Trademark registration, Beginners guide!

Welcome to the UJU Blog. The purpose of this space is to explore the dynamic landscapes of Intellectual Property, Media, Advertising, Business, and Compliance. With purpose in mind, I thought it would be good to write a basic post that lays out what a trademark is and what considerations are relevant when it comes to trademark registration. Even though the United States is a country where trademark rights can be obtained by the use of the trademark in commerce, registration is fundamental to ensure trademark protection and enforceability.

What is a trademark?

A trademark is a key component of a brand, basically, it is a symbol or distinctive sign which distinguishes products or services in the market. In other words, a trademark is a unique source identifier that market competitors can appropriate to distinguish their products from those of the others.

Trademarks come in many forms; the following are the different kinds of trademarks you can protect: ?

-????????? Word trademarks

o?? Fanciful

o?? Random

-????????? Mix Marks

o?? Made of words and logos or drawings

-????????? Figurative trademarks

o?? Logos and designs

-????????? Tridimensional trademarks

o?? The non-functional characteristics of a product

-????????? Olfactive trademarks

o?? Specific smells

-????????? Sound trademarks

o?? Specific tones or short compositions

-?????????Audiovisual trademarks

o?? Video or pictures and sounds in motion

Are all trademarks protected?

You may select any symbol to distinguish your products or services in a market, which is part of your branding and marketing strategy. However, only unique, and distinctive symbols which effectively allow consumers to differentiate one product from another are entitled to protection. This means that descriptive or generic words are not protected as trademarks and long phrases, which sometime are used as “slogans” are not protected either. Therefore, in order to have a protectable trademark it must be distinctive.

Who decides what symbols are distinctive enough to deserve trademark protection?

A great number of trademark controversies are resolved privately, through negotiation before litigation. However, the first authority that, in some way, decides which symbols are entitled to protection is the United States Trademark and Patents Office or USPTO, the agency in charge of registration.

The examination process

A trademark registration can be completed on the state level before the state’s Department of State, or at the federal level before the USPTO. It is always preferable to file for a federal trademark registration because it offers a broader scope of protection, in all the United States.

?A federal trademark registration is obtained by filing an application, along with the requisite fee, with the U.S. Patent and Trademark Office (USPTO).?The application is examined in the USPTO by one of many staff examiner attorneys. If there are any grounds for refusing an application, the examiner will raise them in an Office Action. The examiner’s objections must be fully resolved or withdrawn for the application to proceed to publication.?

?When the trademark application proceeds to publication, it is included in the Public Gazette. After that, third parties may object to the application by filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB). The application will proceed to registration if no opposition is filed or if an opposition is withdrawn or successfully defended.

?The application is examined in the USPTO by one of many staff trademark attorneys. An examiner can reject the application on various grounds:?

?-????????? Likelihood of Confusion??

-????????? Sound?

-????????? Appearance?

-????????? Meaning??

-????????? Commercial Impression?

-????????? Broad Description of Goods??

-????????? Broad Description of Services?

-????????? Merely Descriptive?

-????????? Primarily Geographically Descriptive?

-????????? Misdescriptive??

-????????? Primarily Merely a Surname?

-????????? Ornamentation?

-????????? Failure to include a disclaimer?

-????????? Lack of a good Specimen?

Is the Mark Registrable?

Marks must be distinctive to be registered, either inherently or through acquired distinctiveness. Acquired distinctiveness exists for marks that have become well-known to consumers. To demonstrate acquired distinctiveness, the trademark application must be supported with strong evidence. Marks that do not meet the necessary level of distinctiveness will be rejected.?

Will the Application Be Blocked by Prior Marks?

During the examination process, the USPTO trademark attorney is required to perform a search of the USPTO database of existing registrations and pending applications for prior similar marks or blocking citations and to cite such marks as bars to the registration of the applied-for mark.

When the examining attorney examines a trademark application, an important test to decide if a trademark is unique consists in determining whether a typical consumer is likely to be confused, i.e., if looking at two trademarks the consumer could distinguish them or it will be confused, inclined to believe they belong to the same party.

Trademark Clearance Searches

To assess the likelihood that an application or registration will be cited against a proposed trademark application is highly recommended to confirm that the trademark is available for use without infringing the prior rights of others, for that purpose, trademark attorneys usually conduct trademark clearance searches, before filing an application.

The search is designed to identify third-party trademarks, both common law and registered, that are identical or similar to the proposed trademark. Conducting such searches can help avoid unnecessary costs, objections, and possibly lawsuits down the line by parties with similar or identical marks.

There are two types of trademark clearance searches:

-????????? Preliminary (or knock-out) searches?

-????????? Comprehensive searches?

Preliminary Searches

A preliminary search, sometimes called a database or knock-out search, is an inexpensive search to disclose obvious blocks to use or registration of a mark. This type of search identifies identical or near-identical marks in a computer database of federal trademark applications and registrations.?

The database can be searched for all the following:?

• Words. Marks consisting of letters, numbers, punctuation marks?of any combination of the above?
• Design matter (such as a logo featuring an alligator or a design of interlocking circles)?

It is possible to search for designs because the USPTO assigns one or more numerical codes to each application or registration for design marks, or for a mark that contains a word and design, to identify the design matter in the mark.

Comprehensive Searches

If a preliminary search yields no potential issues, then you should advise the client to proceed with a full and comprehensive search. A full search includes a broad search of USPTO applications and registrations, as well as searches of:?

·???????? State registrations??

·???????? Trade names (i.e., company names and DBAs)??

·???????? Domain names, social media websites??

·???????? Other common law mark sources?

The Likelihood of Confusion Inquiry

Several factors are pertinent to the likelihood of confusion inquiry, including, but not limited to, the following:?

• The strength of the proposed mark?
• The degree of similarity between the respective marks?
• The degree of relatedness of the respective products/services?
• The sophistication of the relevant consumers?
• The channels of trade in which the products/services are sold or offered for sale?
• Whether the proposed mark will be used with another mark (such as a house mark)?
• Whether prior similar marks are:?o??? Diluted (i.e., many prior similar marks coexist in a crowded field)?o??? Inherently weak (e.g., marks with a prefix NUTRI for dietetic foods or DURA for durable products)?

In evaluating search results, it is useful to know if the owner of a fairly close prior mark has policed its mark aggressively, such as by filing:?

• Opposition proceedings against applications for similar marks at the Trademark Trial and Appeal Board (TTAB)??
• Cancellation proceedings against registrations for similar marks at the TTAB??
• Lawsuits in federal court??

?Other legal research tools can identify reported or unreported cases in which a party sued for infringement of its mark, such as:?

• The print or online versions of Shepard's citations??
• The PACER database of federal civil actions (which can be queried for cases filed by particular parties under the trademark infringement code).?

In addition, conducting internet research about relevant references revealed in a search may help to assess the risk a reference may present. In some cases, it may be helpful to instruct an investigator to research a particular reference to learn more about whether, where, and how the mark is in use.?

?It is also important to keep in mind that trademark rights can be derived from use without registration, therefore, there is no way to ensure that a search on the USPTO website will include every potentially conflicting mark.

Crowded Field Considerations

If there are many prior similar marks, they are only entitled to a narrow scope of protection and, as such, you might not be able to avoid a blocking citation based on such marks (or remove a blocking citation by argument). At the same time, if a crowded field exists and an applicant obtains a registration, the client's registration will likewise be weak and only entitled to a narrow scope of protection. Such a registration may be of little value and not worth the cost of obtaining it.?

Timing / Length of Use Considerations

If an applicant has not yet used its mark but intends to use the mark in U.S. commerce within the next several years, it may take advantage of the intent-to-use application. This allows an applicant to reserve a mark for future use in the United States, well before launch, while market research and product development are ongoing. The filing date is deemed the constructive first use date, giving the applicant an earlier date on which to rely for priority purposes. This locks in the applicant's rights at the time of filing (so long as the application matures to registration) in case there is an intervening filer or user between the time the applicant files and starts using its mark.?

An intent-to-use application will not mature to registration unless and until the mark is actually used in connection with commercial products or services in the United States and the applicant files proof of use—including a specimen of use—in the USPTO.

An applicant has until three years after the application is allowed (following publication) to prove use of the mark, provided that the applicant files an extension of that deadline every six months, and it usually takes roughly one year or more before an application is allowed. Thus, the average intent-to-use applicant will have about four years to prove use of the mark; otherwise, the application will be deemed abandoned.?

Will the Mark Be Used in a Trademark Manner?

The USPTO will reject registration of a mark that is not used in a trademark manner. For example, the mark AJAX CORPORATION would be considered an unregistrable "trade name" if, in fact, that is the company name of the applicant, and it appears on the required specimen of use only above the applicant's address. Terms used as model numbers or grade designations, usually following another trademark, are also considered unregistrable.??

Titles of single works of authorship.

Trademark registrations cannot be obtained for the names of single books, movies, or other works of authorship. However, the USPTO allows the titles of single video games and single mobile apps to be registered.?

Titles of a series of books or movies, however, such as STAR WARS, are eligible for trademark registration. Similarly, titles of continuing television shows, such as THE BIG BANG THEORY, are considered service marks for a type of entertainment service and are eligible for registration.?

Although the USPTO generally will not grant a trademark registration for the title of a single work, note that such a title can be protected under common law if it has acquired secondary meaning.?

Ornamental matter.

Marks that constitute a prominent part of a product, such as words on a bumper sticker or a design or phrase prominently printed on the front of a T-shirt, may be rejected on grounds that they are "merely ornamental," rather than trademarks.?

To the great relief of the licensing industry, however, a prominent logo or word mark on a T-shirt, cap, lunch box, or on other typical licensing products usually is considered a trademark if the mark is already in use or is registered as a mark for some other product or service such that consumers already perceive it as a mark.??

Benefits of Federal Trademark Registration

Nationwide exclusive rights.

A registration gives the owner the exclusive right to use the mark nationwide for the goods/services listed in the registration (absent a federal registration, trademark rights are limited to the geographic area in which the owner sells or distributes the products/services). 15 U.S.C. §§ 1057(b) and 1115(a).

If the owner actually uses the mark in a small geographic location (as opposed to nationwide), the owner will reap the benefit of a priority date calculated from the filing date of the application (rather than the actual later first use date of the mark in an expanded geographic area). 15 U.S.C. § 1057(c). However, the owner might not be able to win an infringement suit until it actually sells in the infringer's geographic area.

Leverage in disputes

A registration makes demand letters to infringers and lawsuits against infringers more convincing.

Easier online enforcement.

Similarly, owners of federal registrations have an easier time enforcing their rights over the Internet, including actions against cybersquatters and infringement on social media sites.

Inclusion in USPTOs online database.

Registered marks are included in the USPTO's online database, which makes the mark likelier to appear in search reports and deters third party adoption of a confusingly similar mark, and which also allows the USPTO to cite the mark as a bar against another party's application.

Constructive priority for intent-to-use applications.

During the gap between the time an application is filed and the time use begins, an intent-to-use application locks in rights to the mark at the time of filing, assuming that the application matures to registration (by preventing third parties from obtaining prior rights if they begin to use or file an application after you have filed).?

Registration symbol.

Having a registration allows you to use the federal trademark registration symbol (?) to deter copying (or the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.”). 15 U.S.C. § 1111.?

Collateral for securing loans.

A registration can be used as collateral for securing a loan and also makes the mark more valuable and saleable. For guidance on trademark security interests and a sample agreement.

Incontestability (after five years).

A trademark may become incontestable (i.e., immune to challenge on inherent registrability and some other grounds) if the mark has been used continuously for five years after registration and the owner files a claim to incontestability under Section 15 of the Lanham Act.

Customs enforcement.

Under Customs regulations, 19 C.F.R. § 133, federal registration allows the owner to record the mark with U.S. Customs to help prevent the importation of any infringing or counterfeit goods from abroad (at least to the extent that Customs detects them and then seizes the goods).

Federal Registration vs. Common Law Protection

A common law trademark is a mark that is in use in the United States but is not registered. Common law trademark owners have legitimate rights in their marks, as registration is not a requirement for ownership or protection in the United States. Under Section 43(a) of the Lanham Act, a common law trademark user can sue for infringement. Prior use is also a basis for an opposition proceeding against an application in the USPTO.?

However, common law protection, in an infringement suit, is limited to the geographic area in which the mark is used (thus, a good faith user in a distant geographic area can develop his own independent rights in the same mark). A federal registration, by contrast, reserves nationwide rights in the mark and provides various other benefits, as discussed above.?

Federal Registration vs. State Registration

Trademark owners can obtain a federal registration and/or state registration(s) for their marks. State registration systems in the 50 states, the District of Columbia, and Puerto Rico coexist with the federal registration system. State registrations are usually obtained by filing an application with the appropriate office in the state government (typically in the Office of the Secretary of State) for a much smaller fee than with the USPTO. State registrations are granted with little or no examination.?

However, state registrations usually create no substantive rights beyond those created under the common law by use of the mark. A federal registration is thus generally far preferable, if available. There are situations, though, where having a state registration in addition to a federal registration provides material benefits. Furthermore, if a federal registration is unavailable (e.g., because the USPTO will not register marks for marijuana), obtaining a state registration (or a registration in a U.S. territory) is one way to make sure that the owner's mark appears in full search reports.?