Trademark protection is available for designs, slogans, phrases, and other expressions that consumers identify with the company and its products or services. They exist for the consumer’s benefit – so that the consumer may identify the
producer of the goods they seek to obtain. The goods or services that businesses offer in association with their brands
only achieve acclaim as a result of marketing, investing in online advertising, and years of establishing a reputation.
Too often, brand owners are surprised by the realization that they may not own the brand they worked diligently to
build. For these reasons and many others, protecting trademarks is a vital step to safeguard the value of a business.
The United States federal trademark registration process provides additional benefits to deter a third-party from fraudulent and unauthorized uses of a mark. A company or institution is not required to register a trademark with the United States Patent and Trademark Office. But, while Federal law prevents other companies from using the same, or similar, marks, there are a number of great reasons to file an application. For example, registration puts others on notice that your mark is legally protected. In the event that a competitor infringes on the trademark, registration is helpful in court to prove that you have the sole right to use the mark. Equally important is the fact that the United States is a “first to file” country when it comes to trademark rights and often failing to get your trademark on the register before another user can result in the loss of significant rights.
The first step in registering a trademark involves searching existing marks and common law users. This provides vital
business intelligence on competition that may be using the same or similar marks. While conducting a basic investigation
of the brand seems simple, an actual attorney-reviewed professional search will uncover phonetic equivalents, foreign
language marks, and an array of other issues that non-lawyers typically do not discover.
What Does a Trademark Protect?
Trademark registration guarantees that you hold the exclusive legal rights and benefits in the United States that are
afforded federal trademark law. It is one of the last legally protective monopolies in the United States, and one that
you should take advantage of. Being the first to register a mark provides numerous benefits, including (i) nationwide
notice of your claim to the mark, (ii) litigation advantages if your trademark is challenged, and (iii) prevention of a
third-party’s registration of the confusingly similar mark. Likewise, under the Madrid Treaty, United States trademark
registrations entitle the registrant to file in any or all of more than 90 countries internationally, relying on the
United States trademark as a basis for the foreign trademark registration (occasionally called the Madrid Protocol).
Why Do You Need a Trademark Attorney?
A trademark litigation lawyer is a key to ensuring that the trademark is registered and that infringers and held accountable.
Is it Trademarkable?
A mark must meet certain requirements in order to be eligible for protection under federal trademark law. First, the
mark must be unique and distinctive. The design, slogan or phrase cannot be identical or significantly similar to an
existing mark. A trademark litigation lawyer can research to certify that a certain mark is not already taken before filing an application with the Patent and Trademark Office.
Generic terms and those that simply describe a product or service are typically ineligible for trademark protection.
Protection is not afforded to generic terms because the words are so often used in ordinary language that they are
incapable of becoming unique or distinctive. Similarly, descriptive terms can only be trademarked if they are used and advertised to the effect that consumers come to associate the terms with the brand, product or service.
A company or institution whose trademark registration application is rejected has the right to appeal that decision.
The Trademark Trial and Appeal Board is a three-judge panel that reviews decisions by USPTO examining attorneys. Evidence and arguments are considered by the TTAB from both sides during an appeal prior to determining whether to uphold or overturn a denial of registration for a particular mark.
Trademark Rejections and Trademark Office Actions
Office actions are a type of response you may receive from the U.S. Patent and Trademark Office (USPTO) regarding your trademark application. The USPTO outlines issues with the
application that need to be addressed prior to granting registration. The issues cited in an Office Action can range
from simple disclaimers to complex likelihood of confusion refusals, citing multiple marks. Furthermore, the response to
an Office Action can affect the scope of the trademark’s final registration. It is important to respond to an Office Action with a complete understanding of the issues and response options. The attorneys at Barshay Sanders are experienced in these matters, and understand the host of potential direct response options, and even some indirect legal options (such as attempting to cancel an opposing mark or seeking concurrent use).
Trademark Trial and Appeals Board Cases
The Trademark Trial and Appeal Board (TTAB) acts as a court of law for trademark registration matters within the USPTO. The trademark judges may determine your right to register a trademark, yet cannot rule on issues of infringement, damages, unfair competition or whether or not you have the right to use a trademark. We can advise, manage, and defend or prosecute TTAB cases in an efficient and intelligent manner
Domestic Registration of Trademarks
Certain states have specific requirements for trademark registration. Domestic trademark infringement typically occurs when an existing trademark in another state is not discovered due to an incomplete trademark review or search. Litigation may be necessary when disputes arise regarding the markets involved, allegations claiming trademark abandonment or similarity in design. The Lanham Act, and other trademark rights that are interpreted under the Act, adds to these difficulties. Our attorneys have the knowledge and experience needed to sort through what can be complicated, technical issues and ensure your trademark rights are enforced.
The easiest way to monitor your application for trademark registration is to (i) visit this link, [INPUT LINK], (ii) enter theserial number we sent you when we filed your mark, (iii)_find the “status” indicator on the resulting pageand (iv)click on the “documents” tab to review your application information in detail.
The Examining Attorney is assigned to your application usually after two to three weeks, thereafter it usuallytakes 2-6 more months for the Examining Attorney to take any kind of action. As your attorney of record, ourfirm will alert you of any questions or concerns issued by the Trademark Office.
We can make changes to the address of your company, however,many other changes to your application can be difficult to make depending on your time of the registration process, and most changes are not accepted by the Trademark Office. Minimal application revisions, such as a new phone number or address change, can be emailed to our firm. Otherwise,please reach out to our firm to schedule an appointment with anattorney to discuss your particular options.
Trademarks can be categorized as a mark that identifies the source of either a good or a service. Generally, a trademark is a word, phrase, symbol, and/or design that identifies anddistinguishes the sourceof the goods of one party from those of others. Likewise, a service mark is a word, phrase, symbol, and/or design thatidentifies and distinguishes the source of a service, rather than goods.
A registered trademark gives you exclusive nationwide rights to a word, phrase, symbol, or design inconnection with specific goods or services. It also gives you access to federal courts, a streamlinedstatutory system in disputes, and the ability to more easily expand your protection internationally.
First, you should make sure no one else is using a similar mark in the same “stream of commerce”. A trademark search can be done by a professional company, and an attorney can review theresults.Second, prepare and file a United States trademark application with the Trademark Office. Third,monitor the progress of the application as it gets reviewed by the Trademark Office, and respond toany questions the Office has during the review process.
Yes, always. While conducting a preliminary search using Google or the TrademarkOffice, an attorney can also conduct a more detailed search, examining any phoneticequivalents and marks under the DuPont Test. The Trademark Office uses the DuPont Test to determine whether your mark can be registered, and is therefore a more precise way to examine your mark.
For goods, “interstate commerce” generally involves sending the goods across state lines with the markdisplayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involvesproviding a service to customers in another state or rendering a service that affects interstate commerce(e.g., restaurants, gas stations, hotels).
No – in fact, many applicants take advantage of the Trademark Office’s “intent to use” application (or“1bApplication”).This allows a mark to be filed without showing use at the time of filing.This preserves your rights on the trademark register as the first filed mark, and gives you time to plan the propermarketing and branding of your mark. The firm will file a “statement of use” application once you begin using the mark. This supplements your initial application with an example of how you are using the mark. The“intent to use” applicationcan be extended by filing extension requests every six (6) months, up to five (5) times (for a total of thirty-six (36)months) before the application pendency runs out.
The “®”symbol signifies that a trademark has been registered with the USPTO. Registering with the USPTO gives you benefits of national registration,notice and other benefits of that registration. You may not legally use the ® until your mark is registered.
A “TM” or “SM” symbol means that a company issolely claiming common law rights.Common law rightsare limited to the geographic region where you use your mark. Note, however,that “TM” and “SM” can be used right away to claim ownership of some basic common law rightswhile your mark is pending registration.
As long as you pay the maintenance fees forthe first five (5) years, after the ninth (9) year, then every ten (10) yearsafter that the mark can last forever. We can handle these maintenance requirements, and trademark enforcement monitoring, relieving you of the burden toremember or manage these payments.
No. A United States trademark protects your brand in the United States and its territories. For internationalprotection, you must file an application in the particular countries where you would like such protection.Contact us for information on how we can help you do this, and visit our webpage on international trademarks at[LINK].
File a trademark in the country where you would like protection. We can file in any country for you, and evenfile a unified application under the Madrid Treaty in more than 90 countries with one application and onelegal fee (however each country requires their own filing fee and docketing fee). Please visit [LINK].
A “specimen” is a real-world example of how you are using your trademark on goods and/or in your services. For goods (products), a specimen shows the mark on the goods themselves, or thepackaging material of the product. For example, to show brand, it would be the label in thecollar, a hang tag, or the wrapper in which the clothing is sold.For services, an acceptable specimen includes the advertising and/or marketing materials for the service, such as website screenshots showing the mark on the same page as a descriptionof the services
“Office Action” is the term for any kind of question the Trademark Office might have while reviewing yourapplication. These can range from questionsregarding your mark and another mark in thesystem, to editing the language used to describe the goods or services in your application.Because Examiners receive bonuses for initial Office Actions, it is very common (more than 70% of alltrademarks in the US) to get a first Office Action. Contact us for help with responding to your Office Action.
A “disclaimer” is language you put on file with your application acknowledging that you will not possessexclusive rights to a term or design used in your mark, apart from your mark as shown. It states that the disclaimed words or designs mustbe freely available for other businesses to use inmarketing comparable goods or services. For example, would in the fictional mark “Kidrite Shoes”, the ownerwould disclaim the word “shoes” if they were selling shoes, as that word merely describes the goodssold and, therefore, could not be exclusively owned by the trademark owner.
You ordinarily have six (6) months from the date the Office Action issues to provide a response.
A disclaimer will be requested if the Examining Attorney feels that a portion of the mark cannot be approved.This is usually a very minor issue that is easy to overcome.Most often, the disclaimer will be of a portion of a mark that is descriptive of what you do or sell. Forexample, if you want to register the trademark, “FroYoParadise” for a frozen yogurt shop, you mustdisclaim the term “FroYo” because it describes what you are selling.Receiving a disclaimer requirement does not necessarily hurt your overall chances for approval. Usually, simply disclaiming the disputed portion of your mark will overcome the issue. However, if the challenged termis critical to your brand, you may want to refuse the disclaimer and present arguments that the term shouldnotbe disclaimed. We usually recommend accepting a disclaimer unless the term is critical to the brand.If you accept the disclaimer, the trademark will not be altered, and the application will typically be approvedwith the disclaimed portion still included. However, there will be a note added to the application statingwhich portion of the term is disclaimed. This means you would not be able to use the trademark to challengeother companies’ use of just the disclaimed term.
An Examining Attorney may request a“Goods or Services Description Amendment” if they feel that a portion ofthe listed goods or services is unclear, overly broad, or would fit better in a different group. This is typically a very minor issue that is easy to overcome.Most times, we recommend accepting a proposed amendment unless doing so would adversely impact the scope of your rights, orwould inaccurately describe your products or services.
This is a moderately complex issue, but one that can often be overcome.A substitute specimen or drawing will be requested if the Examining Attorney feels that the specimen ordrawing is not compliant with technical requirements, or if the specimen does not clearly show the applied-formark used in connection with the applied-for goods or services. Submitting a replacement drawing or specimen may remedy this issue. However, the replacement specimen must have been in use as of thetime that the original specimen was filed.
This is a moderately complex issue, but one that can often be overcome.The Examining Attorney will request additional information about the meaning of a term in the trademark orabout your goods or services if she feels that there may be a potential issue if the term is interpreted in acertain way. Responding with more information is easy, but we usually want to consider the ramifications ofthe additional information on the application before determining the best way to respond. Sometimes, saying toomuch or responding in the wrong way can cause bigger issues to arise.
This is usually a very minor issue that is easy to overcome.A mark description amendment will be requested if the Examining Attorney feels that the verbal descriptionof a design mark is unclear or incomplete. Accepting a proposed amendment is usually recommended, unlessdoing so would not accurately describe the design.
A “§2(d)” or “Likelihood of Confusion” refusal will issue if the Examining Attorney feels that thereis a likelihood of confusion with a prior-filed trademark registration. This is a complex issue that may be difficult to overcome.Two marks do not need to beidentical for a likelihood of confusion issue to arise, nor do they need to be used in connection withidentical products or services. If the marks are too similar and are being used in connection with relatedproducts or services, the Examiner may find a likelihood of confusion. The inquiry is therefore highlysubjective, and reasonable minds often will differ about whether two marks are confusingly similar.In order to overcome a §2(d) Office Action, you need to submit a defense of your mark that analyzesall of the relevant likelihood of confusion factors, as they apply to the marks at issue.
An advisory §2(d) refusal will issue if the Examining Attorney feels that there is a likelihood of confusionwith a prior-filed application that is still being reviewed. Because that prior application hasnot yet registered, the issue is only advisory and does not require a response. Nonetheless,you can submit aresponse.If you decide not to respond to this advisory issue (and assuming you have addressed any othernon-advisory issues), your application will be suspended until a final decision is made to register thecited application or until that application is cancelled.If you decide to respond to this advisory issue, to avoid the additional delay of a suspension, an available argument may be that the prior application does not create a likelihood of confusion. If those arguments are successful, theapplication will proceed. If not, the application will be suspended, as discussed above.
This is a complex issue that may be difficult to overcome.An “ornamental use” refusal will issue if the Examining Attorney feels that you are using the mark in amerely ornamental or decorative manner. For example,an “ornamental use” exists ifthe mark is displayed on the front of at-shirt. Because a trademark must serve as an indicator of the source of a certain product orservice, displaying the name on the front of a shirt does not typicallyindicate who made the shirt. Whilethere are a few different ways to respond to such a refusal, we typically recommend filing asubstitute specimen showing the mark being used in a more signifying manner.
Refusal of a descriptive or generic mark refusal will issue if the Examining Attorney feels that the mark describessome aspect of your products or services, or if the term is entirely generic as applied to your products orservices. For example, “hoppy” would be descriptive in relation to beer, whereas “beer” is generic inrelation to that same product. This is a complex issue that may be difficult to overcome, but there are different ways of approaching it.Marks can also be refused as geographically descriptive, which often occurswhen a geographic place name is included as part of the mark (as in the case of “New York Pizza”).In addition, a mark that is seen as primarily a surname is basically treated the same as a descriptive term.A company can overcome an Office Action regarding refusal of descriptive markin threeways..First, you can trademark a descriptive term if you have established “acquired distinctiveness.” The most effectivemeans of establishing acquired distinctiveness is through five years of substantially exclusive use. Second, you can argue that the mark is not actuallydescriptive because, for example, consumers in that industry might understand the term in a different way. Third, you can amend your application to seek registrationon the Supplemental Register. While a registration on the Supplemental Register does not provide all theprotection of a registration on the Principal Register, it has the following advantages:
- You can use the registration symbol ®
- Your mark will be protected against future registrations of a confusingly similar mark;
- You can bring an infringement suit in federal court; and
- The registration can serve as the basis for a filing in a foreign country under international treaties.
We typically recommend amending to the Supplemental Register if the mark is clearly descriptive and you havenot been using it for five (5) years.
This is a moderately complex issue but one that can often be overcome.A trademark must serve as an indicator of the source of a certain product or service. Occasionally, thespecimen submitted will show the mark presented in a different context, for example, not referring to it asa brand name or displaying it in a very insignificant manner. In thosecases, we recommendtrying to submit a substitute specimen that better shows the mark being displayed to the public as a brandname or source signifier.
A “Notice of Allowance/Statement of Use” signifies that your “intent to use” application has been approved. To get a full registration,you must demonstrate that you started using the mark. You have six (6) months to do this, or youcan request an extension of time for an additional six (6) months (which can be further extended for up to threeyears, if need be).
After the 5th anniversary of your registration, you must demonstrate that you are still using the mark to preserve the registration. We recommend filing both the §8 and §15 affidavitsat this time, which gives the additional benefit of “incontestability” to your mark. After that, you willneed to file renewals every ten (10) years.
To keep your trademark, you must file a Declarationof Use and/or Excusable Nonuse under between the 5th and 6th years after theregistration date. Subsequently, you must file a CombinedDeclaration of Use and/or Excusable Nonuseon or between the 9th and 10th-year anniversaries after the registration date,and every 9th and 10th-year period thereafter.
During the examination of a pending trademark application, or after a trademark isregistered, the owner maychange or some owners transfer their ownership from themselves as individuals to an entity (like their ownLLC). This should be done by filing an “Assignment”with the USPTO with the Assignments Recordation Branch. Click here [LINK] to file an Assignment now.
U.S. Customs & Border Protection (CBP), a bureau of the Department of Homeland Security, maintains atrademark recordation system for marks registered at the United States Patent and Trademark Office. Partieswho register their marks on the Principal Register may record these marks with CBP, to assist CBP in itsefforts to prevent the importation of goods that infringe registered marks. The recordation databaseincludes information regarding all recorded marks, including images of these marks. CBP officers monitorimports to prevent the importation of goods bearing infringing marks, and can access the recordationdatabase at each of the 317 ports of entry.
If your mark is used across state, territorial, or international boundaries, it is likely you will end up in federal court. Federal law occasionally permits an award of attorneys’ fees to a victorious plaintiff, but only when the trademark infringement is exceptional, or, obviously intentional. Unless you are dealing with a clear case of bad intentions by the infringer, do not count on attorneys’ fees in federal trademark litigation. Most courts follow the “American Rule,” whereas each partypays its own attorneys.
Although courts have discretion to award attorneys’ fees in unusual cases, they are required to award treble (or triple) damages—and order the defendant to disgorge any profits caused by the infringement—in cases where willful trademark infringement is proven.Willful infringement cases consequently have the potential to generate a considerable sum of money over and beyond what the true trademark owner actually suffered from the infringement. Since the goal in most cases is to stop the infringing use—which will happen if the court finds that infringement occurred— the trademark owner can use the damages to pay whatever legal fees are incurred.