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Trademarks Part II

Now that you have a trademark in mind, consider how you might protect it.

Editor's Note: this article is a follow-up to John Shaffery's February 21, 2017 article titled "Trademark Selection and Federal Registration" in which Mr. Shaffery addresses the important steps in choosing a trademark as well as the benefits of attaining federal trademark registration. With these important considerations in mind, trademark owners might want to then consider how they might secure, maintain and enforce their trademark rights:

Steps to Apply for Trademark Registration

When it comes to filing an application to register your trademark, individuals and entities with products and/or services in the United States will want to consider filing an application with the United States Patent and Trademark Office (the "USPTO").

Search to Make Sure Your Mark Appears Available

Before submitting an application to register your mark, you and/or your representative might want to consider conducting a trademark search. The purpose of a search is to create a reasonable level of confidence that the same or a similar trademark has not already been registered and/or is being used by another party.

You and/or your representative can log into the USPTO Trademark Electronic Search System (TESS) and search for similar marks to the mark you wish to register. You might also consider searching for similar marks on website search engines such as Google or Bing. More advanced search options may be available through law firms and other search agents.

It is highly recommended that you hire a professional representative, such as an attorney, to conduct your search as well as review your search results so as to advise you as to any apparent obstacles to the use and/or registration of your proposed trademark.

Filing Your Trademark Application – Consider Hiring an Attorney

It is again recommended that you hire an attorney or other representative experienced in trademark matters to assist you with your trademark filing, as roadblocks can occur along the way in the application process. A lawyer can file a trademark application on your behalf and act as your "Attorney of Record" as well as your "Correspondent" for all matters related to your trademark application. A primary benefit of hiring an attorney is that it allows you to delegate the responsibility of handling your application to an experienced professional while you are able to focus on what you do best- running your business!

Trademark applications can be filed on the USPTO trademarks database through the Trademark Electronic Application System (TEAS).

Principal Register vs. Supplemental Register

There are two types of federal trademark "Registers" to which you can apply for registration - (1) The Principal Register, which is exclusively for trademarks that are distinctly unique or that have acquired distinctiveness over time; and (2)The Supplemental Register; which is for non-distinctive marks that are capable of acquiring distinctiveness but have yet to acquire it.

The Principal Register carries all of the rights of federal trademark registration, including those mentioned in Mr. Shaffery's article. The Supplemental Register can be a good option if your mark would be incapable of principal registration but you still want to federally register it in some way. A Supplemental Registration does grant its owner certain rights of regular federal trademark registration (e.g., the right to use the registered ® symbol). However, Supplemental Registration does not grant all of the same rights of Principal Registration. For instance, a Supplemental Registration can never become "incontestable" (please see below for more details) and it cannot be converted into a Principal Registration; meaning you would need to submit a new application to file your trademark on the Principal Register so long as your mark has acquired distinctiveness.

Consider the Basis for Your Application - "Actual Use" or "Intent to Use"

When filing your application, you will need to consider if you are filing on an "Actual Use" or an "Intent to Use" Basis. In other words, are you already using the trademark (i.e., the goods/services associated with your mark are already being used, sold and/or transported across interstate commerce), or do you have a bona fide intent to use your trademark sometime in the reasonably foreseeable future? The basis of your filing carries different implications, including whether or not you have to submit "Specimens of Use" (i.e., evidence that you are actually using your mark in commerce) at the time of your initial filing.

Consider What Goods and/or Services You Want to be Associated with Your Trademark

When you file your trademark application, you will need to disclose the International Class or category of your goods/services as well as provide an accurate description of your goods/services.

In determining the appropriate class, you can consider consulting the Nice Classification which is broken up into 34 classes of "goods" and 11 classes of "services."

Once you have determined the appropriate class, you will then need to consider an accurate description of your goods/services. To this end, you might consider visiting the U.S. Acceptable Identification of Goods and Services Manual (ID Manual) for a list of acceptable descriptions. You have the option to use descriptions from this ID Manual. The benefit of selecting a description from this ID Manual is that it usually carries reduced filing fees in your application ($225 instead of $275+ for each class of goods/services that you apply for registration). On the other hand, you can choose to free-form write in your description during the application process, which will carry a higher filing fee.

Monitor Your Application for Important Updates

Once your trademark application is filed, keep track of your filing for important updates and notices from the USPTO. A Trademark Examining Attorney (TEA) at the USPTO will review your application and let you know if there are any objections (e.g., "Office Actions") to your mark becoming registered. It typically takes roughly three months before such a TEA review process occurs. If/when there are no more TEA objections, or all objections have been overcome, then the mark will proceed toward being "published" in the Trademark Gazette; which is available for review by third parties who have a limited window of opportunity (e.g., usually for 30 days unless extensions are granted) to oppose your mark becoming registered if such registration might otherwise violate the trademark rights of such third parties. If no oppositions arise, or any oppositions arise but are overcome, then your mark should proceed to registration.

IMPORTANT NOTE: you are responsible for responding to any and all communications from the USPTO in a timely fashion. If you fail to do so, you risk the termination of your application.

Maintaining Registration – "Use it or lose it?"

Assuming you have made it through the above steps and your mark has become registered, congratulations! However, that is not the end of your responsibilities as the trademark owner.

After registering your trademark, you will be required to submit various renewals at different stages in order to maintain your registration. The failure to submit such renewals on a timely basis could risk you losing your registration.

The first renewal is due between the 5th and 6th years after your registration date. At this time, you will be required to submit a "Declaration" that you are continuing to use your trademark or that you are excused from using the mark. You may also consider filing a "Declaration of Incontestability" (if applicable). A trademark that has been used in commerce for five (5) consecutive years following Principal Registration can qualify for "incontestable" status; which, among other things, carries with it conclusive evidence of the validity of the mark and the trademark owner's exclusive right to use the mark with the stated goods/services. There are certain limited exceptions to trademark incontestability set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 15 U.S.C. §§1115(b), such as if the registration was acquired via fraud or if the mark has later become abandoned based on non-use.

Subsequent renewals are due between the 9th and 10th year after your registration date, and then every 10 years thereafter. At these times, you will be required to file a Declaration of Continued Use or Excusable Non-Use as well as a Renewal of Registration.

Policing Your Trademark

Regardless of registration, you want to give careful consideration as to how you will protect your trademark.

Something very important to note about trademarks is that, as the owner the mark, you must self-police your rights against others. In other words, it is your responsibility to make sure that others do not infringe your trademark rights. Just because someone violates your trademark rights does not mean the authorities will seek them out and haul them off to trademark jail. Rather, you, the trademark owner, must do your own detective work in order to assess who is infringing your rights and then take action so as to prevent any further infringement and/or unauthorized use.

For more information about how to police your trademark (e.g., sending cease and desist letters and/or filing complaints based on the various theories of recovery based on the violation of trademark rights), please stay tuned for our Trademarks Part III article coming soon.