Trademark protection is available for designs, slogans, phrases, and other expressions that consumers identify with the company and its products or services. They exist for the consumer’s benefit – so that the consumer may identify the producer of the goods they seek to obtain. The goods or services that businesses offer in association with their brands only achieve acclaim as a result of marketing, investing in online advertising, and years of establishing a reputation. Too often, brand owners are surprised by the realization that they may not own the brand they worked diligently to build. For these reasons and many others, protecting trademarks is a vital step to safeguard the value of a business.
The United States federal trademark registration process provides additional benefits to deter a third-party from fraudulent and unauthorized uses of a mark. A company or institution is not required to register a trademark with the United States Patent and Trademark Office. But, while Federal law prevents other companies from using the same, or similar, marks, there are a number of great reasons to file an application. For example, registration puts others on notice that your mark is legally protected. In the event that a competitor infringes on the trademark, registration is helpful in court to prove that you have the sole right to use the mark. Equally important is the fact that the United States is a “first to file” country when it comes to trademark rights and often failing to get your trademark on the register before another user can result in the loss of significant rights.
The first step in registering a trademark involves searching existing marks and common law users. This provides vital business intelligence on competition that may be using the same or similar marks. While conducting a basic investigation of the brand seems simple, an actual attorney-reviewed professional search will uncover phonetic equivalents, foreign language marks, and an array of other issues that non-lawyers typically do not discover.
What Does a Trademark Protect?
Trademark registration guarantees that you hold the exclusive legal rights and benefits in the United States that are afforded federal trademark law. It is one of the last legally protective monopolies in the United States, and one that you should take advantage of. Being the first to register a mark provides numerous benefits, including (i) nationwide notice of your claim to the mark, (ii) litigation advantages if your trademark is challenged, and (iii) prevention of a third-party’s registration of the confusingly similar mark. Likewise, under the Madrid Treaty, United States trademark registrations entitle the registrant to file in any or all of more than 90 countries internationally, relying on the United States trademark as a basis for the foreign trademark registration (occasionally called the Madrid Protocol).
Why Do You Need a Trademark Attorney?
A trademark litigation lawyer is a key to ensuring that the trademark is registered and that infringers and held accountable.
Is it Trademarkable?
A mark must meet certain requirements in order to be eligible for protection under federal trademark law. First, the mark must be unique and distinctive. The design, slogan or phrase cannot be identical or significantly similar to an existing mark. A trademark litigation lawyer can research to certify that a certain mark is not already taken before filing an application with the Patent and Trademark Office.
Generic terms and those that simply describe a product or service are typically ineligible for trademark protection. Protection is not afforded to generic terms because the words are so often used in ordinary language that they are incapable of becoming unique or distinctive. Similarly, descriptive terms can only be trademarked if they are used and advertised to the effect that consumers come to associate the terms with the brand, product or service.
A company or institution whose trademark registration application is rejected has the right to appeal that decision. The Trademark Trial and Appeal Board is a three-judge panel that reviews decisions by USPTO examining attorneys. Evidence and arguments are considered by the TTAB from both sides during an appeal prior to determining whether to uphold or overturn a denial of registration for a particular mark.
Trademark Rejections and Trademark Office Actions
Office actions are a type of response you may receive from the U.S. Patent and Trademark Office (USPTO) regarding your trademark application. The USPTO outlines issues with the application that need to be addressed prior to granting registration. The issues cited in an Office Action can range from simple disclaimers to complex likelihood of confusion refusals, citing multiple marks. Furthermore, the response to an Office Action can affect the scope of the trademark’s final registration. It is important to respond to an Office Action with a complete understanding of the issues and response options. The attorneys at Sanders Law Group are experienced in these matters, and understand the host of potential direct response options, and even some indirect legal options (such as attempting to cancel an opposing mark or seeking concurrent use).
Trademark Trial and Appeals Board Cases
The Trademark Trial and Appeal Board (TTAB) acts as a court of law for trademark registration matters within the USPTO. The trademark judges may determine your right to register a trademark, yet cannot rule on issues of infringement, damages, unfair competition or whether or not you have the right to use a trademark. We can advise, manage, and defend or prosecute TTAB cases in an efficient and intelligent manner
Domestic Registration of Trademarks
Certain states have specific requirements for trademark registration. Domestic trademark infringement typically occurs when an existing trademark in another state is not discovered due to an incomplete trademark review or search. Litigation may be necessary when disputes arise regarding the markets involved, allegations claiming trademark abandonment or similarity in design. The Lanham Act, and other trademark rights that are interpreted under the Act, adds to these difficulties. Our attorneys have the knowledge and experience needed to sort through what can be complicated, technical issues and ensure your trademark rights are enforced.
The “®”symbol signifies that a trademark has been registered with the USPTO. Registering with the USPTO gives you benefits of national registration,notice and other benefits of that registration. You may not legally use the ® until your mark is registered.
A “TM” or “SM” symbol means that a company issolely claiming common law rights.Common law rightsare limited to the geographic region where you use your mark. Note, however,that “TM” and “SM” can be used right away to claim ownership of some basic common law rightswhile your mark is pending registration.
Types of Trademark Office Actions
Refusal of a descriptive or generic mark refusal will issue if the Examining Attorney feels that the mark describessome aspect of your products or services, or if the term is entirely generic as applied to your products orservices. For example, “hoppy” would be descriptive in relation to beer, whereas “beer” is generic inrelation to that same product. This is a complex issue that may be difficult to overcome, but there are different ways of approaching it.Marks can also be refused as geographically descriptive, which often occurswhen a geographic place name is included as part of the mark (as in the case of “New York Pizza”).In addition, a mark that is seen as primarily a surname is basically treated the same as a descriptive term.A company can overcome an Office Action regarding refusal of descriptive markin threeways..First, you can trademark a descriptive term if you have established “acquired distinctiveness.” The most effectivemeans of establishing acquired distinctiveness is through five years of substantially exclusive use. Second, you can argue that the mark is not actuallydescriptive because, for example, consumers in that industry might understand the term in a different way. Third, you can amend your application to seek registrationon the Supplemental Register. While a registration on the Supplemental Register does not provide all theprotection of a registration on the Principal Register, it has the following advantages:
- You can use the registration symbol ®
- Your mark will be protected against future registrations of a confusingly similar mark;
- You can bring an infringement suit in federal court; and
- The registration can serve as the basis for a filing in a foreign country under international treaties.
We typically recommend amending to the Supplemental Register if the mark is clearly descriptive and you havenot been using it for five (5) years.