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The Purpose of Trademarks. Marks protect the
integrity and uniqueness of a product or service by allowing a consumer to
distinguish one product from another. The United States Patent and Trademark Office has a web page explaining trademark basics.
Trademark and Service Mark. A 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 product
identifier or a brand name.
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 the services provided by others, and to
indicate the source of the services.
Both trademarks and service marks are often lumped together into the
general category of "trademarks" and are oftentimes referred to
simply as "marks."
See Frequently
Asked Questions for more information about the difference between
trademarks, copyrights and patents. Briefly, a copyright protects an
original literary, artistic, and musical work and a patent protects an
invention. The USPTO has a 41 minute video titled, "Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later."
Trademark Creation. A trademark comes
into being when one uses a mark on a product or to represent a
service. Registration, either in State or Federal registration
offices, is not required before such use. And, registration is not
required after such use. State registration is available when a mark
need only be enforced within a State. Federal registration offers
enforcement rights in the mark in all the states.
Federal Trademark Registration Benefits.
Registration of a trademark does not give the owner the right to use the
mark. Rather, federal registration permits the owner to enforce the
owner's rights in the mark based on the federal registration.
Registration can often enable the owner to stop others from using the
mark on similar products, that is, using the mark in a way that could
cause confusion in the marketplace. However, a commercial use of the
mark by someone else on their similar product, which pre-dates the
registration, cannot be stopped by virtue of a subsequently-filed federal
registration on your use of the mark: Federal trademark law recognizes the
rights of prior users.
There are at least six benefits registration on the Principal Register
of Trademarks:
- Constructive notice nationwide of the trademark owner's claim.
- Evidence of ownership of the trademark.
- Jurisdiction of federal courts 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.
- Exclusive right to use mark in commerce can become incontestable,
subject to certain defenses.
When marks become famous, all unauthorized uses, even involving
dissimilar products, can be stopped. Famous marks are protected in
trademark laws to prevent "dilution" and tarnishment of the
quality of the product represented by the mark in the eyes of the
consumer.
What Does it Cost to Apply for Federal Registration of
a Mark? Expect a filed application for a word mark to cost $825 and
a graphic mark to cost $1,125 for one classification of goods or
services. This cost includes a $50 discount from the USPTO for
qualifying electronically filed applications. These numbers
include filing costs and attorney fees for the application. Other
attorney costs after filing, if required, are charged at $250 per
hour.
According to the American Intellectual Property Law Association
Economic Survey of 2013, the median charge in 2012 for a Trademark
application is $1,700, which includes a $1,000 charge for a
clearance search. In addition, the median post-filing prosecution
attorney fees are $700.
- Total costs by Attorney Louis Ventre, Jr. for a trademark application filing in one
classification are usually $825 for a word mark and $1125 for a logo
or design mark.
- Filing Costs. The usual government filing fee for a
trademark application is $325 per class of goods and/or
services. Certain electronic applications receive a $100
discount, which Attorney Louis Ventre, Jr. will obtain for eligible
clients. After filing, the government may require you to pay for
additional classifications if the description of the goods or services
fits in more than one classification.
- Intent to Use. If an application is filed based on a bona
fide intent to use the mark in commerce, additional forms and filing
fees will be required at a later time, e.g., an Allegation of Use is a
sworn statement signed by the applicant or a person authorized to sign
on behalf of the applicant (see signature) attesting to use of the
mark in commerce and this must be filed with a $100 fee at a later
time. See the bullet
below, "Actual Use in Commerce" for more information on
this fee. The Patent Office publishes a current schedule of fees.
- Attorney Fees. Attorney Louis Ventre, Jr. charges a
per- class, fixed- fee of $600 for a text mark and $900 for
design/logo marks. Attorney Louis Ventre, Jr. employs electronic
filing using the Trademark Electronic Application System, which is
greatly preferred by the United States Patent and Trademark Office.
Trademark prosecution costs after filing are billed at $250 per hour.
International Trademark Application. An
application under the Madrid Protocol for trademark protection in multiple
foreign countries may also be made. This is discussed on this Law
Firm's International
Trademark page.
Affidavit of Use for a Trademark. It is a
formal statement that the mark is still in use. For a trademark
registration to remain valid, 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. Attorney fees
for a Section 8 Affidavit, which may simultaneously be filed with a
Section 15 declaration for acquiring incontestability, are $400.
Period of Protection. Assuming that Affidavit
of Use is timely filed, current registrations have a 10-year term.
Renewals are currently for a 10-year term. One may renew a trademark as
many times as desired. However, it is possible to lose trademark
protection by non-use, failure to "police" infringing uses, and
even misuse. For example, misuse might be construed if the trademark is
licensed or sold to another party who does not provide the same level of
quality or price previously associated with the trademarked goods.
Attorney fees for a renewal application are $500.
Choosing a Trademark. Fanciful or arbitrary
marks are the best choice when selecting a trademark. Examples of a
fanciful mark are words that are either unknown in the language (e.g.,
PEPSI, KODAK, EXXON) or are completely out of common usage (e.g.,
FLIVVER).
Arbitrary marks have absolutely no meaning associated with the owner's
product or service. Thus, arbitrary marks involve words that are in common
use but, when used to identify particular goods or services, do not
suggest or describe a significant ingredient, quality or characteristic of
the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).
You should avoid marks that are typically rejected by the United States
Patent and Trademark Office because they describe the product, they are
deceptively misdescriptive, they are geographically descriptive, they are
merely a surname, or they are merely ornamental in nature. Other less
common reasons for denial exist (national symbols, disparagement,
scandalous, style or grade designations, title of a single creative work,
etc), so it is best to ask an attorney before using a mark.
The trademark
you settle on should not be a mark that is already in use. A search should
be conducted in the Trademark Office files before you use your trademark.
You should also do a Google or Bing search to see if others are using it. Also, you should look in the dictionary for the word chosen to see if it has a meaning that you would not appreciate being associated with. The mark should be easy to remember and to guess at for spelling. Finally, you shoud check to see if the name is available for a web site. Many Internet domain names are already taken and this may affect your choice of a trademark.
Using a Trademark. Try to resist using your mark as a substitute for the product because this could turn it into a generic name with the consequent loss of rights. For example, aspirin was once a trademark, but now it is the generic name of the product. Proper use of a mark is as an adjective modifying the generic name of the product, for example "Kleenex tissues" or "Kleenex brand tissues" rather than "Kleenexes." Also, take care to use the mark exactly as it was registered. Changes in spelling of the mark make it possible for an infringer to argue that the original registration was abandoned by using a different mark
A Company Name as a Trademark. Your business
name may be a trademark, but it is not usually the best choice for a
trademark. You might be prevented from using your business name if it
causes consumer confusion with a registered trademark. State common law
trademark rights are acquired by use of a business name trademark in
commerce. Generally, the first user a particular trademark in commerce for
a particular product and in a specific geographic location may have a
right to prevent others from using that trademark in the same geographic
location for a similar product. Common law protections, however, may not
always prevail. Those elsewhere that acquire a Registered Trademark may
apply to make it incontestable after being continuously used in commerce
for five years after registration. There are lots of maybes and mights in
reliance on common law protection and it is likely to be expensive to
resolve them. Furthermore, any infringement action against someone using a
mark for pre-existing products may succeed only if there is a
"likelihood of confusion" of the consumer. So it is best to use
a completely arbitrary, fanciful trademark, which usually is not
represented in a business name.
Using TM, SM and the R within the circle ®?
Use of the TM for Trademark and SM for Service Mark symbols is governed by
local, state, or foreign laws and the laws of a pertinent jurisdiction to
identify the marks that a party claims rights to.
The federal registration symbol, the R enclosed within a circle, may be
used once the mark is actually registered in the United States 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. However, several
foreign countries use the letter R enclosed within a circle to indicate
that a mark is registered in that country. Use of the symbol by the holder
of a foreign registration may be proper.
Period from Application to Trademark. It takes
about a year, but may take several years, depending on the basis for
filing, and the legal issues which may arise in the examination of the
application.
Elements of an Application. If you are already
using your mark in commerce, you would file a "use" application
with the United States Patent and Trademark Office. Generally, an
application has the following elements:
- The name of the owner of the mark, along with a correspondence
address.
- At least one international class for your mark selected from the International Schedule of
Classes of Goods and Services.
- A clear black and white drawing, unless color is claimed as an
important feature of the mark, and a specimen of the mark. If colors
are important to a mark, the colors in a mark must be claimed and
described. If it is a sound, e.g. the NBC chimes, then no drawing is
needed.
- A brief listing of the goods or services for which registration is
sought, usually including information that expands on the
international class designation. There must be actual use of the goods
or services in commerce or an intent to so use them.
- Use of the appropriate descriptive terms obtained from consulting
the Acceptable Identification of Goods and Services Manual.
- The date that the mark was first used anywhere and the date the mark
was first used in commerce.
- A specimen of a trademark for goods, which is typically a label or a
photograph of the mark in use on the goods or in advertising for
services. The United States Patent and Trademark Office does not want
the actual goods and it prefers not to receive specimens involving
invoices, announcements, order forms, bills of lading, leaflets,
brochures, publicity releases, letterhead and business cards.
- The signature of your attorney, applicant, or other person
authorized to bind the applicant.
Trademark Office Action. After an application
is filed, the examining attorney at the United States Patent and Trademark
Office reviews trademark applications for federal registration and
determines whether an applicant meets the requirements for federal
registration.
The United States Patent and Trademark Office does not decide whether
you have the right to use a mark (which differs from the right to
register). No matter how thorough the preliminary search, the United
States Patent and Trademark Office may refuse to register the mark for
conflicting marks it has found. The examining attorney decides whether or
not there is a likelihood of confusion between the mark in the application
and another mark that is registered or pending in the United States Patent
and Trademark Office. There are also other legal reasons an examining
attorney might reject an application. Typically, these might include,
e.g., the mark being merely descriptive, deceptively misdescriptive,
geographically descriptive, merely a surname, ornamental in nature, etc.
Receiving an objection to an application from the United States Patent and
Trademark Office is common. If one is issued, you and your attorney then
respond to the refusal with legal arguments that address the examiner's
objections to the application. Alternatively, you may decide to abandon
the application.
If the examiner raises no objections to registration of the mark, or if
all the examiner's objections have been resolved, then the examiner will
approve the mark for publication. If someone raises an objection within 30
days of publication, the United States Patent and Trademark Office may
then hold an administrative proceeding to determine whether or not the
opposition is meritorious. If no opposition is filed or if the opposition
is unsuccessful, the application enters the next stage of the registration
process. A Certificate of Registration will issue for applications based
on use, or a Notice of Allowance will issue for intent-to-use
applications.
Actual Use in Commerce. For applicants that
have an intent to use a mark in commerce, an amendment to allege use may
be filed after the application filing date but before approval of the mark
for publication. If the Office issues a notice of allowance before
such first use, then a Statement of Use within six months of the mailing
date of the notice of allowance must be filed. Extensions for 6
months at a time can be granted with payment of additional fees. The
Statement of Use ($100 filing fee, see above) or 6-month
extensions up to 36 months may be requested wit the payment of a filing
fee ($150). After that the application will be declared
"abandoned." Attorney fees for filing an amendment or
Statement of Use are $350.
Using a Competitor's Trademark. If you would
like an opinion as to whether or not you can or should use a competitor’s
trademark in your company’s advertising, give Attorney Louis Ventre, Jr.
a call. You may be surprised to learn that you can use a
competitor's mark, under certain circumstances.
Attorney Louis Ventre, Jr. wants to help your business compete
effectively, while minimizing liability for Trademark
infringement. If you have received a "cease and
desist" letter from someone demanding that you stop using their mark
and account to them for all profits you may have made in using their mark,
contact Attorney Louis Ventre, Jr. as soon as possible and, certainly,
before you reply.
Canceling a Competitor's Trademark. To oppose
or cancel someone's trademark registration, see this Law Firm's web page
on Opposition
and Cancellation of Trademark.
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This file last modified 04/18/21.
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