Trademark Application Questions
A trademark is a word, symbol, device or any combination thereof, which is used to distinguish the goods of one person manufactured or sold by others, and to indicate the source of goods. Goods have Trademarks and services have Service Marks. Both are approached and researched in the same way, so any commentary about Trademarks usually applies to Service Marks as well. Trademarks and service marks may also include packaging, smells, sounds and architectural designs.
The purpose of trademark law is to ensure that consumers are able to rely on marks in exercising their preferences by prohibiting competitors from using marks in a way that confuses consumers about the source of goods or services.
Under Common law, rights are granted to those who have been using the mark the longest. Trade name rights exist for the common law within the mark’s geographic trade area. Without registration with the U.S. Patent & Trademark Office for federal marks or with the Secretary of State for state marks, rights to a mark depend on the actual usage of that mark in commerce. In order to claim common law rights, use must be substantial and the “in the ordinary course of business”, not merely for the purpose of reserving rights in the mark. Placing the mark on goods and making the goods available for sale is the most common means of using a mark in trade. For services, using the mark in commerce in connection with the sale and advertising of the services will suffice as use. Mere internal use, such as a company’s use of the mark on samples sent to its sales representatives, will not suffice as use. Similarities are much more narrowly defined under common law for sound, appearance and meaning, than for registered or pending trademarks.
The United States Patent and Trademark Office (USPTO) is an Agency of the United States Department of Commerce that regulates the registration of patents, copyrights and trademarks.
In 1946, Congress enacted the Lanham Act, which is the federal trademark protection statute. It was created to protect consumers and competitors from a wide variety of misrepresentations of products and services in commerce. The statute holds liable, any person who utilizes false advertisements or deception to sell his goods or service. It also holds that any person utilizing a mark that may be confused for another’s mark, is liable for damages to the owner of the original mark. In addition, since the Lanham Act is a federal statute, a trademark owner may bring an infringement law suit in a federal court.
There are essentially four different categories of trademark protection. At one end of the spectrum are generic terms which can claim no protection. At the opposite end of the spectrum are arbitrary or fanciful terms (often made-up words) which may always claim protection due to their uniqueness.
In the middle, which is where most marks fall, there are descriptive marks and suggestive marks. Descriptive marks, which are marks that allude to a product or service not specifically described in the mark, may obtain registration only if they have acquired a secondary meaning. Secondary meaning arises when the relevant consuming public has been exposed to the use of the mark, not just in its descriptive sense, but also as an indication of the source of the good or service. Under the Lanham Act, proof of substantially exclusive and continuous use of a descriptive mark on goods or services for five years may serve as evidence that the mark has attained secondary meaning.
Suggestive marks are those that require some measure of imagination to reach a conclusion regarding the nature of the goods or services provided. Suggestive marks are deemed inherently distinctive and can claim protection.
From a legal standpoint, a distinctive trademark is important. The more original the mark, the less the chance of infringing the rights of others, and the easier it is to protect. The strength of the mark is an important factor in determining whether a mark infringes on another.
From a marketing standpoint, distinctive marks offer greater advantages in the long run. However, they also require more investment over a longer period of time in order to build customer recognition and meaning.
A trade name is another way of saying a commercial enterprise has a product or service name or identification that is used in commercial trade. Trade names can include both registered or unregistered trademarks and service marks.
If your mark consists of merely a surname, then there is a possibility of its being rejected by the Patent & Trademark Office on that basis alone. They look at each instance separately. Therefore, if your name can be seen as somehow distinguishable from that of a mere family name, you may have a better chance at registration. Distinction may be through actual use in commerce.
Famous marks are very well known product names and service names. Their rights are recognized to exist between ALL classes of goods AND services. Comprehensive trademark research always considers famous marks.
A dilution claim can be brought against anyone who dilutes the strength of the mark, either through blurring or tarnishment. A federal dilution claim may only be brought if the mark is famous. Under a state claim, the mark does not need to be famous. Blurring occurs when the primary owner has a strong mark that the public associates very closely with the owner as a business or source of goods and a secondary user uses the same name or highly similar name in dissimilar goods or services. Tarnishment occurs when the secondary owner’s use of a similar mark or trade name casts the primary owner’s distinctive well known mark or trade name in a bad light and thus “tarnishes” the luster of the primary owner’s commercial image or reputation.
Since famous marks are granted such broad protection, a trademark owner, even if in a different industry, will be held liable for any dilution through blurring or tarnishment.
Although preliminary searches may be used as an initial screening, a comprehensive search will still be needed to determine whether any trade name is commercially available or trademarkable. Comprehensive research includes a search of the Federal and State Trademark databases, as well as common law databases.
The USPTO and every State will only search its own records for possible infringement.
Any prior similarities or conflicts affect the applicant whether or not a registration is later achieved. First use trumps application. Ideally, searches need to be done BEFORE use.
The USPTO, for example, does not search any of the 50 States for common law use.
It is up to the applicant to search the State, Federal and common law, or first use data bases before applying for a trademark.
States, for example, does not search Federal trademarks, any of the other 49 States or any of the 50 States for common law use. States will only check their own data bases for similarities and conflicts, when you apply for a trademark.
Not only are you granted exclusive nationwide ownership rights for mark within its industry, you also gain the following advantages :
- The right to use the ® symbol, which notifies others of your Federal trademark rights, when finally registered. While a mark is pending registration, the SM symbol is used for services and ™ symbol is used for products.
- The right to expand nationwide, even if you are currently only selling within 2 states, thus interstate commerce, or between the USA and a foreign country.
- If another mark is infringing upon yours, you’ll have access to Federal courts as well as a greater chance of recovering damages.
- The right to stop importation of infringing marks. The US Department of Customs receives a copy of the registration and will help enforce your trademark by blocking infringing named goods from entering the United States.
- Other entities will much more readily accept your trademark and first use common law rights when you have a registered Federal trademark.
If only doing business in one State, then only a State trademark or service mark may be obtained. Only in-use applications may be applied for. States do not accept Intent-to-Use applications like the USPTO.
- While a State mark is pending or registered, the ™ symbol is to be used for goods and the SM symbol is to be used for services. The ® symbol is a USPTO symbol.)
- The right to expand statewide. The name will be waiting for you in other metros.
- If another mark is infringing upon yours, you’ll have access to State courts.
- Other entities will much more readily accept your trademark and first use common law rights when you have a registered State trademark.
- Future Federal trademarks will not be able to be used commercially anywhere in your State, thus giving you a strategic advantage against larger competitors.
Federal Trademark registration is recommended if the business is offering its goods or services in at least 2 states OR between the United States and a foreign country, so that there is geographic room to grow. On the other hand, with additional territory, there is added responsibility to protect your mark – or lose it! There are certain businesses that will only operate within one, two or a few States, and do not have plans to expand outside of their present areas. For example, a restaurant with only a few locations in two States and has no plans to expand and/or franchise. In this case, two State trademarks will suffice because they will be easier and less expensive to protect, while still gaining ownership rights in the States they need for future expansion. However, if a trademark owner doing business in two or more states chooses to only register the trademark as state marks, the owner runs the risk of another owner registering the same trademark on a federal level. In this case, the owner with the state registrations will retain ownership rights to the trademark in registered states, but cannot expand outside of the registered states without infringing on the federally registered mark.
The Trademark research conducted for those companies interested in a State Trademark is exactly the same as for those companies interested in a Federal trademark – The US Federal & State trademark research. Here’s why :
- The Federal trademark database has to be searched because those companies that have Federal trademarks have rights to the name throughout the entire country.
- The State trademark database includes all 50 states, though special attention is paid to those marks that are registered in the State of interest.
The type of Common-Law research, State or National, needed varies from company to company. It’s recommended that a client speaks to one of our researchers to determine the exact research needed. National Common-Law research should be done most of the time, even if you are only operating within one state. The reasons for this are:
- If a company is incorporated in a State other than where it is based (e.g. incorporated in Nevada but actually operating in California), then there’s the possibility of missing a use, if only conducting a State Common-Law search.
- If your company could be franchised (e.g. restaurants, video stores, supermarkets, etc), then you’ll want to conduct a National Common-Law to find any other conflicting marks that may be franchising their services.
- If your mark is a good (i.e. a product), you’ll want to make sure that there are no other services that may be selling within your trade area.
- If your mark is a service, you’ll want to make sure that there are no products being sold within your trade area.
- With the Internet, many services and products are now offered nationally, thus possess first use common law rights nationally, even when operated from one small metro, like Key West, Florida.
State Common-Law research is recommended for very State specific services, where it is practically impossible for another related use to be regional or National.
Similarities may exist if there is merely the likelihood of confusion. If there is a possibility for the consumer to believe that another’s product or service comes from a competing mark, then there is the likelihood of confusion between the marks. Courts will look at the strength of the mark, the proximity of the goods, the similarity of the marks, evidence of actual confusion, the similarity of marketing channels, and the degree of caution executed by the typical purchaser in order to determine if there is a likelihood of confusion on a case by case basis.
A trademark that is overly descriptive and lacks secondary meaning is considered to be invalid. A mark is descriptive if it conveys an immediate idea of the ingredients, qualities or characteristics of the goods or services. This is because it would be unfair to allow a firm to prevent its competitors from informing consumers about the attributes of the competitor’s brands by obtaining sole trademark rights to the descriptive terms. This also ensures the freedom of the public to use the language involved, without the possibility of infringement suits by the registrant against others who use the mark to advertise or describe their own products or services. If a firm does use a generic or descriptive term as a trademark, this makes it difficult for competitors to market their own brands of the same product or service.
If another mark does not enforce its registered or common law rights from 5 to 6 years, then it is said to acquiesce, or give up, the name to the latter party. This time period is arguable. Please request one of our trademark attorneys for a free consultation.
When there is a violation against any mark registered with the U.S. Patent and Trademark office, the registrant of that mark (plaintiff) may be entitled to the recovery of profits obtained by the violator (defendant). The plaintiff is also entitled to recover 1) any damages sustained, through another’s usage of his registered mark, and 2) the costs of legal action taken to end the defendant’s usage of the mark.
To protect against infringement, it is recommended to search your trade name every 2-3 years, or purchase a trademark monitoring service. Then, if another use is found, it will be new enough to make it easier to change their name. Allowing continued use makes it more economical to fight a trademark case, instead of recognizing the other mark and changing names. The over time increasing cost to change names makes it more likely another company will put up a trademark defense.
Yes! A mark may be automatically monitored on a daily or monthly basis for a small fee.
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