What is a Trademark?
A trademark is any word, name, symbol, or device, or any combination that is used to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Good businesses deliver good products and/or good services and this creates goodwill for the company in the minds of its customers. A trademark is a vessel or a container that holds this goodwill so that it may be saved up and built up over time for the ultimate befit of the customers who can use the trademark to find the products and services that evoke positive associations. Without trademarks, customers could have no expectations based on past experiences. With trademarks, customers can come to trust that products or services associated with a particular trademark will be of a consistent quality and value.
Types of Trademarks
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
A service mark is like a trademark except that it is used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.
In addition, there are certification marks which are used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization. The familiar UL mark is a certification mark and it certifies that a product has been tested by Underwriter’s Laboratory. There are also collective marks which are trademarks or service marks used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark that indicates membership in a union, an association, or other organization.
The USPTO examines trademark applications to determine if there islikelihood of confusion between the mark in the application and a previously registered trademark or another mark in an earlier filed, pending application. Likelihood of confusion is a technical way of saying that a mark is too similar to an existing mark. Marks can conflict even if they are not identical and, sometimes, even if they are not used with the same goods or services. If no conflict is found and all of the other statutory requirements are met, the examining attorney can approve the mark for publication. In the US, marks are published before they are registered so that anyone who believes that he would be damaged by registration of a particular mark can oppose the registration of that mark in what is called an opposition proceeding. The USPTO is only concerned with the registrability of trademarks and it has no power or authority to regulate the use of trademarks in the marketplace, even if they are too similar.
There are some kinds of marks that can’t be registered, even if there is no likelihood of confusion, including marks that are primarily merely descriptive or deceptively misdescriptive of the goods and/or services; marks that are primarily geographically descriptive or primarily geographically deceptively; misdescriptive of the goods and/or services; marks that are primarily merely a surname; and marks that are merely ornamental.
Conditions for Registering a Mark
An application must be filed and it must include at least one “basis” for filing. Most U.S. applicants base their application either on their current actual use of the mark in commerce or on their bona fide intent to use their mark in commerce in the future.
Use Based Applications
For purposes of federal trademark 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 of a mark 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 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.
Under certain circumstances, web sites can constitute displays associated with goods and services.
If you file based actual use, the application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application must also include a specimen of use (discussed below) showing how the applicant uses the mark in commerce on or in connection with the goods or services.
Intent to Use Based Application
If you file based on a good faith or bona fide intention to use the mark in commerce, the application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. The applicant or a person authorized to sign on behalf of the applicant must sign the statement.
However, if you file based on intent to use, you must not only begin actual use of the mark in commerce before the USPTO will register the mark, you must prove that use by filing an Allegation of Use form (with a fee and a specimen of use) to establish in the USPTO that use has begun.
Specimen of Use
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, which merely represents what you are claiming as the mark.
Normally, a specimen of use for a mark used on goods shows the mark on the actual goods or on packaging for the goods. You may submit a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods. The actual product may not be submitted. (Note: invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards generally are NOT acceptable specimens of use for goods)
A specimen of use for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e., not just a display of the mark itself. For example, if the mark sought to be registered is “XYZ,” a business card that only shows the mark “XYZ” would not be acceptable. A business card that states “XYZ REAL ESTATE” would be acceptable.
As mentioned above, in some cases, a web site may constitute a display associated with the goods and/or services and print-outs or images of web pages may be acceptable specimens of use.
Conducting a Trademark Conflict Search
After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:
- the similarity of the marks; and
- the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.
If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.
The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. Therefore, it makes very good sense to search the USPTO records (at a minimum) before filing your application to determine if any party is already claiming rights in a particular mark. You may conduct a search on-line here, or by visiting the USPTO Public Search Facility Madison East, 1st Floor, 600 Dulany Street, Alexandria, Virginia. The library is open between 8:00 a.m. 8:00 p.m., Monday through Friday. Both on-line searching and use of the Public Search Facility are free. Additionally, registered and pending trademarks may be searched at a Patent and Trademark Depository Library (PTDL). PTDLs are located throughout the U.S. and there is one in downtown Toledo at the main library on Michigan. If you will be making an early, substantial investment in a new mark, a legal opinion based on a search from a professional trademark search firm should be considered to reduce the risk of an unknown conflict arising in the future.
Filing a Trademark Application
Today, most trademark applications are filed electronically using on-line forms in the TEAS system of the USPTO. In addition to the “basis” and the specimen of use and the filing fee, an application must identify the applicant and it must identify the goods and/or services for which registration of the mark is sought. In the case of a use based application, the goods and/or services would be the goods and/or services on which the applicant is actually using the mark in commerce. For applications based on intent to use, the goods and/or services would be only ones on which the applicant has a bona fide intent to use the mark in the near future. Considering that a mark must be used on all of the goods and/or services before a registration will issue, it is important to be realistic and sincere in listing goods and/or services in an intent to use application. Recent decisions by the Trademark Trial and Appeal Board indicate that, although an applicant doesn’t have to prove that it has a bona fide intent in order to get a mark approved for registration by an Examining Attorney, the applicant may, nonetheless, be called upon later, for example, if there is a conflict with another mark, to prove by evidence that it had a bona fide intention to use the mark on all of the goods and/or services listed in the original application.
Publication of Marks
The USPTO examines trademark applications in an attempt to determine if there is likelihood of confusion between the mark in the application and a previously registered trademark or another mark in an earlier filed, pending application. Likelihood of confusion is a technical way of saying that a mark is too similar to an existing mark. Marks can conflict even if they are not identical and, sometimes, even if they are not used with the same goods or services. If no conflict is found and all of the other statutory requirements are met, the examining attorney will approve the mark for publication. In the US, marks are published before they are registered and anyone who believes that he would be damaged by registration of a particular mark can oppose the registration of that mark in what is called an opposition proceeding. The Trademark Trial and Appeal Board (TTAB) decides the outcome of opposition proceedings. (The TTAB also decides the outcome of cancellation proceedings and appeals taken from a decision by an Examining Attorney to refuse registration of a mark. A cancellation and an opposition are intended to determine whether a mark is entitled to remain registered and be registered, respectively. There is a period of thirty days from the publication date in which an objector can file an opposition (or request up to ninety days extension of the period for filing an opposition, subject to the possibility of getting an additional sixty days extension but only with the consent of the applicant). A petition for cancellation, on the other hand, can be filed up to five years from the registration date.
Do I Need an Attorney?
However, the skilled hand of a seasoned trademark attorney can certainly be a valuable resource in the selection, clearance, adoption and registration of valuable trademarks.
How do I Protect My Trademarks Internationally?
If you are the owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in any of the many countries that have joined the Madrid Protocol by filing a single application, called an “international application,” with the International Bureau of the World Property Intellectual Organization, through the USPTO. Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. Because each country has its own trademark laws, the laws of each country regarding registration must be consulted.