502 WASHINGTON AVENUE - SUITE 605 TOWSON, MARYLAND 21204 410-659-9550 94 NAROD BOULEVARD WATER MILL, NY  11976 631-237-4891 larry@guffeylaw.com Senior Patent Counsel OLIVER & GRIMSLEY, LLC 443-541-5680
"Maximizing the Returns on Your Intellectual Endeavors"

For product manufacturers and service providers, it often proves advantageous for advertising and general name recognition purposes that a word, symbol, picture, phrase, color or some combination of these be used as a trademark or service mark to distinguish one's goods or services, respectively, from those of competitors. Because such distinguishing marks are generally viewed as beneficial in helping to regulate competition in marketplaces throughout the U.S., the federal government (and the state governments for uses within their individual borders) will protect those who first begin the ongoing, interstate or international use of such a distinguishing mark (except for certain categories of excluded marks that are discussed herein) from those who later use it in such a manner as to cause commercial confusion as to the origin of the products or services which display the mark (Note: (1) One must display and use the mark or lose one's rights in it, and (2) For domain name users thinking of seeking trademark registration, they must be using it as a mark or intend to do so in the next six months -- using it just as a domain name is probably insufficient use for the purpose of distinguishing one's goods or services).

Furthermore, the first-ongoing users of such marks and those who intend to use them in the immediate future may register their marks with the U.S. Patent & Trademark Office (USPTO) and obtain valuable additional rights and evidentiary points of law in any subsequent litigation over the mark, including: (1) use of the symbol ® with the mark has the effect of giving constructive notice to possible infringers and thereby satisfying the notice requirement for recovery of damages against the infringer (for non-federally registered or common law marks, one would typically uses the symbols TM and SM to give actual notice), (2) relief from having to provide evidence on the issue of ownership and the exclusive right to use the mark throughout the U.S., except in an area where another, prior to the applicant's filing date, was using and may continue to use a confusingly similar mark, and (3) the starting of a five-year clock towards the incontestability of marks that are merely descriptive or primarily a surname. The evidentiary value of the mark's registration should not be under-estimated, since in many trademark disputes it can be practically dispositive in favor of an outcome beneficial to the registered trademark owner.

Trademark Registerability Search

Because federal trademark registration is only available to the first-ongoing and non-commercially confusing user of the mark and because the legal expenses associated with contesting a disputed mark can be large (i.e., administrative hearing or litigation with attorneys' fees of $125.00 to $300.00 per hour), it is often advisable to first make a relatively low-cost assessment as to whether it is likely that the proposed trademark will be registered. Thus, the first step in the federal registration process often is to search a trademark database against marks similar to the proposed mark.

It is possible for one to proceed with a trademark registerability search and to then continue on to apply for the trademark registration without the assistance of counsel. Although the rules for the trademark application are somewhat complicated, many trademark registrations have been obtained by applicants who represent themselves before the USPTO. Nonetheless, many applicants choose to pay an attorney to represent them in the entire trademark registration process, especially if there is, as is often the case, any concern of a confusingly similar mark.

There are many electronic means for performing trademark searches. Unfortunately, there are not yet any free-of-charge, comprehensive trademark searching resources on the Internet. However, one can get some preliminary feedback for a word that is proposed for use as a trademark by doing a word search with one of the large search engines that are directed at commercial activities, such as Yahoo's Product and Services Directory at http://www.yahoo.com/Business and Economy/Products and Services/.

Trademark searches are often conducted by either online searches with commercial databases or by obtaining comprehensive trademark searches from recognized trademark search firms such as Thomson & Thomson. A number of online trademark databases are available, including those of Dialog, Compuserve and Questel/Orbit. Additionally, a number of companies have set up sites that permit doing trademark searches through a web interface, these include: (1) Micropatent's Trademark Checker at http://www.micropat.com/indextm2.html, (2) TMWeb at http://www.tmweb.com/, and (3) Trademarks Online at http://www.trademarksonline.com/tm.html.

It should also be noted that such searches can be very useful for other business purposes. For example, before selecting a company name, a similar type of freedom-to-use search would allow one to knowledgeably select between alternative, potential company names (all of which might be acceptable to the state agency that regulates corporations -- they only check to avoid identical corporate names in the state, not for likelihood of confusion issues) in order to avoid another's trademark or risk the possibility of inviting a lawsuit. In many such situations, it is probably advisable for the accused infringer to give up and use some other company name, even though it means the loss of any accumulated goodwill in the name.

If an attorney is involved in the trademark registration process, he/she will perform the registerability search and prepare an opinion letter based on the search results, especially those that may raise an issue regarding a commercially confusing mark. (Typical legal fees for a registerability search and the preparation of an opinion letter are $400.00 to $1,500.00, depending on the number of databases searched and whether one is searching for words, logos, etc. to be used as trademarks or service marks).

Preparation of the Trademark Application

There are two types of federal trademark applications: an intent to use application, and a statement of use application. If one is already using the mark in interstate commerce, a statement of use application should be filed, citing the date of first use. If one has not yet begun using the mark, but is planning to adopt and use the mark in the future, one may file an intent to use application. A trademark will not be officially registered, however, until the mark is actually in commercial use and the period for this to occur is limited, thus one cannot "reserve" a trademark for an indefinite period of time.

The application must contain certain information, including the name and address of the applicant, a copy of the mark, the designated International Class or Classes, and a statement of the type of goods and/or services represented by the mark. A statement of use application must also contain the date of first use and specimens of the mark as actually used in commerce. Additionally, the applicant must sign a declaration that to the best of his/her knowledge no other entity has the right to use such proposed mark or any near resemblance to it such that the proposed use would yield commercial confusion. In many instances, it may prove helpful for the applicant to have the advice of counsel before signing such a declaration.

For the USPTO to examine a trademark registration application, a required filing fee of $245.00 per class must be paid at the time the application is submitted. (Typical legal fees for filing a trademark registration application and its supporting documentation are $200.00 to $1,000.00, depending upon the complexity of the proposed mark).

The Examination Process

After the application has been filed with the USPTO, it will be assigned to a trademark examiner. The examiner will check the application to make sure that it is in proper order, and will also compare the mark with registered, unregistered and pending marks. Initially, the examiner must determine whether the proposed mark in the application is likely to be confused with a similar mark having a superior claim to the use of the mark.

If the examiner can find no similar marks, he/she must then determine whether the mark falls within certain excluded categories, including those which: (a) are scandalous (e.g., defecating greyhound for T-shirts), immoral or a generic name by which particular products or services are known (e.g., "Furniture Barn" for furniture retailer), (b) consist of the insignia of government entities, (c) identify, without consent, a living individual, (d) are merely descriptive (Note for domain name users: "Skinvisible" for a type of bandage was registered because running the words together made it a fanciful/coined word) or misdescriptive of a trait or feature of the goods or services or their place of origin, or (e) are primarily a surname (note: "Hutchinson Technology" for electronic components was registered because the addition of "Technology" made it not merely a surname) - unless those in the (d) and (e) categories have taken on secondary meaning after five years of use and therefore do serve to identify the source. Examples of marks that came to be registered after having taken on secondary meaning include: Steinway pianos, Parker pens, Burger King, Park N' Fly and General Electric. The best marks are always those that are arbitrary or fanciful, even thought it might take the marketplace longer to associate the goods or services with their owners.

When the examiner has made his/her initial registerability determination, the USPTO responds by sending the applicant what is known as an "Office Action" containing its determination and the reasons for it. If the Office Action contains a rejection of the registration and there exist arguable grounds for contesting the examiner's determination, one typically files a "Response," usually in the form of an Amendment, to overcome the rejection. There are usually only two Office Actions and Responses before a final determination is made by the examiner as to the proposed trademark's registerability. If this determination is detrimental to the applicant's interests, it can be appealed -- a time consuming and expensive process. (Typical legal fees for responding to Office Actions are $500.00 to $3,000.00, depending upon the complexity of the arguments).

Publication - Notice of Pending Registration and Period for Public Opposition

After the examiner agrees that it appears that the proposed trademark is entitled to registration, the trademark application will be published in the Official Gazette of the USPTO for opposition. This publication begins a thirty day period during which anyone upon payment of the prescribed $200.00 fee may file with the USPTO a formal opposition to the proposed registration, if he/she believes that he/she would be harmed by registration of the proposed mark. This results in a formal, trial-like opposition proceeding before the USPTO's Trademark Trial and Appeal Board, which will determine the respective rights of registration.

Allowance of Unopposed Marks

If no opposition was filed and the application was based upon actual use of a sufficiently distinctive mark in commerce prior to approval for publication, the USPTO will register the mark on its Principal Register (Note: Marks that were rejected as descriptive can be registered on the USPTO's Supplemental Register until they acquire secondary meaning; the benefits of this include: notice to others of your claim to the mark, USPTO won't subsequently register another's confusingly similar mark, and allows you to use ® with your mark which can give it the appearance of more authority) and issue a registration certificate about three months after the date the mark was published.

If, on the other hand, the mark was published based upon the applicant's statement of having a bona fide intention to use the mark in commerce and no opposition is filed, the USPTO will issue a contingent Notice of Allowance. The applicant then has six months from the date of the Notice of Allowance to either (1) use the mark in commerce and submit a Statement of Use along with its $100.00 filing fee or (2) request a six-month extension of time to file a Statement of Use. Further extensions of time may be available, if necessary. When the Statement of Use is approved, the USPTO will then issue the registration certificate. The total period of the unopposed, trademark registration process typically averages eight months to more than one year.

Maintenance of Marks

A federal trademark registration can last forever if the mark is correctly (i.e., its owner must prevent others from using the mark in such a manner as to lessen its value for identifying the owner's products or services) and continuously used, and if the required renewal applications and fees ($300.00 per class) are filed every ten years (Note: Those registered before 11/16/89 don't have to be initially renewed until twenty years after their initial registrations). Additionally, one can make it harder for others to challenge the validity of his/her mark after it has been on the Principal Register and uncontested for five years. This is accomplished by the filing, between the fifth and sixth year since the mark's registration, of an affidavit of continued use. This act serves to elevate the mark's validity to the status of being statutorily "incontestable." Despite the terminology, the statute actually reveals that the mark's validity is still quite contestable -- but it is harder, since the challenger is limited to only a few, very specific grounds upon which to base the challenge.

Disclaimer: The article's information is not legal advice. It cannot be such since legal advice must be tailored to the specific circumstances of each case, including its jurisdictional law which can vary greatly from state to state. However, it is hoped that the information provided in this article will be helpful to this site's visitors in familiarizing them with issues that may affect them.