How to Establish Trademark Rights

BusinessWeek Online - Upstart Small Business Legal Guide by Robert Friedman

A trademark is a word, phrase, symbol, design, or a combination of these, that identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Throughout this chapter the terms trademark and mark are used to refer to both trademarks and service marks. A mark for goods ordinarily appears on a product or on its packaging, whereas a service mark appears in advertising for the service.

A trademark should be distinguished from a copyright or a patent. A copyright protects an artistic or literary work, whereas a patent protects an invention.

How to Establish Trademark Rights

Although you can use a mark without registering it with the federal Patent and Trademark Office (PTO), federal registration provides important benefits for trademark holders. For example, the person who obtains federal registration for a mark is presumed to be the owner of the mark for the goods or services specified in the registration and is entitled to the exclusive nationwide use of that mark. A federal registration can thus provide significant advantages to a party involved in a court proceeding.

Two related but distinct types of rights exist in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application with the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar mark without the knowledge of one another and when neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. The PTO cannot provide advice concerning rights in a mark; only a private attorney can provide such advice.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is ten years, with ten-year renewal terms. Between the fifth and sixth year after the date of initial registration, however, the registrant must file an affidavit with the required filing fee setting forth certain information to keep the registration alive. If no affidavit is filed, the registration will be canceled.

An applicant may apply for federal registration in three principal ways:

An applicant who has already used a mark in commerce may file based on that use (a use application).
An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an intent-to-use application).

S. Congress (e.g., interstate commerce or commerce between the United States and another country). The use in commerce must be a bona fide use in the ordinary course of trade and not made merely to reserve a right in a mark. If an applicant files based on having a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO.
Under certain international agreements, an applicant may file in the United States based on an application or registration in another country.

An application to the PTO must be filed in the name of the owner of the mark, usually an individual, a corporation, or a partnership. The owner controls the nature and quality of the goods or services identified by the mark. The owner may submit and prosecute its own application for registration or may be represented by an attorney, but the PTO cannot help select an attorney.

Applicants not living in the United States must designate, in writing, the name and address of a domestic representative a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." Applicants do this by submitting a signed statement that the named person at the address indicated is appointed as the applicant's domestic representative under § 1(e) of the Trademark Act. The named person will then receive all communications from the PTO unless the applicant is represented by an attorney in the United States.

A U.S. registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws. The PTO cannot provide information or advice concerning protection in other countries. Interested parties may inquire directly in the applicable country or its U.S. offices or through an attorney.

Searches for Conflicting Marks

An applicant is not required to conduct a search for conflicting marks prior to applying to the PTO. However, it may be useful. In evaluating an application, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.

The PTO does not conduct searches for the public to determine if a conflicting mark is registered or is the subject of a pending application except when acting on an application. However, a variety of ways to obtain such information includes (1) performing a search in the PTO's public search library, (2) visiting a patent and depository library, or (3) employing either a private trademark search company or a trademark attorney.

The Registration Process

The PTO is responsible for the federal registration of trademarks. When an application is received, the PTO reviews it to determine if it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the PTO assigns it a serial number and sends the applicant a receipt about two months after filing. If the minimum requirements are not met, the entire mailing, including the filing fee, is returned to the applicant.

About four or five months after filing the application, an examining attorney at the PTO reviews the application and determines whether the mark may be registered. If the examining attorney determines that the mark can't be registered, the attorney will issue a letter listing the grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter or the application will be abandoned. If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.

A common ground for refusal is the likelihood of confusion between the applicant's mark and a registered mark. Marks that merely describe the applicant's goods or services or a feature of the goods or services, as well as marks consisting of geographic terms or surnames, may also be refused. Marks may be refused for other reasons as well.

If there are no objections or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. The PTO will send a Notice of Publication to the applicant. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process, as described next.

If the application was based upon the actual use of the mark in commerce prior to approval for publication, the PTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published, assuming no opposition to register was filed.

If, instead, the mark was published based upon the applicant's statement of having a bona fide intention to use the mark in commerce, the PTO will issue a Notice of Allowance about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the Notice of Allowance to either (1) use the mark in commerce and submit a Statement of Use, or (2) request a six- month Extension of Time to File a Statement of Use. The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the Statement of Use is filed and approved, the PTO will then issue the registration certificate.

It is difficult to provide precise estimates of how long it takes from the filing of an application to the receipt of a certificate of registration in any particular case because numerous factors can arise during the examination process that can lengthen the process. For example, if an application is refused because of a prior pending conflicting application, the later-filed application could be suspended for several months or possibly one or two years until the prior-pending conflicting application is either registered or abandoned. Other factors, such as whether the application has been filed based on an intent to use or based on a foreign application, or whether a Notice of Opposition is filed by a third party, can cause delays. However, if there are no (or relatively minor) substantive or procedural problems and the application is based on "use in commerce," and no Notice of Opposition is filed by a third party, it may be possible to obtain a registration within 10 to 12 months of the application filing date. Intent-to- use (ITU) applications that have little or no major problems, and that are not opposed by third parties, could receive a Notice of Allowance within 10 to 12 months of the filing date. However, the ITU application would not be registered until the applicant files an acceptable Statement of Use along with specimens showing the mark in use in commerce.

Marks Not Subject to Registration

A trademark cannot be registered if it consists of or comprises immoral, deceptive, or scandalous matter or matter that may disparage or falsely suggest a connection with persons living or dead, institutions, beliefs, or national symbols or bring them into contempt or disrepute;
consists of or comprises the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation or any simulation of these; consists of or comprises a name, portrait, or signature identifying a particular living individual, except by his or her written consent, or the name, signature, or portrait of a deceased president of the United States during the life of his widow, if any, except by the written consent of the widow; consists of or comprises a mark that so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely when applied to the goods of another person to cause confusion, mistake, or to deceive.

Service, Certification, and Collective Marks

The Trademark Act also provides for the registration of the following:

Service mark.
This is a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

Certification mark.
This is a mark used on or in connection with the products or services of one or more persons other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

Collective mark.
This is a trademark or service mark used by the members of a cooperative, an association, or other collective group or organization. Marks used to indicate membership in such organizations may be registered as collective membership marks.

Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use the designations. The claim may or may not be valid. The registration symbol®may only be used when the mark is registered with the PTO; it is improper to use it before the registration issues. Omit all symbols from the mark in the drawing you submit with your application; the symbols are not considered part of the mark.

BusinessWeek Online - Upstart Small Business Legal Guide by Robert Friedman