What is a trademark?
A trademark (or service mark) is a word or words and/or designs that can be used to identify that goods originate from a particular source. The last thing a business owner wants is a competitor to trade (either intentionally or unintentionally) on their good name. Our trademark system, if used properly and effectively, can help prevent this from happening. The best way to help prevent this from happening is to apply to register your trademark or service mark with the United States Patent and Trademark Office (USPTO).
A service mark is almost the same thing as a trademark, but used to identify a service instead of goods (e.g., a travel agent that offers a service can register their business name as a service mark). An attorney can help you determine whether you should apply for a trademark or a service mark.
What are the benefits of registration?
It is hard to imagine a well run business in this day and age that fails to register their trademarks. Benefits of having a Federal trademark registration include:
1. Constructive notice nationwide of the trademark owner's claim. Thus, once your mark is registered, another party cannot claim they had no knowledge of your use of your mark. This even applies to pending applications, for example if an application is pending before the USPTO (but not yet granted), another party cannot adopt that mark (or a confusingly similar one) in good faith.
2. Evidence of ownership of the trademark. It will be clear on the public record who has the rights to the trademark registered.
3. Jurisdiction of federal courts may be invoked. If you need to sue someone for trading on an identical or confusingly similar name, suing in Federal court carries numerous advantages over state court.
4. Registration can be used as a basis for obtaining registration in foreign countries. If you want to protect your trademark in foreign countries then you can claim priority from your US application. If you are interested in marketing your products internationally, this can give you a head start over other applicants.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Between two competing parties for the same trademark, who gets the registration?
Generally, the first to use the mark in commerce or the first to file an intent to use application with the USPTO has the ultimate right to the Federal registration.
What do I need to register my mark?
If your mark is already being used, then you need to supply a specimen of how the mark is being used. A specimen can be a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. For example, if you wish to register "Heads and Tails" as the name of your current dog grooming business, then a picture of your storefront with the name on it will suffice. If your mark is not yet being used, you can still register your mark by way of an "intent to use" application. You have, at the latest, six months (this may be extendable) from the issuance of the Notice of Allowance to file a Statement of Use with a Specimen showing how the goods are being used.
How long does it take to get a registration?
This is difficult to predict as it depends on a number of factors, including how long the USPTO takes to process the application, the basis for filing, and whether the application has any legal issues during its examination. It can typically take from less than a year to several years.
Why would a registration be refused?
The United States Patent and Trademark Office will refuse to register a mark if it does not function as a trademark or service mark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered. Additionally, Section 2 of the Trademark Act (15 U.S.C. §1052) contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as:
1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
3. the proposed mark 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;
4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's 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;
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;
6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;
8. the proposed mark is primarily merely a surname; and
9. matter that, as a whole, is functional. An attorney can help you determine whether your intended mark(s) will meet the statutory requirements.
How long does a trademark registration last?
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 §9 renewal application within the year before the expiration date of a registration currently 10 years), or within a grace period of six months after the expiration date, with payment of an additional fee.
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