Currently, in the United States, if you are an individual owner or a large corporation, trademarks, whether these be company names, product names, logos or symbols, trademarks and service marks often represent some of the most valued and enforced intellectual property assets in a business portfolio. Therefore, it is essential to increase both value and positive public recognition for your overall business entity.
The United States Patent and Trademark Office was established “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;” as set forth in the United States Constitution.
In the United States, Registration of trademarks can be utilized to protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.
A trademark is designated by the following symbols:
™ (for a common law or non-federally registered trademark, that is, a mark used to promote or brand goods)
℠ (for a common law or non-federally registered service mark, that is, a mark used to promote or brand services)
® (for a Federally Registered trademark)
A Registered Trademark issued by the United States Patent & Trademark Office confers the following rights to the owner of a trademark:
The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark.
A Common Law Trademark confers the following rights to the owner of a trademark:
The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
Unlike other forms of intellectual property (e.g., patents and copyrights) a registered trademark can, theoretically, last forever. So long as a trademark’s use is continuous a trademark holder may keep the mark registered with the U.S. Patent and Trademark Office by filing Section 8 Affidavit(s) of Continuous Use as well as Section 9 Applications for renewal, as required.
Types of Trademarks
Basically speaking, for filing an application within the United States Trademark Office, there exist two possible mark formats: (1) standard character format; or (2) stylized or design format. The standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element.
Within the United States Trademark Office, an applicant may submit a standard character format representation of a mark (literal element) if (1) All letters and words in the mark are depicted in Latin characters; (2) all numerals in the mark are depicted in Roman or Arabic numerals; (3) the mark includes only common punctuation or diacritical marks; and (4) the mark does not include a design element. Therefore, any trademark that merely includes written words is defined as a standard character mark.
Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element and/or word(s) and/or letter(s) having a particular stylized appearance that you wish to protect. Another name for this type of mark is “special form.” If the mark includes a particular style of lettering, or a design or logo, the mark is considered to be stylized or in special form. The mark in special form must be a substantially exact representation of the mark as it appears on the specimen or on the foreign registration, as appropriate.
Once a trademark application is filed within the United States Patent and Trademark Office (USPTO), the application is docketed and subsequently, the USPTO reviews and examines the application as follows:
USPTO Initial Review and Examination of Application
After the USPTO determines that the application has met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration on legal grounds. A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.
USPTO Issues A First Office Action
If the examining attorney decides that a mark should not immediately receive a notice of publication for opposition, a notice of allowance or a registration certificate, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office action, the applicant’s response to the Office action must be received in the Office within six (6) months of the mailing date of the Office action, or the application will be declared abandoned.
Applicant Timely Responds to Letter
If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.
USPTO Publishes Mark
If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO will send a notice of publication to the applicant stating the date of publication. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.
Notice of Allowance Issues for Applications Based on an Intent-to-Use the Mark in Commerce
If the mark is published based upon the applicant’s bona fide intention to use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about twelve (12) weeks after the date the mark was published. The applicant then has six (6) months from the date of the notice of allowance to either: (1) Use the mark in commerce and submit a statement of use (SOU); or (2) Request a six-month extension of time to file a statement of use (extension request).
A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed; it does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration. Notices of allowance are only issued for applications that have been filed based on an intent-to-use a mark in commerce under Trademark Act Section 1(b).
Applicant Timely Files Statement of Use or Extension Request
The Applicant has six (6) months from the mailing date of the notice of allowance in which to either file a statement of use or file an extension request. In order to complete the registration process, the applicant must file the statement of use, illustrating use of the trademark in commerce, and must be able to illustrate as much with a specimen (labels, tags, web pages, etc.) of the mark in use.
If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request and the required fee(s) to avoid abandonment. Because extension requests are granted in 6 month increments, applicant must continue to file extension requests every 6 months. A total of 5 extension requests may be filed. The first extension request must be filed within 6 months of the issuance date of the notice of allowance and subsequent requests before the expiration of a previously granted extension.
If the applicant is using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must submit an statement of use and the required fee(s) within 6 months from the date the notice of allowance issued to avoid abandonment. Applicant cannot withdraw the statement of use; however, the applicant may file one extension request with the statement of use to provide more time to overcome deficiencies in the statement of use. No further extension requests may be filed.
Registration Certificate Issues for Applications Based on Use, Foreign Registrations and International Registrations
A certificate of registration will issue for applications based on use, on a foreign registration under Section 44 of the Trademark Act, or an extension of protection of an international registration to the United States under Section 66(a). If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live.