Protecting Your Trademarks
A key consideration in developing a trademark strategy is securing and protecting your marks in the appropriate markets. In the United States, unlike many other jurisdictions in the world, trademark rights are based on common law rights, i.e., first-to-use, as opposed to statutory rights, i.e., first-to-file.
Trademarks have to be distinctive, meaning consumers have to understand that the trademark indicates the source or affiliation of a product or service. Trademark law treats marks differently depending on how distinctive they are and there are various levels across the spectrum to consider. The ability to be registered is judged along a continuum or scale: from fanciful and arbitrary, which garner the strongest protection, down to generic names, which are not protectable at all.
Trademark rights in the US are based on usage. The first person to use a trademark in commerce is considered the senior user of a mark. This use is also required before you can register a trademark in the U.S. A trademark is used in commerce when the mark is used in the sale or transport of products in interstate commerce between more than one state or U.S. territory, or between the U.S. and another country. For products, the trademark must appear on the products tags or labels, on the container for the products, or on displays associated with the products. For services, the trademark must be used in the sale or advertising of the services. Even if you haven't started using your trademark in commerce, you can still apply to register your trademark in the US on an intent-to-use basis.
5 Types of Trademarks
Fanciful Trademarks (Kodak, Exxon, Polaroid) A fanciful mark is a made up word, a word that didn't exist until someone coined it and used it as their trademark. Essentially it is an invented word, specifically invented for its use as a trademark. Seeing that they are so distinctive, they receive the most protection from their inception.
Arbitrary Trademarks (Apple, Dove, Shell) An arbitrary mark is a real English word with a real common meaning that is unrelated to the product or service. Like fanciful marks, arbitrary marks are those trademarks or service marks that consist of a word or symbol that has nothing to do with the products or services being offered. The key difference being an arbitrary mark is a real word, but the word is used such that there is no connection to the meaning.
Suggestive Trademarks (Jaguar, Microsoft, Netflix) So named for their characteristic of the product or service. These marks suggest something like a quality, characteristic or purpose about the product or service. Suggestive marks require consumers to use their imaginations to identify the characteristic of the products or services. Suggestive marks are also considered inherently distinctive, but just barely.
Descriptive Trademarks (Sharp, British Airways, Best Buy) These marks are basically a description of the product or service describing a quality, characteristic or purpose of the product or service. Descriptive marks are not inherently distinctive; they have to acquire their source-identifying properties through use over time.
Generic Trademarks (Band-Aid, Aspirin, Thermos) Finally, at the bottom of the list are generic marks, which aren't really marks at all, but just the generic word for the product or service. Generic marks are unprotectable because they cannot serve a source-identifying function.
When you are developing your trademarks, then, you want to focus on the first few types of marks: fanciful, arbitrary and suggestive. If you have a descriptive trademark, you cannot register it on the Principal Register in the U.S. until it has acquired distinctiveness, usually after a minimum of five years' of substantially exclusive use.
Protecting Your Trademarks (continued)
Registering your trademark is beneficial for several reasons:
It provides notice to others that you are claiming the rights to a trademark.
It serves as prima facie evidence that your mark is valid and distinctive and that you have the exclusive right to use the mark for the registered products and services throughout both the US. Application and Registration.
Provides a basis for trademark examiners at the U.S. Patent and Trademark Office to other applications as being confusingly similar to your mark.
Takeaway: Trademark rights are territorial and are limited to the jurisdiction in which they are protected. So, just because you use or register your trademark in the US, that doesn't mean that your mark is protected in other countries. And, unlike in the US, most countries grant trademark rights to the first person to register a mark in that country, not use it. Therefore, if you want to protect your trademark internationally, you will need to file internationally as well. Registered trademark rights are also limited to the products and/or services that are included in your registration.
It's always good to start with protecting your main trademarks for the products and services that are the core of your business. As you expand into other areas, you can register your existing trademarks for new products and services and register new trademarks for your existing products and services.
Trademark Prosecution Process
Your attorney can help by conducting preliminary searches that give you an overview of registered and pending trademarks. Conversely, a comprehensive search can give you a deeper analysis of whether your trademark is available, including consideration of common law and unregistered marks, which could help oppose your use or registration of a mark.
A preliminary search helps uncover any clear barriers to the use or registration of your proposed trademark. If a mark is clearly unavailable because there is a prior existing registration for the same or highly similar mark, you need not waste resources pursuing it. Preliminary searches generally do not cover common law uses, such as on the Internet or trade and business names.
Comprehensive searches cover a broader range of information and of course include the common law uses that can pose concern with registering and using a mark in the US.
There are costs associated with both preliminary and comprehensive searches, but the investment is well worth preventing unexpected re-branding if you discover that your trademark is not available. You may hear from others that you can clear your trademark yourself, in order to save money, just by going to the U.S. Patent and Trademark Office's website and searching their database. This is seldom recommended as clearance through the USPTO uses various factors to determine whether a new trademark will cause a likelihood of confusion with an existing one and doesn't just look at whether two trademarks are identical or very similar.
Application and Examination
If you're already using your trademark in commerce, you should work with your trademark attorney to file a use-based application. You will need to provide a specimen of the current use like product packaging showing the trademark being used for the products. For services, this is usually captured by screenshots from your website or other advertisements. If you aren't yet using your trademark in commerce, you should work with your trademark attorney to file an intent-to-use (ITU) application. The application is the same but obviously no specimen is needed as you have not introduced your product or service to the market yet.
Once your application(s) is submitted, it will usually take 3-6 months before it will be examined. The examining attorney will research in the USPTO's database of registered and pending marks to see if there are any prior filed marks that conflict with your mark. Trademarks that are similar for similar or related products and services have a higher likelihood of confusion and can be cited as a block to registration of your mark. Some additional reasons that the USPTO might refuse registration include:
the vague or indefinite description of products and services,
differences between a mark as applied for and the specimen used to show use, and
the descriptiveness of the mark.
There are many additional issues that can arise during examination. The examining attorney will issue an Office Action which details any objections to registration or additional information that is needed so your application can proceed. You are then are allowed to present arguments to the examining attorney to overcome these objections. Your trademark attorney should work with you on arguments or amending your application to overcome these objections.
Once your application is approved, it is then published for opposition. Once published, other parties are given a 30-day period in which to review your application and formally oppose registration. If a Notice of Opposition is filed, then your application will be moved into an adversary proceeding and cannot register until the opposition is complete. If no one opposes your application, then your mark will be registered.
Because trademark rights in the U.S. are based on use, you should use your trademark!
Trademark registrations are good for 10 years, but can be renewed indefinitely, as long as the mark is in use.
A trademark may be cancelled for nonuse, if it is not used for 3 years.
Between the fifth and sixth year after your trademark first registers, you will need to file a Declaration of Use or Excusable Non-Use, also called a Section 8 Affidavit.
At the same time, if your mark has been used continuously in commerce for 5 years and there are no pending adverse proceedings regarding the mark, you can file a Declaration of Incontestability, also called a Section 15 Affidavit. Incontestability is another perk of having a registered mark. It significantly limits the bases on which third parties can challenge your trademark.
Approximately 9-10 years after your trademark first registers, you will need to file a combined Section 8 Affidavit and an Application for Renewal, also called a Section 9 renewal. Then, every 10 years from your registration date you will need to file a Section 8 Declaration and Section 9 renewal.
If you keep using the mark, your trademark can be renewed indefinitely. The USPTO requires a fee for each of the above filings.
Foreign Trademark Applicants and Registrants in the US
As of August 3, 2019, the United States Patent and Trademark (USPTO) now requires foreign domiciled applicants and registrants to appoint a U.S. attorney on all U.S. trademark filings and Trademark Trial and Appeal Board proceedings, in light of this rule change we would like to introduce our firm and services for your consideration.
As a result, only Canadian trademark attorneys and trademark agents are reciprocally recognized before the USPTO under Rule § 11.14(c) to represent applicants, registrants, and parties located in Canada. This rule change removes reciprocal recognition of foreign patent attorneys and patent agents to practice before the USPTO in trademark matters. Currently, recognized Canadian patent attorneys and agents will continue to be authorized to represent Canadian parties in connection with an application or post-registration maintenance filing, for which they are listed as the representative, which was pending before the USPTO before the effective date of this rule change. Recognized Canadian trademark attorneys and trademark agents continue to be authorized to represent Canadian parties in U.S. trademark matters; however, TEAS Plus applications require designation of a U.S. attorney and a U.S. attorney must file submissions with the USPTO.
Given the USPTO’s broad sweeping rule change, we foresee many applicants and registrants needing help in complying with this requirement. We offer our assistance in advance and would be happy to discuss your unique situation or in the event you are already in compliance please feel free to send along our information to someone who may need our services.