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 -
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.
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
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
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.