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I have worked with the Tracy Jong Law Firm for a number of years and filed patents with them. I am happy with the work and am planning to pursue another patent for my project EcotramTM.
INTELLECTUAL PROPERTY LAW INFORMATION
A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. It can also include trade dress (packaging or restaurant design), sounds (such as the MGM lion roar or the NBC chimes) and smells. A service mark identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.
Applying to register your trademark with the United States Patent and Trademark Office (USPTO) begins a legal process. Legal requirements and deadlines must be met and fees may be required throughout the process. Not all applied-for trademarks register. And if the requirements are not correctly satisfied, it may provide a basis for cancellation of a mark that was registered.
Learn More About Trademarks:
Things To Know Before Filing
Purpose Of A Trademark
Trademarks protect the public from confusion and protect the trademark owner from losing his market. Trademarks serve several functions in the modern marketplace:
Indicate origin of your product or service allowing customers to easily identify your brand from others in the marketplace;
Indicate to your customers an assurance of quality;
As a marketing and advertising device to develop and protect your market.
Rights Conferred (Given) Under A Trademark
Once registered, trademarks cannot be used by anyone else for the same goods or services for which the trademark is registered. If they are, then the owner (“Registrant”) can take immediate action to prevent further infringement and seek damages. The acquisition of a federal registration allows the trademark registrant to nationally enforce his trademark in the federal courts. The federal registration serves as constructive notice to others in distant geographic areas. Federal registration also provides a statutory right of incontestability (after the 5th year of use in commerce).
Requirement Of Distinctiveness
A trademark or a service mark must be distinctive. Distinctiveness may come from the inherent nature of the mark (fanciful or coined marks) or developed through marketing. The test applied by the trademark office is likelihood of confusion. Would a consumer be likely to be confused, deceived or mistake one mark from another? Factors considered in making this determination include:
similarity of the marks
similarity of products
area & manner of concurrent use
degree of care likely to be exercised by the consumer (related to cost of product and sophistication of purchaser)
strength of the mark
The Trademark Examiner will review the mark proposed for registration and classify it as:
Arbitrary or fanciful
Generic terms define the product or service and refer to the genus of which the product or service is a species. They are not eligible for registration. An example might be a mark using “milk” or “spoon” to describe the same product. Descriptive terms identify a significant characteristic of the goods or services. With secondary meaning, they may be registered as marks (Ex: “Vision Center” for an optics store). Suggestive marks are primarily distinctive, even if partly descriptive. The key is that it requires imagination, thought or perception to convey the nature of the product. The mark alludes to the product (Ex: “Mustang” for fast cars). Secondary meaning is not required. Arbitrary or fanciful marks convey nothing about the nature of the product (“Kodak” and “Xerox” are fanciful marks). A mark may be generic with respect to some products but arbitrary with respect to others (Ex: “Apple” is arbitrary when applied to computers). Be careful about how you use your mark - marks may lose status and become generic. “Aspirin,” "escalator," "thermos," "trampoline," "kerosene" and "zipper" are good examples of marks that were cancelled on this basis.
The inquiry focuses on both the product and the mark. Without a showing of secondary meaning, a mark must do more than merely describe a product in order to distinguish it from other producers. Secondary meaning is essentially consumer identification. Since the statute prohibits the creation of a monopoly on words necessary to describe the goods for sale, many descriptive marks cannot be registered. Slogans must be unique and non-descriptive. Similarly, deceptively misdescribed terms are not eligible to be registered as marks. The test applied asks: “What is the natural meaning of the mark in the particular trade and market? Is the term primarily distinctive rather than primarily descriptive?”
How can one show secondary meaning?
Amount of advertising
Number of sales
Character of mark
Evidence of consumer identification and response
Role Of A Trademark Attorney
The attorney’s role has many facets and depends on the needs of the client customer. Some clients are just beginning a business venture and are thinking of developing a product, brand or company name for the first time, or creating a new product line to an existing business. The attorney can provide guidance and legal advice to help an applicant select a mark that has the best chance of being registered and will be the easiest to protect over the many years the mark is in force.
Some clients have been using a mark in business for a period of time. After developing customer good will in the company name, brand name, logo or product name, they wish to protect the investment they have made and prevent late-comers (“copycats”) from encroaching on their market share and the good will created in the mark.
Other clients have been using a mark and have received a communication that there is some potential problem in using the mark. They may need counseling on what they can do to avoid infringement or creating consumer confusion with the other mark.
Some clients have a mark registered in the U.S. or another home country and seek to an international trademark registration pursuant to the Madrid Protocol. The attorney can file international applications for U.S. clients based on U.S. trademark registrations. The attorney can also assist in the prosecution of the U.S. national phase of Madrid Protocol applications through the World Intellectual Property Organization where the U.S has been named as a designated country where protection is sought.
Some clients need advice on developing a trademark protection program to learn how to properly use their mark on products, advertising, websites and other materials. In some cases, clients require counseling on how to properly let others use the mark (distributors, retailers, other websites, etc.) without negative effects upon their trademark rights and ability to protect the mark.
Trademark Clearance Search
A trademark clearance search searches the federal register, state registers and common law sources (for unregistered marks) to determine if the field is clear to use a proposed mark and to identify potential issues before the process is started. This service is recommended before investing in your brand, logo, etc., as the costs of these investments is high.
Choosing A Strong Name
It is appealing to choose marks that are related to the product, that describe or suggest something about it. But these are harder to register and more difficult and expensive to protect in the long run. Your best options for a mark are those that are unique and unrelated to the product. Shoot for arbitrary or fanciful marks.
Remember, some marks are not protectable at all: those classified as generic terms or common names for a product. Keep in mind, however, that a term may be generic for one product but arbitrary for another! For example, “spoon” is generic for eating utensils but arbitrary to cigarettes.
Another thing to consider: a trademark can lose its trademark status if it is not protected. You MUST choose a product name different than your intended brand name. That sounds easy, but inventors who make new products forget this rule so often it is cliché. We all know the story about Kleenex® brand tissue and Xerox® brand photocopies. Moral of the story: ALWAYS refer to “Your brand of product X.” This reduces the chance of your trademark losing its registered status and becoming generic.
It's All In The Name: Use Of Names In Trademarks
There is a general right to use your name as a merchant except to the extent secondary meaning has been established by another. Personal names are descriptive marks unless not primarily a surname. In other words, look in dictionary. Does the word have a recognized meaning other than as your surname? Consider, for example,
Don’t you think of an animal, place or color rather than a surname?
What if there is another merchant with the same surname? Courts favor allowing use of names. They will strive to find a balanced approach to the respective right when possible. Courts may insist on limitations such as size of lettering or disclaimers to prevent consumer confusion. They may allow, for example, “Allen Richard Smith Accounting”, and “A.R. Smith Accounting Associates of Rochester.”
Location, Location: Use Of Geographic Terms In Trademarks
Geographic-related terms can be registered in many cases. The mark will be classified as descriptive, however, if the geographic area is known for the product. Think, for example, about Idaho potatoes, Florida oranges or Washington State apples.
A mark cannot be deceptively misdescriptive. For example, since consumers know Florida is known for oranges, a business growing oranges in Michigan cannot protect the mark “Florida oranges.” Consumers would be misled into thinking that the oranges originated in Florida. Similarly, a U.S. company cannot protect a primarily geographic mark in “Columbian coffee.” Consumers would mistakenly make the association to Columbia as the source of the coffee product.
However, a mark may not be “primarily geographically descriptive” if there are several different locations for the product, the name is also a surname or the name doesn’t import information about product origin. It may be the case that marks with terms such as Hollywood, New York, Miami Beach, Paris and other famous places are used in marketing but have no relation to the product’s origin. Popular examples include “Hollywood Burgers” (one would not assume that the burgers are made in Hollywood) and “Jilbere de Paris” clothing line.
Marks Including "Natural", "Organic" or "Sustainable"
The use of the terms “organic”, “natural” or “sustainable” are generally deemed descriptive of a characteristic of the goods or services and by themselves are not trademarkable. Thus, an applicant must generally disclaim these terms or enter a 2(f) claim of acquired distinctiveness (“secondary meaning” or “consumer recognition”). Another option is to register the mark on the Supplemental Register.
Another issue faced by applicants is §2(a) deceptive matter. Anything deemed deceptive cannot be disclaimed or achieve §2(f) distinctiveness. For a §2(a) deceptiveness refusal, the term must misdescribe a character, quality, function, composition or use of the goods – the purchaser must be likely to believe that the misdescription actually describes the goods and this misdescription is likely to affect a significant portion of a relevant consumer’s decision to purchase the goods. In this scenario, if the product is not organic, natural or sustainable, an applicant cannot use the terms to describe the product as a way to mislead the consumer into purchasing the product.
A deceptively misdescriptive mark may be registered upon a §2(f) distinctiveness showing, but a §2(a) deceptive matter may never be registered. So, how does the USPTO distinguish between misdescriptive and deceptive?
The following factors are considered material to a consumer’s decision to purchase a good or service:
Are other products that contain the term (“organic” or “natural”) generally considered healthier or superior in quality over non-organic or non-natural products of the same type?
Are they generally considered to perform or function better?
Is there a price difference between those bearing the term and those that do not?
The USPTO will also look to social or religious criteria that are generally recognized for proper use of the terms.
Overcoming a §2(a) deceptiveness refusal can often be accomplished by including the relevant term in the goods and services description (ex. “organic sugar”) if the term applies to all of the goods and services in the class. (For services, the wording “featuring” or “including” is often used: “restaurants featuring organic cuisine”).
While the USPTO does not regulate the amount or percentage of material required to use terms such as “organic” or “natural”, other regulatory agencies such as USDA (US Department of Agriculture) and FTC (Federal Trade Commission) may regulate the use of certain terms. State and federal alcohol labeling laws also regulate the use of terms such as “organic”.
Use Of The Word “Organic” On Food, Textiles And Cosmetics
Textiles and foods derived from agricultural products must satisfy the USDA guidelines to bear such claims on its labels and advertising. The USDA has a National Organic Program (NOP) that applies to raw, fresh agricultural products and processed products containing organic agricultural ingredients. A summary of the NOP’s key provisions appears below:
Must contain only organically produced ingredients and processing acids (excluding salt and water)
M95% or more organically-produced ingredients (excluding salt and water). Remaining ingredients must be nonagricultural substances approved on the national list.
“Made with organic ingredients”
Processed products containing 70% or more organic ingredients (excluding salt and water)
“Organic” in the ingredients list
Specific ingredients that are organically produced can be listed as organic
Can identify percentage of organic fibers and specific types
Cosmetics & Personal Care
Must comply with NOP guidelines for production, handling, labeling, processing and ingredients
Product shapes that attract customers may be protected by design patents and trademarks. The key is source identifying function. We all know the product when we see a Coca Cola bottle or an iPod from across the room. The shape gives it away. That is strong consumer recognition and worthy of protection.
Sexy and catchy slogans increase sales. To be protected by trademark, slogans must create a separate commercial impression from other product material or labels. They must be inherently distinctive, not just ordinary. In other words, the slogan must ring in the consumer’s mind as referring to your specific brand. The customer does not need to see or hear anything else to associate with your brand, just the slogan.
Applicants may want to consider domain names as additional marks. Domain names are subject to the same rules, thus, a showing of secondary meaning may be required. It is important, therefore, to use domain names in your advertising to enhance protection. A trademark does NOT automatically give rise to a claim to domain names related to it. Federal registration will, however, be a factor in a domain name dispute.
The Trademark Law classifies perceptory features as descriptive in nature. Therefore, distinctiveness must be shown before protection can be granted to these nontraditional marks.
If the color is used for source identification rather than a functional aspect, and the choice of color does not affect cost or quality, the color may be protected as a mark if secondary meaning (consumer association and recognition) is established. In other words, the color must be recognized by the consumer as signifying a “brand” or source of the product rather than merely a color selection. For example, in sandpaper, colors are used for color-coding various abrasiveness and therefore are functional in nature and not protectable. A popular example of a registered color marks is the brown of UPS.
Sound clips that are source-identifying may be protected as marks. Examples are movie and TV studio sound clips (such as the lion roar of MGM or the chimes for NBC).
The key inquiry for scent is whether it is unrelated to utilitarian aspects or function of the product. For example, scents are utilitarian for air fresheners and perfumes, but not for sewing thread.
Flavors must be unrelated to product function to be granted trademark protection. They must also be used by a consumer to distinguish products from one another. With respect to pills, flavors are functional in that they make medicaments palatable. Additionally, since consumers don’t taste pills until after purchase, they don’t function for consumer recognition purposes. Therefore, flavors were unprotectable for medicament applications.
Motions are especially desirable for internet and website applications and film companies where a series of motions by digital imagery are source-identifying in nature, and therefore, protectable under Trademark Law. The animated “Netscape” logo and the moving image that appears before Columbia and 20th Century Fox Films Corporation features are examples of trademarkable motions.
Mark Format: Standard Character Or Stylized/Design
Before filing your trademark application, you must decide what format you would like the mark to take. There are two choices of format: (1) standard character and (s) stylized or design.
This format is used when how the mark looks is not important. Standard character format registers only the word(s), letter(s) or number(s) (or any combination of these). The rights granted for a standard character mark are quite broad in that they provide exclusive rights to any manner of presentation.
Stylized or design
This format should be selected when there is a certain design element and/or word(s) and/or letter(s) that have a particular appearance (font style, size or color) for which you are seeking protection. Marks registered in color must be used in color to fall within the scope of protection.
A business may have several marks or the same name. They may register a standard character mark, a stylized mark and a mark with a logo. They may register a mark with different colors or writing styles. In addition, it is not uncommon to have both a trademark and a service mark in the same name. A restaurant is a service but it may also sell take-home products (sauces, ice cream, etc.). Franchise entities often have trademarks for products and service marks for the franchising consultation services.
Filing Basis: ‘In Use’ Or ‘Intent To Use’
A trademark application must include a basis for filing, either that the mark is currently being used in commerce or the applicant intends to use the mark in the future. Before your trademark will register, you must be able to demonstrate that the mark is being used in commerce. An ‘in use’ application, therefore, will generally register more quickly than an ‘intent to use’ application because in order to file as the former, the mark must already be used in commerce.
If you plan to file an ‘intent to use’ basis, it is important that you have a bona fide intent to use the mark, but perhaps need a bit more time before you are market ready. An “intent to use” application must include a sworn statement that you have the good faith intent to use the mark in commerce. When it is time to file a specimen, if you have not used the mark in commerce, you can request an Extension of Time of six months (up to five times total). You must file a specimen before the mark will register. Keep in mind that each extension adds expense to the overall costs for registration.
The Trademark Process
Components Of The Trademark Application
In order to file a trademark application with the USPTO, you must include:
Applicant (owner of the mark)
Contact information for correspondence (usually the attorney)
The Drawing (depiction of the mark)
Good/Services to which the mark applies
Filing basis (usually actual use in commerce, bona fide intent to use in commerce, or based on a foreign or international application)
Specimen (for use-based applications; an actual example of how you are using the mark in connection with the identified goods and/or services, usually a digital image of the mark such as a product label, product insert, advertisement, business card, or pamphlet describing the goods or services)
Signature (usually an electronic signature of the Trademark Attorney)
Specimens for Goods
Normally, a specimen for a mark used with goods is an image of the goods showing the mark, the packaging, a container, or a display used in association with selling the goods.
Actual products are NOT accepted by the trademark office; rather a photograph or digital image is submitted.
Invoices, announcements, order forms, bills of lading, brochures, publicity releases, letterhead and business cards are NOT acceptable specimens for goods.
Specimens For Services
A specimen for a service mark must show the mark used in the sale or advertising for the services. These may include:
A brochure about the services
An advertisement for the services
A business card or stationery showing the mark in connection with the services (a business card showing “XYZ” alone would not be sufficient, but a business card showing ‘XYZ” Real estate would be acceptable)
A photograph showing the mark as used in rendering or advertising the services
What To Expect After The Application Is Filed
After the trademark is filed, the application undergoes prosecution. The Trademark Office reviews the application to determine that you have met the minimum filing requirements. If you have, the application is forwarded to an examining attorney. This generally takes several months. The examining attorney reviews the application to determine if it complies with all of the required rules and statutes and includes all of the required fees. A complete examination includes a search for conflicting marks (likelihood of confusion), an examination of the drawings and written application, and any specimen submitted if the application is based on actual use in commerce. The examining attorney will search for pending or registered marks that may be confusingly similar with applicant’s mark. Factors considered by the examining attorney in making this determination include the similarity of the marks and the commercial relationship between the goods and services listed in the application. To find a conflict, the marks do not have to be identical and the goods or services need not be the same, they can merely be related. An example might be sportswear and sports equipment.
If the examining attorney finds no objection, a Notice of Publication is issued and the application moves on to Publication. If only minor corrections are required, the examining attorney may contact the applicant’s attorney (if one is used) by telephone or e-mail and make an Examiner’s Amendment based upon an agreement reached between the two regarding the proposed corrections or amendments. If the examining attorney finds reason that the mark should not be issued, an Office Action is issued, giving the applicant a chance to enter a Response and arguments in support of registration.
If the examining attorney decides that a mark should not be registered, the examining attorney will issue a written document (Office Action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If the refusal is based on a pending application, the examining attorney will notify the applicant of the other mark, but a refusal will ultimately be issued if the earlier-filed application is ultimately registered.
In addition to likelihood of confusion, other reasons marks are refused for registration include marks that are primarily merely descriptive or deceptively misdescriptive of the good or services, primarily geographically descriptive or primarily geographically deceptively misdescriptive of the goods or services, primarily a surname or ornamental. This is not a complete list of reasons, but the ones most often encountered by applicants.
The applicant’s response to the Office Action must be received in the Trademark Office within six (6) months of the mailing date of the Office Action or the entire application will be declared abandoned. If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board, an administrative tribunal of the Trademark Office.
Publication For Opposition
Once the examining attorney issues a Notice of Allowance or raises no objections to registration, the application is approved by the examining attorney for publication in the Official Gazette, a weekly publication of the United States Patent and Trademark Office. The publication is available online for review each week.
The Trademark Office will send a Notice of Publication to the applicant’s attorney (if one is used) stating the date of publication. When it publishes, a party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file an opposition or a request for an extension of time to oppose. An opposition is similar to a proceeding in federal court, but it is held in the TTAB. 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 actual use or a Notice of Allowance will issue for intent to use applications. This generally happens within about 12 weeks of publication.
Notice Of Allowance (NOA) For Intent To Use Applications
After publication, if no opposition is filed or you successfully overcome an opposition, the USPTO will generally issue a Notice of Allowance (NOA) about 8 weeks after publication.
As the term suggests, an NOA indicates that your mark has been allowed; however, this does not mean that it has registered. In order to register, the USPTO must receive a specimen (an example of your mark used in commerce). Within 6 months of the issue date of the NOA you must either:
Submit a “Statement of Use” if you are now using the mark in commerce;
Begin using the mark in commerce and then submit a “Statement of Use;” or
Submit a six-month “Request for an Extension of Time to File a Statement of Use” if you need additional time to begin using the mark in commerce (this can be done up to five times).
Filing An Allegation Or Statement Of Use
For applications based on intent to use, a statement or allegation of use must be filed. The allegation is filed prior to publication and a Statement is filed within six months after the Notice of Allowance. The SOU includes a digital image of the mark being used in commerce with each class of goods or services identified in the application and payment of $100 per class of good or services upon which the mark is based. If the mark is not yet being used in commerce, an extension of time may be sought to extend the time to file with a fee of $150 per class of goods or services. Failure to do one of these will cause an application to be declared abandoned. No more than 36 months may pass after the issuance of a Notice of Allowance and the filing of the Statement of Use. After 36 months, no further extensions are possible.
Amendment To Allege Use
If you initially file an intent to use application and neither the NOA has issued nor has the application been approved for publication, you may file an Amendment to Allege Use, which includes the same information as the SOU (see above). You may not file the Amendment to Allege Use during the “blackout period” after approval of the mark for publication and before issuance of the NOA. In that situation, you must wait until after the blackout period to file your SOU.
After Your Trademark Issues
Maintaining A Registered Mark On The Federal Register
In order to keep a mark in force on the register, periodic filings are required. These include affidavits of continued use or excusable nonuse and applications for renewal. Generally, these are required at the 5 year mark, the 10 year mark, and every 10 years thereafter. The fees generally range around $300-$600 per class of good or services.
Other optional filings such as an affidavit of incontestability under Section 15 (§15 declaration) may also be filed. Fees are similar to those described above. In theory, a mark may continue as long as it is used in commerce in connection with goods and services identified in the application. It may continue for more than a century, well beyond protections offered by patent and copyright law in most cases.
To maintain your trademark registration, you must file a Declaration of Continued Use or Excusable Nonuse under Section 8 (§8 declaration) before the end of the 6th year after the registration date. Failure to file this declaration will result in the cancellation of the registration.
A combined §§8 and 9 must be filed before the end of every 10-year period after the registration date. Failure to make these required filings will result in cancellation and/or expiration of the registration.
Using The Mark Correctly
Marks must be used in commerce to be protected. Ceasing to use them, in the absence of excusable nonuse, will negatively impact a registrant’s rights and will prevent an applicant from getting on the register in the first place and may provide grounds for a competitor to seek cancellation of your mark.
International Trademark Protection
After your mark registers on the US federal registry, you may seek international trademark protection, which can be sought through:
Direct filing in each country
Direct national filing
This is necessary for trademark protection in Canada, Mexico and Taiwan, but direct filing can be done in other countries as well. For direct filing, you need an attorney representative (agent) in each country and any necessary translations. This can make direct filing expensive if several countries or more are sought for trademark protection.
Using the Paris Convention, the right of priority (up to six months) can be established, and there are no domicile (permanent residency) requirements.
This is not an option for US applications.
This is one of two treaties that make up the Madrid System (the other being the Madrid Agreement, above). It can be based upon a US application or registration. The Madrid Protocol is an efficient and cost-effective method for seeking trademark protection in multiple countries because it involves a single application in a single language examined by a single office, there is a single point for changes in name, owner and other data and a single renewal process, and you do not need to hire foreign attorneys. The entire process typically takes 9-18 months and is comprised of the following steps:
US application/registration → Madrid Protocol registration → PTO certifies & sends to WIPO; send s approval of certification → WIPO checks formalities → WIPO sends certificate of registration and notice of publication → mark publishes in the Gazette → mark placed on International Registration → application is sent to designated countries for examination; if no refusal within the time limit (12-18 months) then it is considered registered → designated country sends Notice of Acceptance and Publication → National Publication → Opposition Period ends → Mark is protected in the designated country.
Countries not in the Madrid Protocol:
Latin American Countries
South American Countries
The Madrid System
Those seeking to apply for trademark registration in multiple counties simultaneously may find the Madrid System a suitable option. This would allow the filing of a single international application that would be used in all of the participating countries (as opposed to a separate application in each country). Use of the system is limited to contracting states, which means you can only file the international application in countries that are part of the system.
The Madrid System is actually composed of two treaties: the Madrid Agreement (established in 1891) and the Madrid Protocol (adopted in 1989). The Madrid Agreement consists of 56 contracting states and the Madrid Protocol has 85 contracting states. Some counties are party to only the Madrid Protocol (notably, the U.S., Australia, Ireland, Japan, the UK and the EU). Few countries are only contracting states of the Madrid Agreement (Algeria, Guatemala and Mexico). If the contracting state is a member of only one treaty, the international application must follow the rules of that treaty. For example, since the U.S. is not a party to the Madrid Agreement, U.S.-based clients cannot use this approach in most cases; rather. U.S. applicant can, however, use the Madrid Protocol to file an international application because the U.S. is a contracting state.
Many countries, though, are contracting states of both countries. For countries who are party to both the Agreement and the Protocol, the rules of the Protocol must be used. With few countries party to only the Madrid Agreement, it is infrequently used these days. However, many overseas clients or U.S. clients with an overseas presence may be able to benefit from the Madrid Agreement, so it is important to understand both international application processes.
All Madrid Agreement applications must be in French and based on an existing registration. The Madrid Agreement has only a 12-month period for national trademark offices to refuse registration (versus 18 months or longer under the Protocol) and offers lower filing fees than the Protocol (although the filing fees under both treaties are still lower than direct national filing). Given these advantages, the Agreement is an option to be seriously considered when it is available.
The Madrid Protocol offers some advantages over the Madrid Agreement. In addition to French, Protocol applications can be in English or Spanish. They can also be based on either already registered marks or on pending applications, allowing for international protection at an earlier stage. (The Agreement requires registration in the home country before international filing.) The Protocol includes an additional 25 countries, especially in key commercial markets like the U.S., U.K., E.U., and Japan.
The Madrid Protocol also allows an international registration to be converted into a national registration without losing the original filing date when an application is refused under the Protocol.
There is no one “international trademark registration system,” but the addition of the Protocol into the Madrid System brings the idea one step closer to reality, at least for the participating countries. Between the two treaties, applicants of member countries have a simple, more affordable and efficient way of seeking trademark registration and renewal in foreign countries.
Madrid Protocol Or Foreign Direct Filing?
Madrid Protocol is a good option under the following circumstances:
The U.S. application upon which the Madrid Protocol is based contains a goods/services description that applies well to the foreign protection desired, and a statement/allegation of use is filed in the U.S. application for those goods/services.
The mark is arbitrary or fanciful (not descriptive).
The mark has been registered as inherently distinctive in a commonwealth country (U.K., Canada, Australia, Hong Kong).
The U.S. mark is incontestable (Section 15 declaration filed).
You seek coverage for the mark in the same form in all countries (e.g. no translations).
You have undertaken an international trademark clearance search.
The countries where protection is sought do not refuse registration based on likelihood of confusion.
There is no “hurry” to prosecute the foreign applications to registration. (18 months for first office action).
You seek protection in European countries that are not part of the EU (Liechtenstein, Norway, Iceland).
You are interested in protection in only 3 or 4 European countries.
You don’t have foreign counsel and you are nearing the 6-month priority deadline (your U.S. application filing date).
A foreign direct trademark application (national application) is a good option under the following circumstances:
You could benefit from broader goods/services descriptions than the USPTO will allow. Some countries extend protection to the entire international class or to a greater breadth than registrant has in commerce.
Your mark is inherently weak such as those based on 2(f) secondary meaning, 2(a) acquired distinctiveness, or on the Supplemental Register.
Your mark will likely evolve over time.
The primary countries of interest for foreign protection are not in the Madrid Protocol or are in Europe, or a potential assignee is not tied to a Madrid Protocol country.
The mark is less than 5 years old, especially applications less than 8 months old.
The mark is not yet registered in the U.S.
The U.S. application is based on intent-to-use.
Foreign Filing: Two Paths For A Trademark Owner To Take
This path has many:
Attorneys in each country
Applications to manage
Modifications for change to each application or registration
Each country has at least 18 months to refuse registration. After the deadline, the applicationautomatically receives international registration in that country.
This path generally requires a
Attorney in home country
Registration/Application to manage
Someone who is seeking to use a mark that is currently registered by someone else or who believes that it is being (or will be) damaged by a registered mark may initiate a cancellation proceeding. This is done by filing a petition to cancel a registration with the “TTAB” (Trademark Trial and Appeal Board). The cancellation proceeding is between the trademark owner (“Registrant”) and the challenging party. After the Board receives the petition, it notifies the Registrant that a cancellation proceeding has been initiated and sets a schedule for the Registrant to respond to the complaint (usually giving 40 days for the Registrant to file a written response to the allegations).
The proceedings run much like an in-court lawsuit. The entire process of a cancellation proceeding can take anywhere from one to several years. The parties exchange evidence regarding their respective trademarks and other issues relevant to the cancellation proceeding. They also file briefs with the TTAB. The TTAB reviews these briefs and make a decision as to whether the trademark should be canceled. Besides proving that the challenging party is likely to be damaged by the mark, it must also prove that there are valid grounds that the mark is not entitled under law to be registered (such as likelihood of confusion or non-use). If it is cancelled, the trademark is removed from the federal registry and the owner no longer possesses the rights to exclude others from using the mark. (Note that the proceedings act on the federal level; there may still be state rights in the mark.)
A cancellation proceeding is commenced by a petitioner filing a Petition to Cancel a trademark registration. The petition must be filed with a good faith belief that the petitioner has a basis to cancel the registration. Such bases might include abandonment of the mark or arguing that the registrant was not entitled to be granted a trademark registration under the statute.
The petition must be served upon the registrant or its counsel at the time of filing the petition.
If service is ineffective, the petitioner must notify the TTAB within ten days of receipt of the returned mail or otherwise learns that service was ineffective. While the petitioner has no affirmative duty to investigate the registrant’s whereabouts, if it does voluntarily undertake an investigation, it must report any address it uncovers to the TTAB. The TTAB will then effect service by publication in the Official Gazette or issue an Order concerning how service should be affected by the petitioner.
The defendant’s Answer is due 40 days after the mailing of the TTAB Order (after receipt of the cancellation proceeding petition). The Order will also contain other dates pertinent to discovery and trial. Within one month after the Answer is due, both parties are required to participate in a conference all to discuss the nature and basis of asserted claims and defenses, possibility of settlement, possibility of narrowing the scope of the claims, defenses and discovery and arrangements for disclosure, discovery and trial evidence introduction. The parties will also discuss whether they agree to electronic service and filing (fax or e-mail) of litigation documents.
The Discovery Phase
One month after defendant submits the Answer, discovery opens. Discovery is the exchange of evidence. Each side can demand pertinent evidence from the other side. This discovery phase lasts six months and allows each side to learn information that may support its allegations, as well as to assess the strength and merit of the opponent’s case.
The parties can also continue to discuss possible settlement or use of mediation, arbitration or the TTAB’s Accelerated Case Resolution (ACR) process. These avenues may be more expeditious and economical ways to resolve the dispute.
Complaints Under Uniform Domain Name Dispute Resolution Policy (UDRP)
A complaint under UDRP alleges that the domain registrant has no legitimate interest in the domain because the domain infringes the trademark of the complainant. The registrant may rebut the allegations by showing that, without prior notice that the use of the domain was contested:
The use or preparation for use was in connection with a bona fide offering of goods or services, or
The registrant has been commonly known by the domain name even if no trademark rights have been acquired, or
The registrant is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the mark.
What Is A Trademark Or A Service Mark?
Trade marks protect the consumer from confusing other brands with your brand of product. Put more simply, you want consumers seeking to purchase your brand of product to be able to easily identify it from all of the others in the marketplace; you do not want them to mistake an inferior quality copycat for your product. While trademark rights may be used to prevent others from using a confusingly similar mark, they will not prevent others from making or selling the same goods and services under a clearly different mark (that requires patent protection). Trademarks are used for brand names, store names, product line names, logos, packaging, colors, sounds and even shapes of products.
As defined by the United States Patent and Trademark Office, a trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguished the source of the goods 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 goods.
Trademark rights may be acquired by federal registration, state registration and common law rights through use in commerce. Unfair competition law also provides some protection.
What Can Be Registered As A Mark?
Letters and words, logos, pictures, a combination of words and a logo, slogans, colors, product shapes, sounds and tag lines can all be registered as a mark. The key is source identifying function of the indicia. This means that the mark must serve to uniquely distinguish your source of the product or service, that is, your proprietary brand.
Can I Reserve A Mark For Future Use?
Yes, if there is a bona fide intent to use the mark in commerce. This makes sense since the premise of trademark protection is protection against consumer confusion in the marketplace. You cannot reserve a mark simply to block others from using it. If you are starting a business venture, you can file an intent to use application. You will need to file a specimen of your use in commerce at some time in the future. Use in commerce means:
For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
For services: the mark must be used or displayed in the sale or advertising of the services and the services must be rendered in commerce.
Do I Have To Register My Mark To Get Protection?
As soon as you start using a mark in commerce, you have certain common law trademark and unfair competition rights. You do not need to federally register a mark to have those rights. You may wish to register the mark at some time in the future because you have stronger, more enhanced rights by doing so. However, some marks cannot be registered because they are classified as generic. Some marks may be immediately protected because they are classified as fanciful or arbitrary. Some marks are classified as descriptive and can only be registered when they have “secondary meaning” or consumer recognition. Some marks are classified as suggestive and can likely be registered without proving “secondary meaning.”
The advantages of registering your mark include:
The right to use the ® symbol;
Listing in the USPTO online database;
Public notice of your claim to the mark with the presumption of ownership of the mark (this grants your exclusive rights to the mark nationwide in the registered good/services list);
The basis for registration in foreign countries;
The ability to register with the U.S. Customs and Border Protection (CBP) Service to prevent the importing of infringing foreign goods;
The ability to bring an action related to the mark to federal court; and
The ability to collect attorneys’ fees in an enforcement action.
When Can I Use ™ Or ®?
You may use “TM” (or “SM”) as soon as you lay claim to ownership of the mark, even if you have not yet filed a trademark application with the USPTO. Use of these symbols alerts the public that you claim ownership of the mark.
use the ® symbol after the USPTO registers the mark (not while the application is still pending) and only in connection with the goods/services listed in the registration.
Who Can Be An Applicant?
The trademark application should be filed in the name of the owner of the mark. The owner can be an individual, a corporation, a partnership, a limited liability company or other legal entity.
Do I Have To Be A Citizen To Apply For A Mark In The U.S.?
No, but if the owner does not reside in the U.S., a domestic representative in the U.S. must be appointed as part of the application process. An attorney usually serves in this role.
How Must I Format The Drawing Of The Mark?
Most applications are filed electronically. The requirements for electronic images are .jpg format. If color is included as a feature of the mark, a color claim must be included naming the colors that are claimed as a feature of the mark and a separate statement describing where the colors appear on the mark.
Paper copy images should be prepared on letter sized (8” x 11”) white paper that is non-shiny. The mark can be no larger than 3.5” x 3.5 inches or 8 cm x 8 cm. The drawing page should include a heading with applicant’s name, correspondence address, listing of goods and/or services and dates of use or words “intent to use.” The mark should appear below the heading in the center of the page. If applicable, a statement “The mark is presented in standard character format without claim to any particular font style, size or color” should be included.
The domestic representative is a person upon who notices or processes may be served for proceedings affecting the mark. This address must be kept up to date with the Trademark Office.
What Is The Difference Between Primary Register And Supplemental Register?
What Is “Use In Commerce”?
For the purposes of obtaining federal registration, “commerce” means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country.
“Use in commerce” must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:
For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be transported in commerce.
For services: the mark must be used or displayed in the sale or advertising of the services and the services must be rendered in commerce.
What Is “Secondary Meaning”?
Simply put, it means consumer recognition. Secondary meaning is necessary to gain trademark protection of descriptive marks and can be established by period of sales, use and advertising. In other words, purchasers associate the mark with a single source – they know it is a brand from some business. Ask yourself, when consumers hear the term or see the mark, do they think of your company or product?
What Is A Specimen?
A specimen is an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services. This is not the same as the drawing of the mark you submitted with your application, which merely represents what you are claiming as the mark. It is the mark as it is actually appearing on products and advertising.
How Do I File The Specimen?
If filing electronically, you must attach an image of your specimen in .jpg format. The Trademark Office has precise guidelines on the file size and other technical specifications. In order to show the context in which the mark is used, the image should include as much of the label or advertisement as possible.
If filing a paper application, the specimen submitted with the application must be flat and no larger than 8½ by 11 inches. If you submit a larger specimen, the USPTO will create a facsimile of the specimen, insert it in the application file wrapper, and destroy the original submission. Specimens consisting of videotapes, audiotapes, CDs or computer diskettes are acceptable for sound marks that cannot be used or perceived any other way.
Can Domain Names Be Registered As Trademarks?
Yes, if they otherwise qualify as marks. To qualify as a mark the domain name must be more than an internet address. The domain name must be used to identify the goods or services (provided via the internet) of the mark owner. The name must be used in advertising and marketing so that it is used by a consumer to identify the source of the goods or services. Popular examples might be Priceline.com or Amazon.com.
When choosing a domain name that you may wish to trademark, it is best to select unique names. Descriptive or non–unique marks are more difficult to register.
Why Should I Register My Domain Name?
If you want to protect your domain name in the cyberworld, registration is one factor that will be considered in the analysis of whether there was bad faith. Bad faith under the UDRP means:
Domain name acquired primarily for the purpose of selling or renting it to a trademark owner or competitor (cyber squatting), or
Domain name registered to prevent trademark owner from protecting trademark as a domain name (blocking), or
adopting a domain name to disrupt a competitor’s business, or
intentionally attempting to confuse consumers to go to your website.
With registration, the domain name owner can defend itself by showing that it has legitimate rights to use the domain.
If a trademark owner does not aggressively protect its rights in the mark, thereby allowing others to infringe upon or dilute the mark, it risks losing the mark through abandonment. Trademark owners have an increasing burden to protect their mark in the cyber world with so many top level domains “.com”, “.net”, “.gov”, “.edu” “.biz”, “.info”, etc. Domain name registrations may be challenged under federal trademark law in federal court or under UDRP in arbitration hearings. Each of these forums differs in terms of cost, speed, jurisdictional issues, effectiveness of remedies, and relief.
Proactive approaches include preemptive registration of all possible combinations of your mark as a top level domain.
While the current legal system may have its flaws, it is necessary to understand the reality of the legal landscape and to govern your conduct accordingly.
Can My Domain Name Infringe On Someone Else’s Trademark?
Yes, if someone else has registered a mark that is similar to your domain name and claims that (1) your domain name has the potential of confusing the public as to the origin of the products/services and (2) creates an implication that the mark’s holder is somehow involved with your website. Another claim that may be made with “famous” marks is that your website dilutes the value of their registered mark.
Is It Enough To Disclaim Any Connection With The Trademark Owner Or My Webpage?
It is unclear. The test is likelihood of confusion, but the decisions have many diverse outcomes. Some courts recognize different genres of consumer confusion: point of sale confusion, initial interest confusion, investor confusion and post–sale confusion.
It appears that a potential infringement claim may exist even if the consumer’s confusion is eventually dissipated before a sale is made and thus, a disclaimer may not be a sufficient defense. If a consumer is initially confused and drawn to the junior user believing it was the senior user’s website, the courts may find a type of “bait and switch” of the manufacturers/distributors that impermissibly allows a junior user to get a “foot in the door” by confusing consumers.
Some courts have found that internet users are more easily confused than consumers at “brick and mortar” stores because of the mere “one click” to enter the website. Yet other courts have found that internet users are “inured to false starts and excursions” and if consumers immediately recognize they have not reached the site they were looking for, they click on other sites in their search results.
What Are Meta Tags?
Meta tags can be the difference between your website being unknown in cyberspace or searchable by search engines. Meta tags are html tags that insert text onto an html (web) page that is not visible to the user viewing the page through a browser (Netscape, Mozilla FireFox,) but provides information that describes the content of the webpages. The meta tags were intended as a way for web crawlers to index websites. In other words, they were intended to help browsers to identify key content on a website and optimize searching capabilities for the user and access for the website owner. However, meta tags quickly became unreliable as they were used to “spam” and trick web crawlers into thinking the page was relevant to a search request.
There are many types of meta tags: abstract, author, copyright, description, distribution, expires, keyword, language, refresh, revisit, robots and the like. The use of meta tags may be a practice of the past, but it is instructive to understand their interplay with trademark law. Where a meta tag diverts traffic from a website owned by a registered trademark owner, it may be infringing on the trademark.
Use Of Keywords In Websites
Website owners, web designers and search engine placement firms should have written agreements that assign risk and responsibility for keyword creation and placement. The website developer or owner may become a defendant in an infringement action.
Mark owners may claim that use of their mark by the alleged infringer as a key word diverts traffic from the mark owner’s website to the alleged infringer’s site. A related claim is consumer confusion as to whether the alleged infringer’s site is related to the mark owner’s site.
The law is still developing in this area and the direction is not always predictable. The cases provide guidance about what may or may not be held as infringing. For example, courts found that pop–up ads that used trademarks in the directories that determine when such pop–up would “launch” were not an infringing use.
In another case, a former Playboy playmate who used the terms “Playboy” and “Playmate” in her meta tags was found not to be infringing those marks since she was actually a Playmate and her site contained an express disclaimer that it was not endorsed by Playboy magazine. In short, the court found no consumer confusion. Be aware, however, that other courts may have ruled differently.
Tracy P. Jong, Esq. |
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