The Law Firm of
Louis Ventre, Jr.
Registered Patent Attorney
| The Purpose of Trademarks. Marks protect the
integrity and uniqueness of a product or service by allowing a consumer to
distinguish one product from another.
Trademark and Service Mark. A trademark
includes any word, name, symbol, or device, or any combination used, or
intended to be used, in commerce to identify and distinguish the goods of
one manufacturer or seller from goods manufactured or sold by others, and
to indicate the source of the goods. In short, a trademark is a product
identifier or a brand name.
Both trademarks and service marks are often lumped together into the
general category of "trademarks" and are oftentimes referred to
simply as "marks."
Trademark Creation. A trademark comes
into being when one uses a mark on a product or to represent a
service. Registration, either in State or Federal registration
offices, is not required before such use. And, registration is not
required after such use. State registration is available when a mark
need only be enforced within a State. Federal registration offers
enforcement rights in the mark in all the states.
Registration can often enable the owner to stop others from using the mark on similar products, that is, using the mark in a way that could cause confusion in the marketplace. However, a commercial use of the mark by someone else on their similar product, which pre-dates the registration, cannot be stopped by virtue of a subsequently-filed federal registration on your use of the mark: Federal trademark law recognizes the rights of prior users.
There are at least six benefits registration on the Principal Register of Trademarks:
When marks become famous, all unauthorized uses, even involving dissimilar products, can be stopped. Famous marks are protected in trademark laws to prevent "dilution" and tarnishment of the quality of the product represented by the mark in the eyes of the consumer.
What Does it Cost to Apply for Federal Registration of a Mark? Expect a filed application for a word mark to cost $875 and a graphic mark to cost $1,175 for one classification of goods or services. This cost includes a $50 discount from the USPTO for qualifying electronically filed applications. These numbers include filing costs and attorney fees for the application. Other attorney costs after filing, if required, are charged at $250 per hour.
According to the American Intellectual Property Law Association 2009 Economic Survey, the median charge in 2008 for a Trademark application is $1,700, which includes a $1,000 charge for a clearance search. In addition, the median post-filing prosecution attorney fees are $1,200.
International Trademark Application. An application under the Madrid Protocol for trademark protection in multiple foreign countries may also be made. This is discussed on this Law Firm's International Trademark page.Affidavit of Use for a Trademark. It is a formal statement that the mark is still in use. For a trademark registration to remain valid, an Affidavit of Use (Section 8 Affidavit) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. The registrant must also file a Section 9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee. Attorney fees for a Section 8 Affidavit, which may simultaneously be filed with a Section 15 declaration for acquiring incontestability, are $400.
Period of Protection. Assuming that Affidavit of Use is timely filed, current registrations have a 10-year term. Renewals are currently for a 10-year term. One may renew a trademark as many times as desired. However, it is possible to lose trademark protection by non-use, failure to "police" infringing uses, and even misuse. For example, misuse might be construed if the trademark is licensed or sold to another party who does not provide the same level of quality or price previously associated with the trademarked goods. Attorney fees for a renewal application are $500.
Choosing a Trademark. Fanciful or arbitrary marks are the best choice when selecting a trademark. Examples of a fanciful mark are words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).
Arbitrary marks have absolutely no meaning associated with the owner's product or service. Thus, arbitrary marks involve words that are in common use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).
You should avoid marks that are typically rejected by the United States Patent and Trademark Office because they describe the product, they are deceptively misdescriptive, they are geographically descriptive, they are merely a surname, or they are merely ornamental in nature. Other less common reasons for denial exist (national symbols, disparagement, scandalous, style or grade designations, title of a single creative work, etc), so it is best to ask an attorney before using a mark. The trademark you settle on should not be a mark that is already in use. A search should be conducted in the Trademark Office files before you use your trademark.
A Company Name as a Trademark. Your business name may be a trademark, but it is not usually the best choice for a trademark. You might be prevented from using your business name if it causes consumer confusion with a registered trademark. State common law trademark rights are acquired by use of a business name trademark in commerce. Generally, the first user a particular trademark in commerce for a particular product and in a specific geographic location may have a right to prevent others from using that trademark in the same geographic location for a similar product. Common law protections, however, may not always prevail. Those elsewhere that acquire a Registered Trademark may apply to make it incontestable after being continuously used in commerce for five years after registration. There are lots of maybes and mights in reliance on common law protection and it is likely to be expensive to resolve them. Furthermore, any infringement action against someone using a mark for pre-existing products may succeed only if there is a "likelihood of confusion" of the consumer. So it is best to use a completely arbitrary, fanciful trademark, which usually is not represented in a business name.
Using TM, SM and the R within the circle ®? Use of the TM for Trademark and SM for Service Mark symbols is governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to.
The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the United States Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. However, several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.
Period from Application to Trademark. It takes about a year, but may take several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.
Elements of an Application. If you are already using your mark in commerce, you would file a "use" application with the United States Patent and Trademark Office. Generally, an application has the following elements:
The United States Patent and Trademark Office does not decide whether you have the right to use a mark (which differs from the right to register). No matter how thorough the preliminary search, the United States Patent and Trademark Office may refuse to register the mark for conflicting marks it has found. The examining attorney decides whether or not there is a likelihood of confusion between the mark in the application and another mark that is registered or pending in the United States Patent and Trademark Office. There are also other legal reasons an examining attorney might reject an application. Typically, these might include, e.g., the mark being merely descriptive, deceptively misdescriptive, geographically descriptive, merely a surname, ornamental in nature, etc.
Receiving an objection to an application from the United States Patent and Trademark Office is common. If one is issued, you and your attorney then respond to the refusal with legal arguments that address the examiner's objections to the application. Alternatively, you may decide to abandon the application.
If the examiner raises no objections to registration of the mark, or if all the examiner's objections have been resolved, then the examiner will approve the mark for publication. If someone raises an objection within 30 days of publication, the United States Patent and Trademark Office may then hold an administrative proceeding to determine whether or not the opposition is meritorious. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.
Actual Use in Commerce. For applicants that have an intent to use a mark in commerce, an amendment to allege use may be filed after the application filing date but before approval of the mark for publication. If the Office issues a notice of allowance before such first use, then a Statement of Use within six months of the mailing date of the notice of allowance must be filed. Extensions for 6 months at a time can be granted with payment of additional fees. The Statement of Use ($100 filing fee, see above) or 6-month extensions up to 36 months may be requested wit the payment of a filing fee ($150). After that the application will be declared "abandoned." Attorney fees for filing an amendment or Statement of Use are $350.
Using a Competitor's Trademark. If you would like an opinion as to whether or not you can or should use a competitor’s trademark in your company’s advertising, give Attorney Louis Ventre, Jr. a call. You may be surprised to learn that you can use a competitor's mark, under certain circumstances.
Attorney Louis Ventre, Jr. wants to help your business compete effectively, while minimizing liability for Trademark infringement. If you have received a "cease and desist" letter from someone demanding that you stop using their mark and account to them for all profits you may have made in using their mark, contact Attorney Louis Ventre, Jr. as soon as possible and, certainly, before you reply.
Canceling a Competitor's Trademark. To oppose
or cancel someone's trademark registration, see this Law Firm's web page
and Cancellation of Trademark.
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© 2004 Louis Ventre, Jr.
This file last modified 07/09/11.