TRADEMARK PRIMER

A trademark can be almost anything that designates, identifies and distinguishes a source of goods or services from another source of goods or services. A trademark can be a word, a phrase, an image, a symbol, a sound, a design or any combination thereof. A trademark also associates a particular quality with your company, or your goods or services. In other words, a trademark carries the Goodwill associated with your company, products, or services. In many instances, your trademark is the most valuable asset of your entity. Rights in your trademark are established just by the mere use in commerce. The rights established by mere use are common law rights, which can be bolstered and perfected by registering such trademarks with the US Patent and Trademark Office or in a particular state if desired to obtain statutory rights. In the case of products, using the mark on labels or packaging and offering such products for sale can be sufficient to establish trademark rights in the United States. In the case of services, demonstrating advertising or a website for such services can establish rights in the United States. In many foreign jurisdictions, as opposed to the United States, you can obtain rights by just being the first to file your application for trademark registration in the foreign jurisdiction. Federal trademark registration provides the advantages of being able to collect statutory damages attorney fees in certain instances, and have a presumption of ownership for the mark for the goods or services claimed in the registration when asserting your mark in court.

The federal trademark registration process generally provides for three different ways to register:

1. On the basis of Intent-to-Use (ITU):

An applicant can apply based on a bona fide intent to use the mark in commerce. “Commerce” generally means all commerce lawfully regulated by the U.S. Congress including interstate commerce or commerce between the U.S. and other countries. The type of use should generally be use in the ordinary course of trade rather than a token use merely to reserve a right in a mark. The Applicant of an ITU Application will ultimately need to separately prove use in commerce by submitting a specimen and a Statement of Use or Allegation of Use asserting that the mark has been used in commerce before the USPTO will grant the registration for the mark.

2. On the basis of Use:

If an Applicant already has “use in commerce” , the Applicant can file for federal registration based on use. Such use-based application will include upfront a specimen and allegation of use.

3. On the basis of a foreign application or foreign registration:

Under treaty, a foreign applicant can file in the US on the basis of a foreign application or foreign registration.

Federal registrations for trademark initially last for 10 years (and can be renewed every 10 years), but the USPTO does not like for marks on the register to become stale. Thus, the USPTO requires that initial registrants prove that they are continuing to use their trademark between their 5^th and 6^th year of registration or else the USPTO can cancel your mark under Section 8. The mechanism for proving continued use is the submission of a Section 8 Affidavit along with a current specimen. The registration can thereafter be renewed every ten years after initial registration.

The Examination process can typically take anywhere from 6 to 18 months. In the substantive examination, the Examiner performs a search for pending applications and registrations and will determine whether there would be a likelihood of confusion between your mark and the mark of a third party. The Examiner looks at numerous factors including the similarity of the marks themselves in terms of sight and sound, the similarity in goods or services, and the similarity of trade channels among other factors. Thus, it would be wise to have your trademark attorney perform at least a preliminary trademark search to determine if there are any potential conflicts with third party marks. Further note that there are other reasons for rejections of marks besides conflicts with third party marks for causing a likelihood of confusion. For example, marks that are considered generic, merely descriptive, deceptively misdescriptive, primarily geographically descriptive, primarily geographically deceptively misdescriptive, or primarily merely a surname can be rejected. Please consult your trademark attorney for pre-emptively avoid such issues or finding ways to possibly avoid such issues.

A US Registration only provides protection in the US and its possessions and territories. Separate registrations in desired jurisdictions should be obtained to provide adequate protection in such jurisdictions. Filings can be done in each individual country or in certain circumstances with treaty organizations, for example with the European Union Office to obtain a European Union Trademark (EUTM, formerly known as a Community Trademark or CTM) or with the World Intellectual Property Organization (WIPO) via the use of the Madrid System for international registration of marks.

You can designate your marks immediately with either the TM symbol or the SM symbol for trademarks or service marks respectively for marks you believe you have right in, under common law or otherwise. Be careful to only designate your mark with the registration symbol ® only after your mark has been registered with the USPTO. You can jeopardize your pending application or your ability to file an application if you use the registration symbol without actually having the registration.