PRACTICE AREAS

ADDITIONAL TRADEMARK SERVICES PROVIDED

• Trademark portfolio management

• Filing trademark registration renewals and affidavits

• Responding to trademark office actions

• Domestic and foreign licensing of trademarks

• Name, image, and likeness (NIL) and right of publicity agreements

• Draft and negotiate trademark licenses and distribution agreements

• Endorsement and sponsorship agreements

• Trademark Mediation

What is a trademark or service mark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this post, the terms "trademark" and "mark" refer to both trademarks and service marks.

What is the difference between a trademark and a copyright?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Examples of well-known trademarks include NIKE, CHANEL and ZYRTEC.

A copyright is an original work of authorship fixed in a tangible medium of expression; such as a song, book, or sound recording.

What should I consider in selecting a trademark?

Trademarks are subject to varying degrees of protection. The stronger the mark, the greater protection it will receive.

Resist the temptation to select a mark that describes the goods or services. It is difficult, if not impossible, to protect a mark that is descriptive. The trademark examiner, when reviewing your trademark application, will categorize a mark in one of four general categories:

• generic

• descriptive

• suggestive

• arbitrary and fanciful

On a scale of 1 to 5, a generic mark is a 1 and an arbitrary mark is a 5. A mark that is a 4 or 5 on the scale has the greatest level of protection and is either suggestive of the goods or service offered or has no connection to the goods, i.e., arbitrary. A mark that is a 1 on the scale has no trademark protection. A mark that is a 2 on the scale, has limited protection. A mark that is a 3 on the scale is usually a suggestive mark and is protected.

Here is an example to consider in selecting a mark:

If you decided to create a magazine about mountain climbing you might select names such as the "Mt. Climbing Magazine," the "Climber's Journal," "Reaching Peaks," or even something arbitrary such as "Orion." "Mt. Climbing Magazine" is generic. "Climber's Journal," "Reaching Peaks," and "Orion," will fall somewhere between descriptive, suggestive, and arbitrary.

Take the time to analyze your market and the goods/services you plan to offer. Remember the strongest marks have little or no connection to the underlying product that is being sold.

The U.S. Trademark Office website is very helpful as to the procedure for filing an application and can be found here.

How does the trademark application process work?

Here are the steps for the trademark application:

1. Develop a list of possible names and discuss this list with your trademark lawyer.

2. Your trademark attorney will conduct a trademark search or "knockout" to exclude any existing marks that are identical or confusingly similar and to assist in determination if the proposed mark may be generic or descriptive.

3. Determine the scope of your goods and services.

4. Prepare and submit an application. It may take four to six months before the USPTO will respond to your application.

5. If there are any procedural or substantive changes requested/a refusal issued by the trademark examiner (an Office Action), you will then have six months to respond.

6. If the refusal is overcome, or if no refusal issued, the mark will move to publication.

7. If the mark is published and no oppositions are filed, the mark will be registered if it was filed as a "Use" application. If it is an "Intent To Use" application, a Notice of Allowance will issue and the mark must be used in interstate commerce within a certain allotted window of time.

What is required to file a federal trademark application?

You must be using your trademark or service mark in interstate commerce (that is outside the borders of a single state) or have an intention to use the mark in interstate commerce before you can apply for a federal trademark with the United States Patent and Trademark Office.

How do I file a state trademark application?

You must be using your trademark or service mark within the state in order to file an application. The Secretary of State or Corporations Section of most state governments handle their state’s trademark registry.

Does filing a federal or state application guarantee a registration?

No. Filing an application does not guarantee that either the United States Patent and Trademark Office (USPTO) or the applicable state will grant you a registration.

Do I have to secure a state or federal trademark registration to own a trademark?

No. Rights in a trademark are obtained only through commercial use of the mark. Coining a phrase or designing a logo is not enough to secure trademark rights. You must use the phrase or logo on or in connection with your product or service.

Do I need a lawyer to file a trademark application?

There is no requirement that you use an attorney to file your trademark application.

Why should I use a lawyer to file a trademark application?

A trademark lawyer can advise you on legal issues regarding existing trademark applications, registrations and/or common law trademark rights that may help you save money in the long run.

What does "Intent to use" mean for a trademark?

If you have not yet used the trademark, but plan to do so in the future, you may file an application with the United States Patent and Trademark Office (USPTO) based on a good faith or bona fide intention to use the trademark in interstate commerce. You do not have to use the trademark before you file your federal trademark application. Later on in the application process, you will need to file proof of using your trademark in interstate commerce. A total of five extensions, each lasting six months in duration, may be granted by the USPTO before proof of use in interstate commerce is required. Each extension incurs additional filing fees.

What is "Use in interstate commerce" for services?

In general, the service mark must be used or displayed in the sale or advertising of the services and the services must be rendered in interstate commerce. Read more about how to determine if you are using your service mark in interstate commerce.

What is "Use in interstate commerce" for goods?

The trademark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in interstate commerce. Read more about how to determine if you are using your trademark in interstate commerce.

I understand there are five possible extensions, each lasting six months before I must submit a statement of use to the USPTO, demonstrating use of my trademark in interstate commerce. I have used all five extensions, and my trademark will not be used before the final extension expires. What can I do?

You may wish to consider filing a new trademark application as soon as your last extension expires. This starts the process over, including a new filing fee to the USPTO. We encourage clients to think over their business plan carefully before filing a trademark application.

Does filing a federal or state application guarantee a registration?

No. Filing a trademark application does not guarantee that either the USPTO or the applicable state will grant you a registration.

Do I have to secure a state or federal trademark registration to own a trademark?

No. A person/entity acquires rights in a trademark by being the first to use the trademark in the marketplace for specific goods or services. Rights in a trademark are obtained only through commercial use of the trademark. Coining a phrase or designing a logo is not enough to secure trademark rights. You must use the phrase or logo on or in connection with your product or service.

When should I use the ™ symbol or the ® symbol?

After federal registration, the mark should be identified with the ® symbol. Do not use the ® prior to issuance of the Federal Registration.

While the federal application is pending ( from one to two years), the trademark should be identified with the TM symbol. Use the mark with the TM on the actual product to which the mark applies, if possible, and on product labeling and packaging, and also in brochures, catalogs, advertisements, letterhead, business cards, and signage, as appropriate.

When using a word mark, or the word portion of a combination mark (word plus design), in a sentence, distinguish it from surrounding text by using all capitals and quotes.

When does my trademark registration expire?

A federal trademark registration is valid for 10 years after the date of registration, provided that a section 8 (and possibly section 15) affidavit is filed with the USPTO in between the 5th and 6th years after registration, further validating that the mark is in use at this time. Failure to file the section 8 affidavit between the 5th and 6th years of registration will result in cancellation of the trademark application before the 10 year expiration period. Between the 9th and 10th year after registration, a renewal application is required to maintain the mark. Thereafter, the renewal must be filed every 10 years.

I forgot to file my section 8 & 15 affidavit or section 8 & 9 renewal within the 1-year window before expiration. Can I still reinstate my trademark?

There is a six-month grace period after the 6th year of registration or after the 10th year of registration to file these documents with the USPTO, for an additional fee. Once outside the grace period, a new trademark application is required.

My trademark is still in use, but I have sold it to another company or changed my company name. Do I need to do anything with the trademark office?

Yes, you need to file an assignment or change of ownership document with the USPTO. Visit the assignments section of the USPTO website for additional information.

The U.S. Trademark Office website is very helpful as to the procedure for filing an application and can be found here.

What is interstate commerce?

• Goods: In the most simplistic form, to qualify for use in “interstate commerce” you need to be selling your products - with the trademark attached - across state lines.

• Services: Offering/providing your services - under the the trademark - to people outside of a single state.

What constitutes use for goods/physical products/downloads?

• Product/Product Packaging: Photos of the trademark attached to your product or product packing. This includes labels and hang tags on clothing items.

• Point of Sale Displays: A photo of a counter display showing your trademark in close proximity to your product.

• Website: Provide a screenshot where you offer your goods/products for sale and the trademark is in use. A consumer needs to be able to purchase the good/product on the website. The trademark needs to be in close proximity to the goods and the “buy now/shopping cart” button.

• Software/Music/Videos: If you have downloadable software/music/videos, provide a software launch screen or a screenshot where the software/music/videos can be purchased and downloaded. If you offer physical software/music/videos, provide a picture of the mark attached to the software/music/video.

What constitutes use for services?

• Website: A screenshot of your website where the services are advertised.

• Signage: Photos of signage attached to your physical location where you offer your services.

• Printed or online material showing your mark and your services: A menu for restaurant services. Tour dates for a musical group. A screenshot of a launch screen for an ongoing TV show. Business cards and letterhead that show your mark and your services.

• Software as a Service: A screenshot of the dashboard or login screen showing the mark and the services. Informational materials showing the trademark and describing the software as a service.