademark rights by simply using a trademark in connection with goods and services without any form of trademark registration. These trademark rights are generated ipso facto by the use of the trademark. These rights are referred to as common law trademark rights. The rights of the trademark owner can be improved through trademark registration.

Businesses can establish common law trademark rights (unregistered trademark rights)are legally enforceable trademark rights that are created by virtue of use of the trademark in commerce (sales of goods and services). However, these rights are limited to the geographic area in which the trademark is used - where the sales are made and the goods and services are provided. Unregistered trademarks can be enforced under both state and federal trademark laws. However, many of the remedies available to owners of registered trademarks are not available to an owner of an unregistered trademark. Thus, it is highly recommended that trademark owners pursue the trademark registration process.

State governments offer registration of trademarks for intrastate commerce. State trademark registrations provide exclusive rights within the state and some state statutory remedies and benefits and vary from state to state. However, state trademark registrations do not provided many of the benefits of a federal registration, including a presumption of the nationwide, exclusive right to use the mark and the lawful use of the ® symbol. A trademark holder may opt for a state registration if they do not participate in or affect interstate commerce or there is another technical reason why they cannot pursue a federal trademark registration (e.g., the goods are cannabis related).

A qualifying trademark or service mark may be registered with the United States Patent and Trademark Office (USPTO), which provides several advantages to the holder of the federally registered mark. Among those are: a legal presumption of ownership of the mark and the exclusive right to use the mark nationwide on the listed goods or services; the right to use the ® symbol in connection with the mark; a priority date for filing an international registration under the Madrid System; a basis for registering with the Custom and Border Patrol to prevent importation of infringing goods or services; and the opportunity to recover increased damages and attorney fees in the event of a willful infringement. US trademark rules allow for two types of trademark applications that can be filed with the US trademark office: current use trademark applications and intent-to-use (ITU) trademark applications.

A current use trademark application is somewhat self explanatory - it requires that the mark is in use in commerce as of the filing date of the application. The trademark must be applied to the goods and services listed in the trademark application and sales must be made before the current use application is filed. A specimen of use (an example of the how the mark is used on the goods and services) must be provided with the application.

The trademark office also allows a trademark application to be filed prior to establishing use of the trademark, if the applicant has a bona fide intention to use a mark. A bona fide intent means that you have real plans to use the trademark, evidenced by a business plan, market research, or other real action toward the use of the trademark in commerce. Trademark law does not allow someone to simply reserve trademark rights by filing an ITU application. Such a trademark application is invalid.

Trademarks are not registerable under federal law unless the mark is used in interstate commerce. In order to be properly used in interstate commerce, the provision of goods or services must be across state lines or to a foreign territory or country under the mark, or the use of the mark in connection with the goods or services must affect interstate commerce. Intrastate sales and transactions can affect interstate commerce if the goods and services are provided in state to out-of-state customers (e.g., travelers). In order for a proper determination as to whether the mark owner is engaging in interstate commerce requires a extensive knowledge of trademark law.

Once an application is filed wit the United States Patent and Trademark Office, it is routed to an examining attorney in the trademark office that evaluates the application. The examining attorney conducts a trademark search to find any conflicting marks in the USPTO database of previously submitted trademarks. The examining attorney will evaluate the search results to determine whether any of the searched trademarks are confusingly similar to the applicant's mark. A mark that is confusing to any previously registered trademarks or prior trademark applications, it cannot be registered. There are a number of factors that are evaluated to determine whether a mark is confusingly similar to an earlier trademark filing, including the sight, sound, and meaning of the marks. The examining attorney will also evaluate the formalities of the application to determine whether the formal requirements are met. The examining attorney must also determine whether the trademark has other issues, such as the mark is descriptive of the goods and services, the mark is geographically descriptive, the mark is primarily a surname, or the mark is generic.

If there are issues that need to be resolved before the mark is approved for registration, the examining attorney will issue an office action identifying the issues that must be addressed before the mark can be registered. A response to the office action addressing all of the identified issues must be filed with the trademark office. If the issues are not resolved in the opinion of the examining attorney, a further office action may be issued. If the Applicant is able to overcome the issues and the examining attorney approves the application, a notice of allowance will be issued. If the Applicant is not able to convince the examining attorney, the Applicant can appeal the application to the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative court, which will hear the positions and arguments of the applicant and the examining attorney as opposing parties and rule on whether the applicant is deserving of a registered mark.

All allowed trademark applications are published in the trademark official gazette for a 30-day period to put the public on notice that the mark will be registered, unless an opposition is filed by another party that believes that their rights will be affected by the registration of the mark. An opposition is a proceeding before the TTAB. It is an administrative trial that requires pleadings, discovery, briefing, and a limited trial.

The process for applying for US trademark protection can be challenging and complicated. An experienced attorney should be consulted at the earliest possible opportunity to represent, assist, and guide the applicant through the application process.

If the mark passes through the opposition period without a successful opposition, a registration will be issued. The registration process may take 1-2 years, but at the end of the process the applicant has a registration that provides valuable legal protection for the mark. There are numerous benefits provided by the registration, including the nationwide exclusive right to use the mark in connection with the applied-for goods and services. The trademark protection provided by the registration is a critical asset for a business, particularly when the registered trademark is the business name.

In order to take full advantage of a registered trademark, the mark owner should take the following steps:

          -  The ® registration symbol should be used next to registered trademarks on the relevant goods and related advertising. The ® symbol serves to provide constructive notice of the registered trademark to everyone transacting business within the US. Any party engaging in commerce within the United States and its territories will be liable for trademark infringement if they use any similar trademarks, even if they had no knowledge of the trademark or the registration;

          -  US trademark law does not allow the use the ® symbol without a registration. The TM and SM symbols should be used with trademarks for which no federal registration has been issued.

          -  The USPTO's trademark database and unregistered trademark use should be monitored for similar trademark usage. Trademarks must be enforced in the case of trademark infringement in order to maintain trademark protection. Failure to enforce a registration against infringements can result in a loss of rights. Trademarks may become undermined due to the use of similar trademarks in commerce. For example, at one point the word "escalator" was a registered trademark of the Otis Elevator Company (OEC). OEC failed to enforce the "ESCALATOR" registration against competitors the mark became the term commonly used by consumers to refer to escalating stair devices. The registration and all trademark rights in the ESCALATOR mark were lost. This phenomenon is called genericide, and it results in a total loss of rights in the generic mark. Thus, it is very important that the owner of registered mark be pro-active in enforcing its intellectual property rights.

          - The owner of a registration must observe the registration renewal deadlines. There are periodic filings that are required to confirm continued use of the mark in commerce. These filings include a declaration of use that is due 6 years after the registration issues along with additional fees to the USPTO. Also, trademark renewals are due every 10 years after the original date of registration. Failure to observe these deadlines results in the abandonment and loss of the registration.

Business names and product names are critical assets to companies and entrepreneurs. The process of developing and registering intellectual property assets is complex and requires expertise. The attorneys at Sierra IP Law can help secure trademark protection for your business name and brand. Without registering its trademarks, a business is vulnerable to opportunistic use its trademarks. Registrations provide exclusivity of the name and brand that a business has built through investment of time, energy, and funds.    

Trademark registrations are an invaluable tool for protecting the brand and reputation of a business. While many businesses attempt to pursue trademark registrations without the assistance of an attorney, there a many subtleties in the requirements, rules, and process for obtaining a registration that may prove treacherous for the unwary. The USPTO regularly recommends that applicants seek the assistance of an experienced attorney in pursuing a trademark registration, and provides explanations of the benefits of hiring a trademark attorney here. Contact us for a free consultation with an experienced intellectual property professional.