Trademarks

What You Need to Know

What is a trademark or service mark?

  • A trademark is generally a word, phrase, symbol, or design, or a combination thereof, 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 goods.  Throughout this booklet, the terms “trademark” and “mark” refer to both trademarks and service marks.

When selection a mark you need to consider:

  • Likelihood of confusion with other marks
  • Similarity of marks by sound, appearance, meaning (other languages), commercial impression (inclusion of similar designs)
  • Relatedness of goods and/or Services
  • Strong versus weak marks (below are in the order of strong to weak marks)
    1. Fanciful – invented words or arbitrary – real words with no association to the goods protected (Apple for computers)
    2. Suggestive – suggest but do not describe qualities or a connection to the goods or services (Quick-N-Neat for pie crust)
    3. Descriptive – words that describe the goods and/or services. If it is found to be “merely descriptive” it is not registrable or protectable on the Principal Register unless it acquires distinctiveness– generally through extensive use in commerce over a five-year period or longer. (Creamy for yoghurt)
Applicants often choose (frequently at the suggestion of marketing professionals) descriptive marks for their goods and/or services, believing that such marks reduce the need for expensive consumer education and advertising because consumers can immediately identify the product or service being offered directly from the mark. This approach, while perhaps logical marketing advice, often leads to marks that cannot be easily protected, i.e., to extremely weak trademark rights.
    • Generic – generic words are the weakest types of “marks” (and cannot even qualify as “marks” in the legal sense) and are never registrable or enforceable against third parties. Because generic words are the common, everyday name for goods and services and everyone has the right to use such terms to refer to their goods and services, they are not protectable. Be aware that if you adopt a generic term to identify your goods or services, you will not be able to prevent others from using it to identify potentially competing products or services. (BICYCLE for bicycles)

 

  • Other potential grounds for USPTO to refuse registration the mark being:
    • a surname; geographically descriptive of the origin of the goods/services;
    • disparaging or offensive; a foreign term that translates to a descriptive or generic term;
    • an individual’s name or likeness; the title of a single book and/or movie;
    • and matter that is used in a purely ornamental manner.

 

  • Other considerations
    • Is the public likely to be able to remember, pronounce, and spell the selected mark?
    • Will you need protection in foreign countries?

 

What you should know before filing at the USPTO:

  • First timer? Invest time in reviewing this webpage and USPTO videos to avoid mistakes that cost you time, money, and potentially your legal rights.
  • The trademark registration process is a legal proceeding that requires you to act within strict deadlines (based on Eastern Time). Consider hiring an attorney before you get started.
  • Information you submit will become public record and will permanently remain searchable in USPTO online databases, Internet search engines, and other databases.  This includes your name, phone number, email address, and street address.
  • Review the TEAS new application tutorial.

42 Minute video from the USPTO

How To

Extensive information to walk you through the process is found on the USPTO site. See the link to the trademark process which is summarized below.

The Trademark Process

  1. Is a trademark application right for you? Trademarks, patents, copyrights, domain names, and business name registrations all differ, so it is important to learn whether a trademark is appropriate for you.
  2. Get ready to apply – select a mark, mark format, identification of goods and/or services, searching, filing basis, trademark attorney https://namechk.com and TESS (USPTO)
  3. Prepare and submit your application – File the application online through the Trademark Electronic Application System. View trademark fee information. Throughout the entire process, you should monitor the progress of your application through the Trademark Status and Document Retrieval (TSDR) system.
  4. Work with the assigned USPTO examining Attorney – letter (office action), timely response to the letter
  5. Receive approval / denial of your application – publication of mark, registration certificate, notice of allowance (the USPTO will issue a notice of allowance about eight (8) weeks after the date the mark was published), or timely statement of use or extension of time, USPTO review, objection, and appeal.
  6. Maintain the registration – to keep the registration “live”, the registrant must file specific maintenance documents. Failure to make these required filings will result in cancellation and/or expiration of the registration.  If your registration is cancelled or expired, your only option is to file a brand-new application and begin the entire process again from the very beginning. Even if your mark registers, you should monitor the status of your registration on an annual basis through the Trademark Status and Document Retrieval (TSDR) system. It is particularly important to check the status of your registration after you make any of the filings required to keep your registration alive including between the fifth and sixth year after the registration date and between the ninth and tenth year after the registration date. It is critical that, as necessary, you update your correspondence address (and, where appropriate, your email address) and update your owner address. You are responsible for enforcing your rights if you receive a registration, because the USPTO does not “police” the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.

Resources

USPTO Trademark Basics
USPTO Trademark Process
INTA Trademark Basics
A Guide to Proper Trademark Use for Media, Internet and Publishing Professionals
The new published source code on Github is for a sample application enabling a user to access and track the status of a trademark. This application enables the user to receive a push notification anytime the status of a trademark application changes.

 


Disclaimer: The information provided in this site is not legal advice, but general information on legal issues commonly encountered. FRESCO Services LLC is not a law firm, doesn’t provide legal advice or legal services, and is not a substitute for services of an attorney familiar with your situation.