When most people hear the word "trademark," they probably think immediately about what is called a federal trademark, which is a type of intellectual property in the United States. In particular, federal trademark registration creates intellectual property rights granted by the U.S. Federal Government that gives the owner or holder of the trademark the exclusive right to use the trademark in association with a class of goods or services within the Unites States.
A federal trademark or service mark is commonly a word, symbol, design, or combination of such, which (a) identifies the source of goods or services and (b) distinguishes such from the goods or services of others. For example, the word "NIKE" or Nike's so-called "SWOOSH" symbol denote that a particular pair of shoes, item of clothing, or other good(s) came from Nike while also distinguishing those goods from Nike's competitors.
Although federal trademarks and service marks are often words or symbols, a federal trademark or service mark can actually be a color, a sound, a smell, or almost anything else for that matter.
The United States Patent & Trademark Office ("USPTO") issues federal trademark registrations to qualifying trademarks and service marks upon application by a mark owner to the UPSTO. The discussion of federal trademark registration below is divided into the following four (4) sections, listed above.
1. Registration Benefits
Well, there are actually lots of benefits, but there are four (4) principal benefits, which are relevant to most federal trademark owners:
- The Right to Use The Trademark Nationwide
- The Right to File For An Injunction
- The Right to File For Monetary Damages
- The Right to Prohibit Importation
Below is a brief discussion of each of these benefits.
A. The Right to Use The Trademark Nationwide
Because of the federal system here in the U.S., you can file one trademark application with the federal government and your trademark is protected in all 50 states, nationwide, without having to file an application in all 50 states.
By the way, owners of common law trademarks don't get this right.
What does this mean? It means that if someone else tries to use your trademark, or even one that is confusingly similar to your trademark, you have the right to stop them from doing so through the federal courts, which actually leads us to the next major benefit.
B. The Right to File For An Injunction
Most people don't know this, but the courts in the U.S. are both courts of law and courts of equity.
But what does that even mean and why is it important?
In a court of law, a plaintiff can file suit for monetary damages, which is discussed below.
In a court of equity, however, a plaintiff can file for an injunction to stop the defendant from doing something.
In the case of what's called trademark infringement, a trademark owner can file for an injunction to stop the other party from infringing upon the trademark, dead in its tracks.
I don't know about you, but that sounds like a pretty potent option if someone is infringing upon a trademark.
C. The Right to File For Monetary Damages
In addition to filing for an injunction to stop a party from infringing upon your federal trademark, you can also file a lawsuit for monetary damages that the other party has caused you by infringing upon your trademark.
In other words, if the party that is infringing upon your trademark has hurt your business, by decreasing sales, hurting your reputation, etc., you may be able to file a lawsuit to recover those damages from the infringing party.
D. The Right to Prohibit Importation
When you own a federally-registered trademark, you can file with U.S. customs to stop the importation of goods that are likely to be confused with your goods.
If you sell goods that can easily be "knocked-off" and manufactured in China, which is probably most goods, this right could be the most beneficial of all.
For example, if you have a valid trademark for a brand of purses and someone else manufactures similar purses in China and tries to sell them under your trademark or one that is confusingly similar, U.S. Customs will stop the importation of those purses before they even hit the market.
Sounds like a very useful remedy for many trademark owners.
As mentioned above, this list of four (4) benefits is not in the least bit exhaustive, there are many others, such as: providing notice to potential trademark owners that a trademark is in use, indicating to the United States Patent and Trademark Office that another potentially infringing mark should not be registered if it is confusingly similar, etc.
2. Application Process
Although the process of applying for and the issuance of a federal trademark registration can vary substantially from case to case, the following steps provide a general outline of the process:
- Select Mark
- Select Mark Format
- Select Class
- Describe Good or Services
- Perform Clearance Search
- Select Filing Basis
- Complete & Submit Federal Trademark Application
A. Select Mark
The amount of protection that a particular federal trademark registration or federal service mark registration can provide is based largely upon the distinctiveness of the trademark or service mark.
When determining whether a mark is distinctive, courts generally classify marks into five different categories: a. fanciful, b. arbitrary, c. suggestive, d. descriptive, e. generic.
Marks that not used in normal speech are quite unique and are called fanciful marks, such as: Verizon, Starbucks, Exxon, Kodak, and Xerox.
Marks that are completely abstracted from the goods/services with which they are associated are called arbitrary marks, such as: Apple, Adobe, Amazon, Chevron, and Sun.
Marks that intimate or allude to a good or service but are still somewhat abstracted from the types of goods and services with which they are associated are called suggestive marks such as:
- Liquid Paper
Marks that are descriptive of the particular features, qualities, characteristics, or purposes of the goods and services with which they are associated are called descriptive marks. Before descriptive marks are afforded trademark/service mark protection, however, they must attain "secondary meaning".
A good example of a descriptive mark that has attained secondary meaning is the mark Windows as used to denote the operating systems and related software developed by Microsoft Corporation. The mark Windows is descriptive of an attribute of the graphical user interface implemented in the operating system. Further, the mark Windows, in the context of software, is likely synonymous with Microsoft Corporation.
Other examples of descriptive marks include:
- Digital Computers
- Sharp Televisions
- Vision Center
Terms that are descriptive of a class of goods and services with which they are associated are called generic terms and are afforded no trademark or service mark protection. Such terms identify the actual goods or services as opposed to the source or origin of such goods or services, e.g. car, milk, or water.
Federal law places restrictions upon what types of trademarks can be federally registered so as to receive federal trademark protection.
In order be registered on the United States Patent & Trademark Office's ("USPTO") Principal Register, which provides substantially more protection than the Supplemental Register without first achieving secondary meaning or acquired distinctiveness, trademarks must be distinctive and cannot be:
- merely descriptive;
- primarily merely a surname;
- primarily geographically descriptive;
- geographically misdescriptive; or
- likely to cause confusion among the public.
In addition, trademarks cannot "consist of or be comprised of "immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute..." 15 U.S.C. § 1052(a).
B. Select Mark Format
A trademark or service mark can be represented using the following three (3) mark formats:
- A standard character mark;
- A stylized/design mark; or
- A sound mark.
A standard mark consists only of un-stylized characters. For example, the word “ACME”.
A stylized mark contains styled characters. For example, the word “ACME” in a particular font.
A design mark contains drawings of words, representations of symbols, etc. One of the most famous design mark is the Nike “SWOOSH”.
A sound mark consists of a particular sound, such as the NBC “CHIMES” or MGM “LION”.
C. Select Class
The USPTO registers trademarks/service marks using a class system consisting 45 international classes (prior to 1973, the USPTO used its own class system).
In theory and depending upon the similarity of the goods and services involved, the same trademark can be registered by different owners in different classes.
D. Describe Goods or Services
A trademark application must include a description of the actual goods or services associated with the trademark.
The USPTO publishes a list of acceptable list of descriptions — the Acceptable Identification of Goods and Services Manual — to facilitate the trademark application and registration process.
E. Perform Clearance Search
In the United States, a person or entity acquires rights in a trademark by actually using the trademark, even before the mark is registered, if at all. While requiring a prospective trademark holder to use the trademark before it can be registered has significant benefits, e.g. precluding "squatters" from registering trade or service marks with the intent of selling right to such marks for a significant profit at a later date, such a policy does create uncertainty as to whether a proposed trademark can be used without infringing upon an existing trademark.
In order to provide more certainty as to the availability of a particular trade or service mark, prospective mark holders often conduct some form of trademark clearance search. While many different methodologies can be employed to perform trademark clearance searches, such searches can generally be classified as either (1) knock-out searches or (2) comprehensive searches.
Likelihood of Confusion Standard
Before getting into some the aspects of trademark searches it is important to understand the standard by which both the United States Patent & Trademark Office ("USPTO") and the federal courts determine whether a particular trademark or service mark infringes upon another. In general, the main question of a likelihood of confusion determination is wether there is a likelihood of confusion as to the source of sponsorship of the goods or services because of the marks associated therewith.
The U.S. Court of Customs and Patent Appeals, the precursor to the U.S. Court of Appeals for the Federal Circuit, articulated to the following factors, often called the DuPont Factors, that are used to determine likelihood of confusion:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
- The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing.
- The fame of the prior mark (sales, advertising, length of use).
- The number and nature of similar marks in use on similar goods.
- The nature and extent of any actual confusion.
- The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
- The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
- The market interface between applicant and the owner of a prior mark.
- The extent to which applicant has a right to exclude others from use of its mark on its goods.
- The extent of potential confusion, i. e., whether de minimis or substantial.
- Any other established fact probative of the effect of use.
None of the foregoing factors is dispositive in a particular case; rather, the analysis of whether there is likelihood of confusion depends heavily upon the facts and circumstances of each case.
At its most basic level, a knock-out search is used to quickly identify whether there are obvious conflicting trademarks in order to help a potential trademark holder decide whether to pursue registration of a particular mark.
Although there is no set standard for a knock-out search, most knock-out searches typically involve searching the United States Patent & Trademark Office's TESS database of identical pending and registered trade and service marks. While not all knock-out searches are limited to identical marks, many searchers only search for identical marks without searching for marks that sound the same (with a different spelling from that of the proposed mark) or include similar design elements, this is especially important in light of the he "likelihood of confusion" standard.
Most knock-out searches, however, don't include searches of state trademark and trade name registrations, press releases, business publications, and other common law references.
In stark contrast to a knock-out search, which gives a potential trademark holder a rough idea as to whether a particular trademark is available, a comprehensive search gives a potential mark holder a legal opinion as to the known risks associated with a particular proposed trademark.
Unlike a knock-out search, a comprehensive search generally takes into account many different variations of a proposed trademark or service mark, examines many distinct common law data sources, and goes into much greater depth as to each source. The cost of a comprehensive trademark clearance search and its associated opinion letter, generally more than $1,000, is significantly higher than the cost of knock-out search, which is often included with a trademark application fee charged by an attorney.
Although it is certainly safest to order a comprehensive search, the cost may be prohibitive depending upon a number of factors, including: the potential mark holder's budget, the amount of capital the potential mark holder will invest in the trademark or service mark, the length of time that the potential mark will be used, etc.
F. Select Filing Basis
One peculiarity of the U.S. Federal System is that a trademark must first be "used in interstate commerce" before it can be registered on the USPTO's Principal Register. That is not to say that trademark applications cannot be filed without first using a trademark in commerce; rather, such an application is called an "intent to use" trademark application and the mark must be used in commerce within a certain time period after the trademark has been examined and approved for registration.
The USPTO has published the following interactive timelines on it website, which provide significant detail about what a mark owner can expect during and from the registration process:
It's important to note that neither timeline covers every application scenario.
What Does "Use in Commerce" Mean?
In the United States, we have a so-called "federal" system, in which the federal government has only those limited powers that are explicitly set forth in, or enabled by, the U.S. Constitution. Because the U.S. Constitution does not contain a "trademark" clause that would allow the federal government to expressly regulate trademarks, the federal government's power to regulate trademarks is made possible by the "Commerce Clause" or "Interstate Commerce Clause," which allows the federal government to "[t]o regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes." As a result, a trademark must first be used in a manner as set forth in the Commerce Clause, most commonly this involves commerce "among the various states".
But when has a mark been used in interstate commerce in our modern times? Well, it seems that there may be a different standard depending upon wether a mark is a trademark, used in connection with the sale of goods, or a service mark, used in connection with the provision of services.
The Lanham Act, commonly referred to as the Trademark Act defines the term "use in commerce":
The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or 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.
In short, this means that if a mark owner seeks the benefits and protections provided by the Trademark Act for a particular mark, it must: (1) in the case of a trademark, be associated with goods that are actually sold or transported in interstate or international commerce or (2) in the case of a service mark, be associated with services that are actually rendered in interstate or international commerce.
G. Complete & Submit Federal Trademark Application
Federal Trademark applications can be completed and filed with the USPTO in either electronic or good ‘ole paper form. However, the USPTO prefers electronic form, which is reflected in a significant filing fee discount that ranges from $50 to $100 per class.
There are actually two methods to file an application electronically: TEAS Plus & TEAS Reduced Fee (RF), the largest distinctions between them being price ($225 for TEAS RF and $275 for TEAS Plus) and the allowable descriptions (TEAS Plus filers can use any description they choose, while TEAS RF filers must use one of the pre-approved descriptions published by the USPTO).
3. Registration Process
About three (3) months after a trademark application is filed, it is assigned to a trademark examiner at the USPTO. Within three (3) months after an application is assigned, it will be reviewed by the assigned trademark examiner, generally; however, this review can be significantly shorter.
A. USPTO Office Actions
Unless there are no issues associated with a particular trademark application, the trademark examiner will issue an office action that effectively refuses registration and cites a basis for such refusal. A trademark application must, generally, respond to an office action within six (6) months after it is issued, otherwise the application is deemed "abandoned". Abandoned application can be revived, for a free, within two (2) months of the abandonment date.
B. Publication & Opposition
If no office action is issued or the trademark applicant satisfies the requirement of the office action, the trademark will be approved for publication in the USPTO's Official Gazette. About one (1) month after an application has been approved for publication, it will be published in the Official Gazette.
An opposition to a trademark must be filed within thirty (30) days after publication in the Official Gazette.
It generally takes about three (3) months after publication for a trademark registration to issue if there is no opposition to the trademark; however, if there is opposition the trademark will not issue until the opposition has been resolved in favor of the applicant by the Trademark Trial & Appeals Board.
4. Registration Policing
Although federally-registered trademarks can be perpetual, i.e. there is no maximum duration associated with the rights, unlike patents or copyrights, federally-registered trademarks require ongoing monitoring and policing so as no to become generic or non-distinct.
A. Declaration of Use
Before the end of the six (6) year period after registration, or within the six (6) month grace period subsequent the expiration of the such six (6) year period, a trademark owner must file a Declaration of Use or Excusable Nonuse under Section 8.
If a trademark has be in use for five (5) continuous years, the trademark owner can file a Section declaration of incontestability, after which point a mark is susceptible only to limited challenges, e.g. the trademark has become generic or the trademark was procured fraudulently.
Within one (1) year before the end of every ten (10) year period after registration, or within the subsequent six (6) month grace period, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 & 9.
This overview of some important considerations associated with federal trademark registration is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.