Trademarks

What Are Trademarks and Service Marks?

A trademark is a commercial symbol such as any word, name, symbol, device, or any combination of the foregoing, which is 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.

Whereas trademarks are used in connection with goods, service marks are 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.

Both trademarks and service marks are types of intellectual property and both may be referred to as a “mark” (although often, the term “trademark” is used interchangeably for both trademarks and service marks).  A mark can be protected by applying for registration of the mark with the United States Patent and Trademark Office (USPTO), which examines trademark applications and issues federal registrations for trademarks and service marks in the United States.  To be eligible for federal registration with the USPTO, a mark must be in use in interstate commerce.  A federal registration is a grant of statutory rights under federal law in a trademark or service mark to the user of the mark.

What Types of Terms Are Registrable as a Trademark?

In order to be eligible for federal registration as a mark that is entitled to the statutory rights afforded to marks registered with the USPTO, a term must be distinctive.  Non-distinctive terms (e.g., HOTELS.COM for hotel booking services) are deemed to be generic because they are the common words used to describe the goods or services with which they are being used.  Exclusive trademark rights for generic terms cannot be vested in or acquired by a single owner, and generic terms cannot be registered with the USPTO.

Unlike generic terms, distinctive terms are registrable with the USPTO as trademarks.  Such distinctive terms fall into four categories of distinctiveness: (i) descriptive marks (e.g., WORLD BOOK for encyclopedias); (ii) suggestive marks (e.g., Q-TIPS for cotton-tipped swabs); (iii) arbitrary marks (e.g., APPLE for computers); and (iv) fanciful marks (e.g., KODAK for cameras).

Descriptive marks are capable of acquiring distinctiveness and are only registrable on the USPTO’s Principal Register once they acquire secondary meaning in their use in commerce but may be registrable on the USPTO’s Supplemental Register until such secondary meaning is acquired.  Fanciful marks, also known as coined terms, are the most distinctive marks as they consist of “made up” or non-existent words.  Of the two intermediate categories, arbitrary marks, which consist of real words used with goods or services unrelated to their normal understood meanings, are more distinctive, and therefore more easily registrable, than suggestive marks, which only suggest rather than describe the qualities or characteristics of the goods or services with which they are used.

What Types of Marks Will Not Be Registered By the USPTO?

The USPTO will refuse registration of a mark that is merely descriptive or where a likelihood of confusion exists between the mark applied to be registered and a prior registration for an identical or confusingly similar mark.  The USPTO also will not issue registrations for marks that consist of or contain matter that is immoral, scandalous, deceptive, or disparaging.  The foregoing examples of reasons for refusal of registration of an applied-for mark are not exclusive; other grounds for refusal to register a mark are also available to the USPTO.  In addition, mere ornamentation (e.g., ornamentation on clothing), titles of single non-serial publications (e.g., the title of a book that is not part of a series of books under the same title), names of artists and authors, names and designs of characters in creative works (e.g., cartoon characters and characters in novels), trade names that serve only to identify a business, and generic terms do not constitute trademarks and cannot be registered.

Must a Trademark Be in Use Before an Application Is Filed?

In the United States, a federal trademark application for a mark may be filed on the basis of actual present use of the mark in commerce or on the basis of a bona fide intent to use the mark in commerce in the future.

The law related to the use in commerce requirement varies in foreign countries and jurisdictions.  Please contact one of our attorneys if you are not yet using your mark in commerce in a particular foreign country in which you wish to obtain a registration to protect your mark against unauthorized users.

What Types of Use Satisfy the Use in Commerce Requirement for Registration of a Mark?

With respect to goods, a mark is deemed to be in use in commerce when (i) it is placed in any manner on the goods or their containers or the displays associated with the goods or on the tags or labels affixed to the goods, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (ii) the goods are sold or transported in commerce, i.e., the goods are sold or transported in or between more than one state in the United States or from a foreign country to at least one state in the United States.

With respect to services, a mark is deemed to be in use in commerce when (i) it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or (ii) the services are rendered in more than one state or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

Before a mark can become registered, the date of first use of the mark anywhere, the date of first use of the mark in interstate commerce, and at least one specimen evidencing use of the mark in commerce must be submitted to the USPTO.

Should I Conduct a Trademark Search?

Trademark searches (also known as registrability searches, availability searches or clearance searches) are strongly recommended as part of our strategy to identify other identical and similar marks that may bar registration of a client’s mark.  Prior federal registrations and prior pending federal applications may be cited by the USPTO to reject an applicant’s federal trademark application.

Although conducting a trademark search is strongly recommended prior to both adopting and using a mark as well as before filing a federal trademark application, such searches are optional.  Note, however, that the USPTO conducts trademark searches as part of its routine examination of each trademark application.

What Happens After a Trademark Application Is Filed?

After a federal trademark application has been filed, the application will be assigned to an examining attorney at the USPTO who will review the application, conduct trademark searches for prior registrations and prior pending applications for identical and similar marks, and issue rejections based on any registrations or applications located through those searches as well as on any informalities noted in the application.

Rejections are raised by the examining attorney in USPTO-issued correspondence known as office actions.  The trademark applicant is provided with an opportunity to respond to attempt to overcome the rejections through argument, amendment of certain parts of the application (but not the mark itself), or a combination of both.  Several office actions may be received in connection with a trademark application before a federal registration for a mark is issued.  Once the examining attorney is satisfied that all issues raised in the rejections have been addressed and overcome, the application may be allowed after which it may ultimately issue as a federal registration.

If the rejections in a USPTO office action cannot be overcome, other options may be available for continuing the pursuit of trademark protection for the mark.  Where a response to an office action is not filed within the allotted time for responding, the application will become abandoned.

How Long Is the Life of a Trademark Registration?

With continuous usage and the payment of periodic renewal fees, trademark and service mark registrations are perpetual and do not expire.

Can Rights to a Trademark Be Granted to Another Person or Business Entity?

Ownership rights in a trademark, including an associated trademark registration, can be transferred entirely or in part to another person or to a business entity by a trademark assignment.

If certain legal requirements are met, ownership in a trademark application also can be transferred to another person or to a business entity by a trademark assignment.

Without transferring ownership rights in a trademark registration or application (and the mark identified therein), limited rights to use the trademark may be granted by the trademark owner to a licensee that is another person or a business entity by means of a trademark license agreement.

Does the USPTO Enforce a Trademark Owner’s Trademark Rights Against Infringers?

The USPTO determines whether a registration should be issued for a trademark or service mark, however, the USPTO does not enforce trademark rights.  Enforcement of trademark rights is the responsibility of the trademark owner.  Monetary damages and injunctive relief may be sought against an infringer of a trademark through trademark infringement litigation.

How Can A Mark That Is Not in Use in Interstate Commerce Be Protected?

A mark that is not in use in interstate commerce cannot be registered with the USPTO and will not be afforded the statutory rights to which a federally registered trademark is entitled.

However, a mark that is in use with goods or services sold locally in only a single state may be protected under state law of the state in which such mark is used.  Marks may be registered at the state level and territorial level in the states and territories of the United States.  The extent of such protection and rights varies according to the laws of the state or territory in which the mark is used and/or registered.

What Are the Rules for Proper Use of Trademark Markings?

Trademark markings serve to notify the public that either federal statutory rights are claimed in marks registered with the USPTO or that state statutory rights for marks registered in U.S. states or territories or common law rights for unregistered marks are claimed by the user of the mark.

The circle R marking (®) should be placed in a conspicuous location next to a mark that has been registered with the USPTO, e.g., TRADEMARK®. The ® marking should not be used with a mark before the mark is registered with the USPTO including during any time period while a federal trademark application for a mark is only pending.

Until a trademark becomes registered with the USPTO, a capital TM for marks used with goods and capital SM for marks used with services should be placed next to the mark in small font to show that trademark rights are claimed in the mark, e.g., TRADEMARK™ or TRADEMARKSM.  The TM and SM markings should be used with marks registered with any U.S. state or territory and with marks that are unregistered but in which common law rights are claimed by the user of a mark.

Failure to use appropriate markings with your trademark can limit the remedies available to a trademark owner against an infringer in the event that a lawsuit for trademark infringement is filed by the trademark owner to enforce rights in and to the trademark.

The general trademark marking rules above are applicable only in the United States, its states and territories.  Different rules may apply in certain foreign countries.  Improper use of trademark markings in some foreign countries may subject the trademark owner or licensee to civil lawsuits, criminal prosecution, fines, and/or imprisonment.  Please consult one of our attorneys prior to using trademark markings in foreign countries.

Can Trademarks Be Protected in Foreign Countries?

Trademark and service mark registration and protection is also available in foreign countries.  Our attorneys and staff assist clients in filing and prosecuting trademark applications seeking protection for their trademarks and service marks in foreign jurisdictions worldwide.  Foreign countries and jurisdictions in which our clients commonly seek trademark protection for their marks include Canada, Europe, Mexico, Brazil, Argentina, Switzerland, Japan, China, Russia, South Korea, India, Australia, South Africa, Singapore, and New Zealand, among others.

Please contact one of our attorneys if you are interested in conducting a trademark search or if we may assist you in the preparation and filing of a trademark application in the United States, in any state or territory of the United States, or in any foreign jurisdictions or with the drafting or negotiation of a trademark license agreement.