- What is a Trademark?
- Trademark Symbols ®, ™, ℠ - When Should You Use Them?
- Trademark Law – What’s the Point?
- How to Select a Trademark?
- Likelihood of Confusion
- Strong vs. Weak Mark
- Should I file my trademark as a logo or just the words themselves?
- Does a Trademark have to be in use to be Apply For a US Trademark?
- What is the Process of Registering a US Trademark?
- What is an Office Action?
- Why Should I do a Clearance Search prior to Applying for a US Trademark?
- What is the Trademark Trial and Appeal Board – and what kind of cases to they hear?
- What to do Once a Trademark is Registered?
What is a Trademark?
Similar questions are often asked by businessmen and entrepreneurs thrown around by new businessmen. How do I protect my new business? How do I protect this idea? Can I patent this idea? Should I? Can I get a trademark? Should I get a copyright? Do I want a trademark, patent, or a copyright? Do I need all of them? These are all valid and important questions to ask when starting a business. To really understand what you need to protect yourself, and your new business, call a lawyer you trust. Of course, we’d be glad to help you at Groisman Law as well. But there is some basic information you should know. Here is a simple(ish) response to the most basic question: What is a trademark?
A trademark is the name, slogan or logo under which you conduct your business.
In basic terms, a trademark is a designation used “to identify and distinguish” the source of goods and services of a person or company. Typically, a trademark protects brand names and logos that are used on goods and services.
To be a trademark, the mark must be distinctive—distinguishing it from other sources. In other words, your trademark signals to consumers that the goods and services come from you, are sponsored by you, or affiliated with you… and not from some other source. Such a mark can be made up of letters, words, images, shapes or colors, and could even consist of a fragrance, flavor, or sound. But usually, it’s a word, phrase, slogan, design, symbol, or combination thereof.
A service mark is essentially the same as a trademark, but it identifies and distinguishes the source of a service instead of a product. In general, and for the rest of this article, we will use the term “trademark” to refer to both trademarks and service marks.
Trademarks that are used – or plan to be used only within one state, with no marketing or advertising outside a specific state, that are only sold – or only provide services – to people within one state, would not qualify for a federal trademark registration, but should register the trademark with the state. The reason for this is that the US only grants trademark registrations that have use – or intent to have use – in interstate commerce.
So, what office actually grants US trademarks? Trademarks are federally registered by the United States Patent and Trademark Office (USPTO). The USPTO is responsible for granting patents as well. Trademark applications are reviewed and granted by Examining Attorneys of the Office. The Office is overseen by the Trademark Trial and Appeal Board (“TTAB”). The USPTO provides great information at www.uspto.gov.
Common law trademark rights begin to accrue upon interstate use - even without a state or federal registration. These common law rights can be important in defeating even federally registered marks if the common law usage of the trademark began before the usage of the federally registered trademark and if the original user of the mark continued using the mark. In the US trademark world, use is king. The earlier user usually has the strongest rights. But, the US is also a “use it or lose it” jurisdiction. Trademarks must be used continuously, and cannot be abandoned. In fact, trademark rights can continue forever so long as the trademark remains in continuous use. And, the value of a trademark usually increases with time as the mark becomes more associated with the goods and services to which the mark is connected in consumers’ minds.
Of course, the answer to this question is more complex than the answer provided above, but this should give you a good baseline understanding a trademark. For a more detailed understanding, please don’t hesitate to pick up the phone and call the attorneys at Groisman Law.
Trademark Symbols ®, ™, ℠ - When Should You Use Them?
We’ve all seen these small symbols next to brands: ®, ™, ℠ . Questions about these are asked often. Many times, businessmen and entrepreneurs alike use them entirely improperly. What are they? When can you use them? Do you have to use them? When should you use them?
Of course, every situation is different, and at Groisman Law we’d be glad to help you with yours, but the following answer will give you a general understanding about these symbols and when you should use them.
Taking a step back, there are three (3) symbols that are typically used alongside your mark so that the public knows that you either have a federal trademark registration or that you are claiming a trademark right in the mark. The three symbols are the circled R (®), little capital letters TM (™), and the little capital letters SM (℠).
The circled R - ® - may only be used on your mark once you have applied for and received a federal trademark registration for that mark. In fact, you are not permitted to use the circled R - ® - before obtaining the federal registration. This is simple to remember as the “R” stands for registered. If the US Patent and Trademark Office learns that you have used the circled R - ® - before obtaining a registration, they can reject your application on that ground alone!
The other two symbols—little capital letters TM (™), and the little capital letters SM (℠)—can be used before you file a trademark application or during the application process. The TM stands for trademark and should be used to represents good, like a beverage or clothing. The SM stands for service mark, which should be used to represent services, like banking, legal, or insurance services. So, if you are providing a service that you want your mark to represent, the appropriate symbol to place next to your business’s name would be the little capital letters SM (℠). The purpose of using these symbols is to differentiate the mark from the words surrounding them, so that the consumer understands clearly that the word(s) (logo or slogan) they are reading is a trademark.
It is important to note, however, that it is not required to use any of the symbols. However, as a trademark lawyer, I highly recommend that you do so, at all times. There are several good reasons for this. Here are some: First, you want to build a relationship with your customers. A good, strong trademark is the best vehicle by which to do so. As a business owner you want your consumers to be intimately familiar with your brand, your trademarks. A ® TM or SM makes your brand stand out to the consumer. Second, using the symbols places your competitors on notice. When a brand uses these symbols, they are letting their consumers – and competitors – know that this phrase, slogan, logo or word(s) are a trademark – registered ® or not (TM or SM).
Often clients have asked us to work with their marketing and design teams to be sure that they are using these symbols correctly. At Groisman Law, we are glad to work with you to be sure that you are implementing and using your mark correctly, and in the best way possible.
Trademark Law – What’s the Point?
The government’s perspective on trademark registration is both interesting and helpful in understanding the trademark application process. Trademarks are considered to be intellectual property, and when individuals or businesses register their trademark, they do it with the intention of protecting that property. But, the government, through the USPTO has a more specific purpose in mind: to prevent consumer confusion. The basis for trademark protection in many other countries is protecting the business owner’s blood, sweat, and tears. Not in the US. Here, the basis of trademark law is the protection of consumers. When the federal government reviews a trademark to determine if it can be granted a federal trademark registration, it is at bottom determining if the mark can serve as a “trademark,” – meaning that consumers can or do recognize the proposed mark as a designator of the source of origin, sponsorship or affiliation, and that consumers are not likely to confuse this mark with any other mark. The focus is always consumers. This is important to understand and is a point that many new businessmen and entrepreneurs don’t realize.
Of course, to you – the business owner, designer, developer, entrepreneur, manufacturer – you want a strong trademark to protect your goodwill; to develop a relationship with your customers. But, remember, you also want your customers to see your trademark stamped on your product and to immediately connect it to you and your company. If done correctly, a legally strong trademark is also a great trademark from a marketing and business perspective. Think, for instance GOOGLE or NIKE.
Knowing this will help you choose the right trademark, and will help you understand why the USPTO would accept or reject your trademark application.
Keep in mind that registering a trademark doesn’t mean you have total rights to that word. A trademark does not give you a monopoly. Two companies can even, in certain circumstances, have trademark rights in the same name as long as they have completely different businesses that offer different goods and services. Again, the focus is the consumers. For instance, would a consumer look at a new car parts company, and be likely to believe that it is made by, affiliated with, or sponsored by, another company that sells high-end jewelry if they had the same or similar trademark? If the answer is “no,” then the Trademark Office could grant those two companies trademark rights in the same name. Each registration is limited to a specific class of goods or services. A listing of the classes of goods or services can be found at https://www.uspto.gov/trademark/trademark-updates-and-announcements/nice-agreement-tenth-edition-general-remarks-class. This is because the government may determine that there is no likelihood that consumers would be confused about where the goods or services come from. For example, the trademark DELTA® is owned by both the airline and the sink company because the government doesn’t believe that consumers are likely to be confused and believe that a Delta® sink would come from, or be affiliated with, DELTA® Airlines and vice versa.
Navigating trademark law and choosing a trademark that doesn’t have a high likelihood of confusion to another mark is a complex process that Groisman Law, can certainly help with.
How to Select a Trademark?
Once you determine that you need trademark protection, the next step is to choose the right mark. Selecting the right mark is crucial because not every mark is registrable with the USPTO and not every mark is legallyprotectable. This is an important step in any business.
Likelihood of Confusion
One of the most common reasons for the USPTO to refuse a registration is if there is a “likelihood of confusion” between the applicant’s mark and a mark already registered or a previously filed pending application. There is a likelihood of confusion when the parties’ marks are similar and the goods and/or services of the parties are related so as to confuse consumers into believing that they come from the same source. In other words, identical marks can co-exist if the goods and services are not related.
There is no cookie cutter way for determining whether there is a likelihood of confusion. Rather, the USPTO looks at every application’s facts as a whole and draws an analysis.
Nevertheless, the USPTO certainly looks at the similarities and differences between the mark in question and other already registered marks to determine the likelihood of confusion. Marks may be deemed confusingly similar when, among other factors, they are visually similar, sound similar, mean the same thing when translated, or make the same commercial impression on consumers’ minds.
But as stated earlier, it is not enough for the marks to be confusingly similar; for there to be a likelihood of confusion, the goods and/or services that are covered by the marks must be related. The goods and/or services don’t have to be identical, but they have to be related enough to cause confusion about the source of the goods. So, for example, t-shirts could be considered related to hats since consumers could easily think that a hat and a t-shirt that have the same mark come from the same company.
Strong vs. Weak Mark
In addition to making sure there is no likelihood of confusion with other marks, it is important to choose a “strong” mark that will be easier to protect. There are basically four categories of marks that determine the strength of the mark: fanciful or arbitrary, suggestive, descriptive, or generic. Fanciful and arbitrary marks are the easiest to protect because they are unique, while generic ones are not even registrable or enforceable against third parties.
Fanciful marks are made-up words that have no dictionary meaning. And arbitrary marks have meanings that aren’t associated with the connected goods or services.
On the other side of the spectrum are generic marks, like using the mark “Banana” to sell bananas. This type of mark is unregistrable. You cannot register generic words that are often used to identify a product.
Descriptive marks describe a characteristic of the goods and services. This type of mark can be registrable if they have acquired a secondary meaning or acquired distinctiveness. Keep in mind that descriptiveness and likelihood of confusion are the most common reasons for rejection of trademark applications. Consulting with an experienced attorney would help navigate this issue.
Should I file my trademark as a logo or just the words themselves?
It is generally recommended to file your trademark as just the words themselves if the words are strong or unique enough to register. By doing so, you will have a trademark of those words that will be considered a trademark in any form, as part of any logo that you choose. Then, if your budget permits, you can file a second application for the logo itself.
When you file a certain logo that combines names or words and a logo, then you have to use that exact combination on your goods or services. So, for example, if Target filed a trademark of the logo of its famous slogan, “Expect More. Pay Less.” with an image of a target underneath it, then the company would have to use that exact logo of a target with the words “Expect Less. Pay More” together.
But, we see Target using the “Expect More. Pay Less” slogan separately from their image of a target all the time. This is because they have separate trademarks for the slogan and for the image of the target that they use. If they had filed the slogan and image together as a logo, then the two would be inseparable from a trademark standpoint.
If your trademark is strong enough to pass as a word mark, then it is more practical to register it as a word mark than as a logo (otherwise known as a “design mark”) because it affords you much more freedom in the way you can use the mark and still be covered by the trademark.
Does a Trademark have to be in use to be Apply For a US Trademark?
No. When applying for a trademark, you must specify your “basis” for filing. Your basis for filing could be your current use of the mark in commerce, or your intent to use the mark in commerce sometime in the future. In other words. it is not necessary to use a mark in commerce before applying for a trademark registration. But, it is necessary to specify your good faith or bona fide “intent-to-use” the mark in commerce. And, eventually, before the mark is actually registered, you must show that you have begun to use the mark in commerce in connection with the goods or services that are listed in your application.
An “Intent to Use” application may be right for you if, for example, you are preparing to launch your brand and you want to prevent someone else from swooping in last minute. It can help you win the race, so to speak, in a trademark dispute when oftentimes winning the rights to a trademark comes down to who filed the trademark application first. In fact, this is the most prudent way to move forward with a new business. It takes time to launch a brand. Filing an Intent to Use application gets the process started quickly, and will give you earliest notice if the mark is going to be problematic and should be changed.
For an Intent to Use application, you may claim your use in commerce during three periods: before your application is approved for publication, within six months of the issuance of the Notice of Allowance (NOA), and within a granted extension of time after the NOA.
The third option buys you some real time. You can file a Request for Extension of Time to File a Statement of Use, which involves an additional fee. And then, you must file the Statement of Use within the extension period. You can file a total of five extension requests, each request covering consecutive six-month extension periods. Note that each extension request must be accompanied with a show of “good cause”—a statement of your ongoing efforts to use your mark, such as showing your market research, product development. or attempts to get distributors for your product. If you request all five extensions, that gives you 36 months from the date you were issued the NOA to file the Statement of Use. If you do not file a Statement of Use on time, your application will be considered abandoned and your mark will not register.
Many people are confused by the term “use in commerce.” As we are well into the internet and e-commerce age, the distinction between “use” and “use in commerce” continues to diminish. Yet, the distinction is still very important in the trademark world. Your use of your trademark must meet certain requirements to be considered “use in commerce.” In particular, the USPTO specifically defines the term “use” as well as the term “in commerce.”
First, to be considered “use” of the mark on goods, the mark must be either placed on the goods, on the packaging of the goods, or on the point-of-sale displays for the goods (like webpage displays). And, the goods have to be actually marketed, sold or transported.
To be considered “use” of the mark on services, the mark must be used in the sale, advertising, or rendering of the services. And the services must be actually rendered.
Second, for the use to be considered “use in commerce,” the use of your mark must be in 1) interstate commerce, meaning between two or more U.S. states; 2) territorial commerce, meaning between the U.S. and a territory of the U.S.; or 3) foreign commerce, meaning between the U.S. and a foreign country. That means that mere intrastate commerce (use of the trademark within one state) is not generally considered use in commerce unless it directly impacts interstate, territorial, or foreign commerce. Each situation is different, however. And, as referenced above, marketing your business – using your mark – on the Internet, selling your product online, offering your services to people in other states, all can be considered use in commerce.” These are not distinctions that you need to make yourself. Of course, the use in commerce has to be in the “ordinary course of trade,” meaning not for the sole purpose of reserving rights in that trademark. “Token use” – meaning a sale or use made for the purpose of the application only – will not hold up to scrutiny. The lawyers at Groisman Law will gladly help you evaluate your use to make your application as strong as possible.
What is the Process of Registering a US Trademark?
Once you have selected a mark, conducted a clearance search, reviewed the legal opinion on registrability of the mark, then you are finally ready to prepare and file your trademark application.
The registration process begins with an initial filing that can be done either online or by mail, although the online application is more timely and efficient. Every application has a filing date, and when you submit online, the filing date is the date the application reaches the USPTO server, whereas the filing date for a mailed application is the date the USPTO physically receives your application. At Groisman Law, we do all of our filings online. It is the least expensive, most efficient, and quickest way to get your application processed and reviewed.
The application should include the owner of the mark, the name and address for correspondence, a depiction of the mark, the goods/services, the application filing fee, the basis for filing, and a specimen (usually an image, or several images) for use-based applications.
Next, we will selecting the goods and/or services that will be associated with your mark. A trademark must always be associated with particular goods or services that are sold under that mark. You cannot register a trademark without identifying such goods or services. The trademark may be associated with multiple different types of goods and services as long as they are identified properly in the application, but the cost of filing may increase as more goods and services are added. It is important to describe the goods and/or services properly because an improper description could delay your application.
The USPTO divides goods and services into different classes for registration. Choosing the right category is very important, and the same mark for the same use, can often fall into different classes. Understanding your business, your goals, your strategies and your future plans, will help the lawyers at Groisman Law determine the best classes in which to register your mark.
Next, we will identify and describe the goods and services offered in your application. The USPTO has a searchable Trademark ID Manuel to make it easier to properly identify and describe the goods and service you wish your trademark to cover. The ID Manuel has pre-approved descriptions of goods and services that can help in drafting your description. Using the pre-approved descriptions could help avoid delays in the registration of your application because of misidentified goods or services that require modifications.
You should definitely pay attention to your drafting of the identification of goods and services because it cannot be broadened once the application is filed. You will not be able to add more goods or services once you have filed. And while you may potentially clarify certain items in your description, you certainly cannot broaden the scope of your original identification of goods or services. If you wanted your trademark to cover an additional good or service in the future, you will have to file a new trademark application. Using our experience at Groisman Law, we will look at the market, and the search report, and help you determine what description is best for your application, and whether it is better to describe the goods or services more broadly, or more narrowly – depending on the situation.
After filing the application, we monitor the status of your application, about every 90 days. The examining attorney will usually reviews your application about 3 months after the filing date. The whole process could take up to a year or longer depending on several factors such as the completeness of the application when you filed. In our experience, a non-problematic application can be reviewed and registered in as short as 6 months, however.
The government filing fees depends on a number of factors. First, the fee depends on whether you are already using the mark in commerce or plan to use the mark in the future. If you have already used the mark in commerce, then you will only have to file one initial trademark filing. But, if you intend to use the mark in the future and you want to reserve the rights in that mark, you will need to file an Intent to Use application and then an additional filing to prove “use in commerce.”
The government fee for filing an application for a mark that is already in use is $225/$275 per category or “class” of goods that will be covered by the trademark. Keep in mind that if you want to protect more than one “class” of goods, each additional class will cost the same $225/$275. Deciding which class of goods and services to choose and how many classes to file under is something an attorney will be able to help you with.
If you initially file an Intent to Use application, your additional filing to prove “use in commerce” will cost $100 per class in government fees.
What is an Office Action?
After filing a trademark application, if the examining attorney has a question, concern, small change, or issue with the application, the USPTO will issue an “office action.” The office action is essentially a communication from the examining attorney. An office action requires that the applicant respond within a 6-month period.
When an office action requires some sort of amendment to your application, it can be about any part of the application. For example, the examining attorney may determine that the description provided was not sufficiently accurate or specific, or that the class selected is incorrect in their opinion. At times, the examining attorney will ask for a better or different specimen to prove your use of the mark in commerce, and the USPTO will require an additional specimen of your use.
Office actions that request amendments or clarification slow down the registration process. That’s why it is important to submit as comprehensive and accurate an application as possible the first time around. An experienced attorney at Groisman Law can reduce your chances of receiving a substantive office action, and if you do receive one, we can help to properly respond to the office action and amend the application as needed.
The more serious type of office action is usually a preliminary refusal of your trademark. There are many bases for an initial refusal office action, but it is most commonly due to an initial determination by the examining attorney that the proposed mark is too similar with another’s registration or pending, pre-existing application, or that the mark applied for is merely descriptive of the goods or services applied for. Working with our experienced trademark attorneys at Groisman Law could help you with the entire trademark registration process that will help avoid the common mistakes that lead to such refusals of registration. While there is no way to predict the response or reaction of the USPTO, we at Groisman Law use our experience to give your application the best chance possible to obtain registration.
Once the issues raised by the examining attorney in the office action(s) are resolved – or if no office actions are issued at all - the examining attorney will approve the mark for publication. Once the mark is published, there is a 30-day period during which the public can object the registration by filing an opposition. Oppositions are similar to court proceedings, but they are held in front of the Trademark Trial and Appeal Board (TTAB).
The most common reason why someone would oppose your trademark application is because they think that their mark is too close to theirs, technically because the believe there is a high likelihood of confusion between the two marks. When someone files an opposition, they have to prove the similarity of the marks in question and that they used the mark first. Other reasons one might file an opposition to your application is because they think your mark is merely descriptive or is a generic industry term.
An opposer may request an extension of time—typically 30 or 90 days beyond the usual 30-days—to oppose a trademark application by showing good cause for the request. Such good cause could be the need to confer with counsel, discuss a settlement, find counsel, or for additional time to investigate the claim. This request for additional time doesn’t always lead to ultimately filing an opposition. Sometimes, the opposer could decide not to oppose or to settle. Many times, an extension of time is filed, as a tool to open a negotiation with the applicant.
But, if there are no oppositions filed - or any oppositions are overcome, the USPTO will usually issue a registration certificate approximately 11 weeks after publication.
A Notice of Allowance will issue at this point for an Intent to Use application, giving you 6 months to submit a Statement of Use, which demonstrates how you are currently using the mark and includes a specimen or proof of your use. The applicant can request additional time if needed in 6-month increments for a maximum of 3 years from the Notice of Allowance date.
Why Should I do a Clearance Search prior to Applying for a US Trademark?
Conducting a clearance search before filing an application is critical. It could flag problems that may exist with your mark and could save you the expense of applying for a mark that will be rejected. Conducting a search could reveal that there are other registered or pending marks that have a high likelihood of confusion with your mark, or it could show that your mark, or part of it, is generic or descriptive, which would make it difficult to register or enforce.
The USPTO offers a free search system called TESS (Trademark Electronic Search System), but it is limited to USPTO’s database of federal trademark registrations and applications, so it won’t include marks of parties that have common law trademark rights for marks that aren’t registered. That’s just one reason why a more thorough search is necessary before you apply for your mark to be registered.
While you may think that a quick search on the Internet could provide the results you need, an Internet search always falls short when considering the likelihood of confusion with your mark and others’. A proper clearance search not only looks for the same mark, but also confusingly similar marks. A proper clearance search not only looks in your intended or actual class of goods or services, but also in related classes. A proper clearance search makes a good faith attempt to mimic the kind of search done by the trademark examiner at the USPTO and by your competitors. Also, if your mark has any ordinary words, an online search could yield irrelevant results or an overwhelming number of results. A clearance search yields the relevant and thorough results you are looking for when determining the registrability and strength of a mark.
The goal of conducting a clearance search is not only to find out if a third party already registered your proposed mark. It involves searching for marks in the marketplace that could pose a likelihood of confusion with your mark. And an Internet or TESS search is simply not enough when it comes to checking your mark. Also, the search results should be analyzed to assess whether or not it makes sense to apply to register the mark. Federal Courts have even found that, in certain circumstances, failure to conduct a proper clearance search is a factor in a finding of bad faith in adopting a confusingly similar mark.
If you hire Groisman Law, to do your search, the software that we use allows us to look for phonetic similarities, different spellings of the words, meanings of the words in different languages that may be relevant, and more. The software searches through all trademark databases, including foreign ones, as well – when appropriate. We search the Internet, domain names, social media platforms, and state registries to do a complete search. We can then take the words apart or switch the phrases around to make sure we see all versions of your potential mark and all possible associated issues. And of course, we analyze the results to determine the likelihood of your mark being successfully registered and enforceable. The goal is to give you the most information possible, so that you can make an educated and calculated decision.
Conducting a thorough clearance search with an experienced trademark attorney could save you time and money in the long run. It can save you the time in having to clarify issues with the USPTO and it can save you the trouble and money of having to submit an additional trademark application if your initial application is rejected because you didn’t have the information provided by a thorough clearance search.
What is the Trademark Trial and Appeal Board – and what kind of cases to they hear?
The Trademark Trial and Appeal Board (TTAB) is the body which adjudicates for trademark application and registration proceedings. It is an administrative board that hears and decides proceedings—opposition, cancellation, and appeals proceedings—between two parties. The TTAB also hears interference and concurrent use proceedings. The TTAB’s administrative judges can determine a party’s right to federally register their trademark.
There is a TTAB Manual of Procedure that describes the current practice and procedures for the TTAB, however, those rules do not interfere with existing statutes and rules related to procedure and trademark law.
TTAB proceedings are like a mini-litigation, but in the ordinary course does not require court hearings or in-person appearance of counsel, and the issues are limited to registrability of a mark. However, the TTAB can decide to hold an in-person hearing or trial in Virginia in cases of particular interest. The Board cannot impose any monetary sanctions like money damages. And, most TTAB actions are handled by the papers, and discovery is limited. Consequently, TTAB proceedings are significantly less costly than federal trademark lawsuits.
The TTAB commonly addresses an applicant’s appeal to the USPTO’s Examining Attorney’s refusal of their application. An Examining Attorney can refuse to register your mark for several reasons, including finding that your mark is merely descriptive of the goods and services it is intended to cover or your mark is likely to cause confusion with an already registered mark. Once you receive a “final” refusal, you can appeal to the Board.
The Board—in such appeal cases, a three-judge panel—determines whether your mark will be registered. The judges independently review the application file, including all of the communications between the applicant and the Examining Attorney and issue a written decision. It is difficult for an applicant to win an appeal because the judges apply the same legal standards as the Examining Attorneys and the procedure for an appeal can be complicated. However, appeals are often the right tool to use, as the Examining Attorneys can – and do – at times simply get it wrong.
Oppositions are also commonly heard before the Board. At bottom, an opposition is an objection to a party’s trademark application that is meant to stop that party from federally registering their trademark. This type of proceeding also entails a three-judge panel that makes a determination after both sides present their arguments and evidence in support of their position before the board. Opposition proceedings also have complex procedures akin to civil cases, however the trademark office’s procedures simplify the dispute process by limiting most of the process to an exchange of paperwork, and limited discovery. The parties can also agree to an expedited process, which is often something both parties are interested in pursuing.
A “cancellation” proceeding is filed by a party that wants to cancel a trademark registration owned by another party after its already been issued. There are several grounds for a cancellation, but some of the more common ones are claims that the registered mark is likely to be confused with the mark in question, that the registrant abandoned the mark, and that the registrant is not the rightful owner of the mark.
Relief may also be sought in federal courts, which will – in most cases – stay any pending TTAB proceeding. This is a decision that the attorneys at Groisman Law can help you evaluate and make. Having an experienced and educated attorney by your side can simplify and expedite these often overly-complex and cumbersome processes.
What to do Once a Trademark is Registered?
For one, once you receive a certificate of registration for your trademark, you may place the circular R (®) symbol by your mark.
Remembers, US trademark rights are “use it or lose it.” So, you must use your mark continuously in commerce. Any stops should be simply to retool, and with an intent to continue using. If you stop using your mark with the intent to abandon, that mark can be considered and adjudicated abandoned by the USPTO and you can lose your trademark rights.
Federal trademark registrations also require some maintenance to prevent your registration from being canceled. You should keep up with the renewals that are due on your trademark. The first renewal is due after five years from your registration date. The second renewal is due ten years from your registration date. And then, you must renew every ten years.
So, the first thing you need to do is to find the exact date that your trademark registered, which can be found on your actual registration certificate or through the USPTO database at www.uspto.gov. This way, you can accurately calculate the dates of your renewals. Keep in mind that you don’t have to wait until the deadline to submit your renewal forms. You can actually submit those forms up to one year before they are due.
The document that you must submit between the fifth and sixth year after registration is a sworn statement that you are using the mark in commerce for all of the goods and services listed in the registration. And you must submit proof of your use and a filing fee. If you are no longer using the trademark for all of the goods and services that were initially covered in your registration, you must delete those items from the registration, unless there is valid reasoning for your non-use of the mark.
At the ten-year mark, you must submit the same declaration that you submitted between the fifth and sixth year in addition to a request for renewal.
If you miss your filing deadlines, there is a six-month grace period during which you can still submit those documents, but with an additional late fee. If you are past the grace period, your trademark will be cancelled and there’s no way to revive it. You will have to start the whole application process again. This doesn’t necessarily mean that you have zero rights in your mark, but it does mean that you have lost your federal trademark protection.
At Groisman Law, we would be happy to help keep you on track with your renewals and trademark maintenance filings.
It is also important that you monitor and enforce trademark. The USPTO prevents others from registering similar marks associated with related goods or services, but it will not monitor the market for use of your mark by others, nor will it prevent others from using your mark or a similar mark to yours. You need to make sure that others do not use your trademark in an unauthorized way. Without monitoring and policing your trademark, you could lose rights in your mark. If you allow an infringement on your trademark to proceed without trying enforce your rights, an infringer can claim that you failed to monitor your mark and use that as a defense, which can lead to a diminution of your trademark rights.
After five years of continuous use of your mark in commerce without any adverse decisions or pending proceedings involving your rights in the trademark, your trademark can become an “incontestable trademark registration.” The word “incontestable” is however is somewhat of a misnomer, because an incontestable mark is not, in fact, immune from all challenges. A registration becomes incontestable after the filing of a Declaration under Section 15 of the Lanham Act, 15 U.S.C. § 1065. The mark must have been in continuous use for at least five consecutive years from the date of registration and must continue to be in “use in commerce.” The Declaration filed under Section 15 also requires verification that “there has been no final decision adverse to the owner’s claim of ownership of such mark for those goods or services, or to the owner’s right to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the Patent and Trademark Office or in the courts.” If there has been no interruption of use this Section 15 can be filed along with your Section 8 (15 U.S.C. § 1058), which is due between the fifth and sixth years of registration. Still, there is no actual “deadline” for filing a Section 15 Declaration. It can be filed within one year after any five-year period of continuous use that has occurred following registration. If approved, the USPTO will issue a Notice of Acknowledgment of the Section 15 Declaration.
If a US Registration is acknowledged to be “incontestable,” it can no longer be cancelled by the on the ground that the mark is descriptive. It also serves to strengthen the mark as an incontestable registration can also be used as the basis for injunctive relief in an infringement action in federal court. Additionally, in most cases and subject to certain limitations, incontestability status is considered to be conclusive evidence of: The validity of the registered mark; The registration of the mark; The owner’s ownership of the mark; And, the owner’s exclusive right to use the mark with the registered goods and services.