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WHAT IS A TRADEMARK OR SERVICEMARK?

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office. The registration procedure for trademarks and general information concerning trademarks is described in a separate pamphlet entitled "Basic Facts about Trademarks".

PROTECTABLE MARKS

  • A word, a name, a slogan, a symbol, a non-functional product configuration, colors or sounds which serves to identify the source of goods or services may be registered.  For a surname, product configuration, colors or sounds, it may be necessary to establish that the mark is distinctive, non-functional and has acquired secondary meaning or recognition on the part of consumers as a mark identifying the source of the goods/services.
  • Types of protectable marks are:

a) "trademarks" which are used on goods, packaging for goods and point of purchase displays for goods;

b) "service marks" which are used on services rendered for others such as product leasing services or retail, wholesale, distributorship services;

c) "membership marks" which indicate membership in an organization, such as a trade union; and

d) "certification marks" which indicate certification by an organization such as "UL".

  • To be registerable, a mark should not be merely descriptive of the goods or services or of feature of the goods or services, although it may be suggestive.  Marks which are considered suggestive and are registerable in the United States are considered descriptive and not registerable in many foreign countries.
  • The mark should not be merely a surname or a geographical name, unless it has been used in commerce for a sufficiently long time to acquire secondary meaning.
  • A mark may be refused registration if it has the same meaning as a prior registered mark and it is used on similar goods, even though the marks are totally different in pronunciation and appearance.  For example, TORNADO was refused registration for fencing in view of a prior registration for CYCLONE for fencing on the ground that the marks have the same meaning.
  • There must be no likelihood of mistake, confusion or deception with another registered mark when used on the goods or services.   In determining likelihood of confusion, similarity in sound and appearance, similarity in the goods, marketing channels and sophistication of the purchaser are considered.
  • If another party has prior rights to a mark with a single word, adding additional words generally will not avoid infringement of the prior mark.  For example, if the mark JAY is registered for a product, another party most likely will not avoid infringement of the mark or obtain its own registration for BLUE JAY for use on similar products.
  • Two or more parties may register the same or similar marks for use on different goods or services if there is no likelihood of confusion on the part of the consumer as to the sources of the goods or services.

SEARCHING

 Searching a mark is recommended prior to adoption.  In the U.S., the search may be limited to prior registrations and pending applications or, for a full search, it is extended to common law rights based on use.  Federal registrations and pending applications may be searched using either a CD-ROM or a commercial on-line computer database.  For a full search, state registrations and common law uses also should be searched.  Full searches are typically handled by commercial search firms.  A full search clearing a mark is advisable prior to using a mark to avoid possible future conflicts.

USE

  • Prior to obtaining a certificate of registration, the mark must be used on goods or services either sold in interstate commerce or in commerce between the United States and a foreign country.  An application to register may be filed prior to using the mark.  However, a certificate of registration will not issue until the mark is used in commerce.
  • The use of a trademark must be on a product or on its packaging or on a point of purchase display for the product.  Mere use on literature or advertisements will not support a trademark registration, unless the literature shows a photograph of the mark on the product.  However, if the mark is used in relationship to services, it is called a service mark and it must be used to advertise or market the services.  Business cards and letterheads are acceptable uses if they specifically identify the services being provided under the mark.
  • In using the mark, at least the first letter of the mark should be capitalized and it should be used as an adjective and not as a noun.  If it is used as a noun, it can become generic for the product. For example, "escalator" was once a trademark for moving stairs.   Through improper use, it become generic for the product.  The owner should have referred to "Escalator moving stairs" when using the mark.
  • In the United States, trademark rights are established from the earliest of the date of first use of the mark on the goods or services in interstate commerce or in commerce with a foreign country, or from the date of filing of an "intent to use" application provided there is subsequent actual use.   A registration can be attacked by the owner of a confusingly similar mark who can establish an earlier date of first use in commerce than the owner of the registered mark.

REGISTRATION

  • If a mark is being used in commerce, an application to register the mark may be filed.  The application must be signed by the applicant.  For a corporation, it must be signed by an officer.  It must identify the mark, the goods or services on which the mark is used, the date of first use of the mark in commerce and the manner in which the mark is used.  The application also must include a drawing showing the mark being registered.  For a word mark, a typed drawing is used showing the mark in all capital letters.  Three specimens showing the mark as actually used must be filed with the application.  The goods and/or services on which the mark is used are separated into one or more subject classes.   A filing fee must be paid for each class of goods or services listed in the application.  For a list of governmental filing fees at the United States Trademark office, click here.
  • If the applicant is a foreign citizen, the application must include an appointment of a domestic representative who is to receive papers.
  • The application is examined generally between the 5th and 8th month after filing.  If the examiner finds any reason for refusing registration, an office action will be issued and the applicant has 6 months to respond.   Most frequently, initial refusal may be based on an objection to the description of the goods or services or a refusal based on a prior registered mark.  After a response to an office action is filed, the examiner may either allow the application or issue a second office action finally refusing registration.  If there is a minor problem with the application which can be corrected by the examiner subject to approval of the applicant, the examiner will telephone the applicant's attorney to try to resolve the problem with an Examiner's Amendment.  If the examiner issues a final refusal and the applicant believes that this is incorrect, an appeal to the Trademark Trial And Appeal Board must be filed to continue prosecution of the application.
  • Once a mark is approved by the examiner, it is published for opposition.  Publication may be several months after the examiner's approval.  Any person believing that the mark should not be registered may oppose the registration.  An opposition must be filed within 30 days of publication, unless the opposer has filed a request to extend the opposition deadline.  The most common grounds for an opposition are that the opposer has prior rights to the mark or to a mark which is confusingly similar to the mark, or that the mark is descriptive or generic for the goods or services.  If no opposition is filed and evidence has been filed showing that the mark is being used by the applicant, a certificate of registration will issue a few months after publication.
  • If the mark is not in use but there is an intent to use the mark, an intent-to-use application may be filed.  No use date or specimens are required at the time of filing.  Provided that the applicant subsequently begins use of the mark in commerce and timely files evidence of the use, the filing of an intent-to-use application establishes a date against someone who subsequently adopts the same or a similar mark.  The intent-to-use application is examined and published for opposition in the same manner as a use based application.  If no oppositions are filed, a notice of allowance is issued.  The applicant has 6 months from the notice of allowance to file evidence showing that use has begun.  If the mark is not used within the 6 months, a 6 month extension of time may be obtained by filing a request signed by the applicant and paying an extension fee.  Additional extensions may be obtained up to a total of 3 years from the date of the notice of allowance.  After the first extension, requests for extending the time to file evidence of use must specifically state the steps being taken to begin use of the mark.   In the health care field, for example, it may be stated that the applicant is awaiting FDA approval to market the product as a grounds for obtaining extensions of time to file evidence of use.  Once evidence of use is filed and accepted by the Trademark Office, a certificate of registration will issue.
  • In the United States, most trademarks are registered on the Principal Register.  Some marks which are refused registration on the Principal Register may be registered on the Supplemental Register.  These include geographical names, surnames and descriptive marks which are not generic for the goods or services and which have not yet become widely identified with a particular provider.   It is easier to attack a registration on the Supplemental Register than a registration on the Principal Register.

TRADEMARK NOTICE

  • A ™ symbol may be used next to a mark prior to registration to alert third parties that trademark rights are claimed in the mark.
  • An ® symbol should be used with a mark after it is registered.  The ® symbol may not be used with a mark which is not registered.   When a product is to be exported, the ® symbol should not be used in a manner which will imply that the mark is registered in the foreign country, unless there is a registration in the foreign country.

POST REGISTRATION

  • For U.S. registrations, evidence that the mark is still in use on the covered goods or services must be filed between the 5th and 6th years after registration.  The evidence of use consists of a specimen, an affidavit referred to as a Section 8 Affidavit, and a government fee.
  • If the mark has been registered on the Principal Register for more than 5 years and certain conditions are met, the registration can be made incontestable against most defenses by filing a Section 15 Affidavit and payment of a government fee.  The Section 15 Affidavit is generally combined with the Section 8 Affidavit.  The Section 15 Affidavit does not apply to marks registered on the Supplemental Register.
  • Registrations issued or renewed on or after November 16, 1989 must be renewed every 10 years, at which time the mark must still be in use on the covered goods or services.
  • A certificate of registration may be amended by deleting goods or services or by making minor changes to a design mark.  An amendment may not be used to add goods to a registration.

FOREIGN TRADEMARK PROTECTION

  • In the United States, trademark rights belong to the earliest of the first to use the mark on goods or services in commerce or the first to file an intent-to-use trademark application.  In many foreign countries such as Brazil and Japan and the European Union, trademark rights belong to the first to apply to register the mark.  There is no use requirement and a person who registers the mark will be able to stop use by someone who has not registered the mark.  Thus, if a mark will be used in a foreign country and is important, it should be registered in the country.
  • A trademark registration is only valid in the country of registration.  If the mark is to be used on products sold in foreign countries, a separate registration should be obtained in each country, and especially in the first to file countries.
  • If a foreign trademark application is filed within 6 months of the filing date of a United States application, most countries will grant the benefit of the U.S. filing date under the terms of an international treaty.   The benefit of the U.S. filing date will be useful for stopping someone who filed in the foreign country during the 6 months after the U.S. filing.
  • Distributors and dealers in foreign countries should be required to sign agreements providing that the U.S. company owns all rights in the country for trademarks originating with the U.S. company, prohibiting the distributor or dealer from attempting to register the mark without permission, and requiring assignment of any applications which it or its officers and employees may file.   It is not unusual for a foreign distributor or dealer in a first to file country to register the marks of its U.S. supplier in order to obtain exclusive rights to sell the trademark branded products in the country.  It also may use the marks which it registered on products which it makes or which it obtains from other companies.

STATE TRADEMARK REGISTRATIONS

  • A trademark may be registered in one or more state. Generally it has little value.
  • A state registration is only valid in the specific state in which the mark is registered.
  • The symbol ® may only be used when there is a U.S. federal registration, and not with a state registration.