Trademarks

What is a Trademark?

A trademark is any word, name, or symbol used to identify the origin of associated goods or services. Trademarks can also identify a particular endorsement, sponsorship, or licensing. Trademarks serve two essential functions in commerce: 1) they indicate the quality of products; and 2) the origin of products. While everyone is familiar with an enormous number of words that serve as trademarks (such as McDonald', Coca-Cola, and Xerox), trademarks are not always words. Anything distinctive may indicate the origin or quality of goods or services. Trademarks can include: designs, logos, symbols, pictures, slogans, packaging, smells, sounds, and colors.

A service mark is basically the same thing as a trademark except it identifies the origin of service only, not products. The laws are basically the same for trademarks and service marks, so this explanation refers to both as "trademark" or "mark".

Establishing Trademark Rights

Everyone creating and distributing goods or services desires to develop a recognizable product. Trademark laws enable mark owners to safeguard their names and marks from counterfeits. Trademark rights are automatically established through use. "Use" includes a legitimate application of the mark in commerce to identify particular products or services. It can be in the form of tags and labels on goods, advertising in a magazine, invoices to customers, web pages on the internet, etc. Without a trademark registration, however, your trademark rights are limited by geography. Your trademark rights are generally limited to the locations in which you do business or have a reputation. This potentially means that two business simultaneously using the same mark in different locations can enjoy some limited trademark protection. However, the two concurrent users could prevent each other from business expansion.

Strength of Trademarks

The more distinctive and unique a trademark is, the stronger the scope of legal protection the mark is given under trademark law (and by courts). This means that a "strong" mark enjoys a more broad application of trademark law to determine whether someone violates the relevant trademark rights. Generally three considerations significantly determine a mark's strength:

How common is the mark in general and in the relevant industry? If a mark is commonly used in business, like "AAA Maintenance" or "Portland Oregon ________", it is not very distinctive and is thus considered weak. It will receive a narrow scope of protection, if any.
How descriptive is the mark in relation to the goods and services it identifies? Generally, the more descriptive the mark, the less distintive it is. Such weak marks receive a more narrow scopr of protection, if any.
How famous is the mark? Is the mark easily recognized in the marketplace? After continual and extensive advertising and "use", many descriptive marks acquire more strength as they become more well-known (ex. McDonald's, Kentucky Fried Chicken).

The Distinctiveness Spectrum

To be eligible for trademark protection, a mark must be distinctive and capable to identify and distinguish its products or services from its competitors'. Trademarks that are inherently distinctive are marks that clearly distinguish goods or services and are consequently afforded the most protection. Therefore, when choosing a mark for a specific good or service, it is wise to concentrate on those marks that will prove to be inherently distinctive. Inherently distinctive marks are generally categorized in three groups:

Fanciful Marks: marks that have no ordinary meaning and are chosen/coined for the sole purpose of identify a particular good or service. These receive the highest level of protection. Examples: Xerox, Kodak;
Arbitrary Marks: marks that have independent meaning but are used to identify completely unrelated goods or services. Examples: Apples for computers, Jaguar for cars; Dove for soap (or chocolate);
Suggestive Marks: marks that are somewhat related to the goods or services, but the mark does not specifically describe any element of the goods or services. Examples: Eveready for batteries, Bounce for fabric softener, Timex for watches.

Marks that are considered descriptive and thus are generally denied trademark protection typically fall into four categories:

Trademarks that merely describe the purpose or quality and characteristics of the products or services they identify.
Trademarks that describe the geographic origin of the goods or services. (Ex. Sierra-Nevada consultants)
Trademarks that are primarily a person's surname (Ex. Miller and Son's Auto Repair)
Trademarks that describe admirable aspects of the products or services.

Secondary Meaning

Marks that are not distinctive and are instead descriptive terms or proper names, such as McDonald's for fast food or Oat Bran for cereal, are not protectable unless they have established a secondary meaning. Secondary meaning means that a mark has become associated with a particular product through use and consumer recognition.

Establishing and proving "secondary meaning" can take time and is generally expensive. To prove secondary meaning, the trademark owner must often show:

> Substantially Exclusive and Continuous Use. You have used the mark without interruption and no one else has used the mark.

> Substantial Advertising Expenditures. The greater the exposure of the mark, the more consumers will connect the mark with the associated products or services.

> Proof of Number of Sales and Customers. Substantial sales volumes may portray an inference of secondary meaning.

> Customer Surveys and Customer Testimony. Evidence to show that customers recognize your name or mark as a trademark rather than a descriptive term.

Marks that consist of something other than a word or symbol, such as an object, color, sounds and scents, must have a secondary meaning before registration may be granted.

WHY REGISTER?

While rights to a mark are established through "use", registration of the mark with the United States Patent & Trademark Office ("USPTO") greatly increases the rights available to the mark's owner. Some of the benefits of registration include:

The exclusive right to use the mark nationwide in connection with the goods and/or services listed in the application;
Notification to others that the particular mark is in use and not available to others;
Prima facie evidence of validity of the mark and the registration;
Federal court jurisdiction and statutory remedies in the case of infringement; and
After five years of registration, the mark become incontestable by others claiming prior use.

THE REGISTRATION PROCESS

PRELIMINARY SEARCHES

Prior to application for USPTO registration, it is advisable to conduct a "clearance" search to determine whether the mark is already in use. First, a search of the USPTO database provides a snap shot of the potential mark's availability. Please visit the following link to review our available search service options and pricing. Our Trademark Pricing

THE APPLICATION PROCESS

Options for Federal Registration If the mark is already in use in connection with goods or services, it may be registered on the principal register. If the mark is not currently in use, but you plan to use it and wish to reserve the mark now, an "Intent-to-Use" application may be filed.

The Application The applicant for registration must be the person or entity who controls the nature and quality of the goods or services sold under the mark. The application will ask for the following:

The Goods or Services. You must list the class of goods for which the mark is to be registered. The number of classes of goods selected determines the filing fee; each class of goods registered requires a separate fee.
The Date of First Use. You must specify the date the mark was first used anywhere and the date the mark was first used in interstate commerce (whether or not the date is the same). The date of first use may show priority for the mark; the date of first use in interstate commerce establishes federal jurisdiction.
Description of Goods or Services. The application describes the goods or services in connection with the mark. The description should be consistent with the "specimens" (or evidence of use) submitted with the application.
Miscellaneous Application Information.

Finally, the application may require:

Information showing consent to use a person's name or likeness, if the mark includes the use of someone's name or likeness.
Prior registration information, if the only possible conflict with the registration of the mark is a previously registered mark by the same applicant.
Proof of distinctiveness for marks that have acquired secondary meaning.
Disclaimer of unregistrable portions of the mark.
Fee Requirement. Only one mark may be registered per application. However, each mark may be filed under more than one class of goods or services with the appropriate filing fee (generally $275-$275 per mark, per classification). Intent to Use applications must be filed with an additional $100 fee within six months of the USPTO's issuance of a Notice of Allowance for the Intent to Use application.
Drawing Requirement. The application must also include a drawing of the mark, unless the mark is completely non-visual. The drawing must be a substantially exact representation of the mark as used in commerce. However, if the mark is incapable of representation by a drawing, the application should contain an adequate description of the mark.

The drawing of the mark may include color (including shades of grey) if the application states that color is a feature of the mark, the colors are named, and the application describes where the colors are on the mark. The drawing may be submitted electronically.

The Examination Process

The examining process can be slow; it generally takes several months from application to official registration, even if there are no delays. Office Actions, (questions or objections raised by an USPTO examiner), are directed to the applicant's attorney. The applicant's attorney has six months to respond to an Office Action, otherwise the application will be deemed abandoned.

Once a trademark is accepted, the USPTO will issue a Certificate of Registration with an effective date and registration number. If the application was an Intent-to-Use application, a Notice of Allowance is issued. Within six months of the Notice of Allowance, the applicant must file a Statement of Use along with three specimens showing that the mark's use in commerce. Failure to file the Statement of Use or an extension, results in abandonment.

Post-Registration Filings

Declaration of Continuing Use. The registration is valid for 10 years; however, between the fifth and sixth anniversary of registration, the applicant must file a "Declaration of Continued Use". Failure to file this affidavit will result in the mark's cancellation. Between the ninth and tenth year, and every subsequent ten-year period, the mark may be renewed for another 10 years.

Declaration of Incontestability. Once a mark has been in use for five continuous years without contention, the applicant may file an affidavit attesting to this fact. This can lead to substantial legal rights.

To learn more or to schedule a free consultation, call us today at (503) 840-0000 or (801) 615-1564 or contact us online.

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