Trademarks: A Primer to Protect Every Business
February 2018
By: Patrick A. Quinlan
The Cutting Edge Magazine
The Cutting Edge Magazine: Click here to view the original article from the publication.
Trademarks are a company’s public face to its customers and the marketplace. Goodwill protected by trademarks can be one of the most important assets of a company. The best way to protect that value in the US is to register trademarks with the United States Patent and Trademark Office (USPTO). By understanding tactics and strategies that are effective before the USPTO, a company can maximize the opportunity to obtain full federal protection for its brands.
Trademarks cover names, logos, brands or other identifications of the source of goods and services. An example trademark is the name Kodak®. The holder of a trademark has the right to stop anyone from using a confusingly similar name, logo or other brand for similar goods or services. For example, if someone wanted to create a company with the name Kodac in the photo imaging industry, the name “Kodac” would be too similar to Kodak to gain a trademark registration. But if Kodac was a trucking company, then the USPTO may grant a trademark registration because, while the name is similar, the businesses are different and may not cause confusion in the marketplace. A trademark may last into perpetuity as long as the owner of the mark continues to use the mark in connection with the goods and services, although the trademark registration is subject to renewal.
A simple trademark application may be filed without professional assistance, but depending on the trademark complexity, value of your business and capacity to spend the time necessary to properly submit a trademark application, a professional trademark attorney may be sought.
The basics of a trademark application
A trademark application must specify the trademark sought to be registered and the goods or services with which the mark is used or is to be used. The specified mark can be a word or phrase in standard character form, meaning that any use of the mark will be covered regardless of font or added design elements (e.g., a logo’s graphics). Alternatively, the specified mark can be a design, with or without words, and can even be a sound, such as a television network’s chime, or a color, such as pink for insulation in the case of Owens Corning. When selecting a trademark, it is best to choose one that is sufficiently different from other marks associated with similar products or services. The USPTO provides an interface on its website (uspto.gov) for searching already registered marks. A trademark should also be distinctive in relation to the goods or services. For example, the USPTO will reject a trademark for “Pears” if it is to be used in conjunction with selling pears
The specified goods or services can be broadly listed to an extent (e.g., “steel rule cutting dies”). The USPTO has divided various types of goods and services into 45 classes, but these classes typically have no effect on a trademark application other than cost. If an application is to cover goods or services that are in two different classes, the government filing fee, as well as many other fees, for the application will be twice as much.
In addition, the application must be filed in the name of the entity that is or will be using the trademark. For example, if a mark is used by a company, the trademark must be filed in the name of the company, not the president or owner of the company. Filing in the name of the wrong entity will result in an invalid trademark application, leaving any resulting registration vulnerable to cancellation.
Understanding the application process
The application process begins with preparing and filing a trademark application. There are two basic types of trademark applications: use-based and intent-to-use. The USPTO will only issue registered trademarks to those who actually use a mark in connection with specified goods or services. An applicant has the option of filing an intent-touse application, which means that the applicant has not yet actually used the subject mark in connection with goods or services, but has a bona fide intent to use the mark. The application will be examined similarly to a use-based application, but if the application is allowed, the mark will not become registered until the applicant shows that the mark is in use.
Once filed, an application will experience a period of pendency before it is first examined. That time is typically three to four months. Once examined, if not rejected for one or more issues, the application will be scheduled to publish for its 30-day opposition period. If not opposed, a use-based application will be put in line for registration, which will issue a number of weeks later. If the application is an intentto- use application, the applicant will need to show use of the mark before being put in the registration queue. In all, if the examiner does not raise any issues during examination, the time from application filing to registration is usually about eight to ten months for a use-based application.
During examination, however, a trademark application may be rejected on a number of grounds (e.g., likely confusion with an already-registered mark). The applicant will have an opportunity to respond to the rejections, and if they are not resolved, the applicant can appeal. During the 30- day opposition period, any party who believes that it will be harmed by registration of the trademark can oppose the application. An opposition is a proceeding before the Trademark Trial and Appeal Board that is similar to a lawsuit in federal court. While not as involved as a federal lawsuit, an opposition proceeding can become expensive for both parties, quickly reaching into the five figures ($10,000+ USD) in legal fees.
If ultimately rejected or successfully opposed, it is not necessarily the case that the applicant is not allowed to use the mark, but the applicant will not have the added protections of federal registration, such as the ability to sue in federal court and presumptions of validity that favor the holder of a registered trademark.
Keeping your trademark registered
Trademark registrations must be renewed every ten years. For each renewal, the owner must show that it is still using the mark for the specified goods or services and must pay a renewal fee. The fee for the renewal can vary from year-to-year, but it will always be multiplied by the number of classes (specifying the goods and services) in the registration.
In addition to renewal every ten years, new registrations are subject to the requirement that the owner show use between the fifth and sixth anniversaries, as well as pay a fee. At this time, the owner may also claim that their registration has become incontestable through substantially exclusive and continuous use for five years.
If a registration is not renewed, it will become cancelled. If cancelled, there is no mechanism for reviving the registration; the only solution being to re-file the application. But such a re-filed application might not be successful, so it is important to keep track of renewal deadlines. The USPTO has recently been sending reminders for renewals, but has not always done so and is not required to do so. If an attorney handles your trademark application, the attorney can keep track of such deadlines in his docket to send reminders.
Gaining foreign protection
Trademark rights are territorial. A US trademark provides protection within the US, but not in other countries. Generally, a trademark must be obtained in each country for which protection is desired. There is a mechanism for making the foreign protection process easier, called the Madrid Protocol.
A Madrid Protocol application is essentially an international application, but it must be based on a home registration in the US, and it must be extended into each country in which protection is sought. Extension into a particular country is not guaranteed, as that country has the right to reject the extension. As a trade-off for this convenience, coverage in each country is limited to the US home registration, which has the potential to limit coverage for countries in which broader coverage may have been available. Moreover, not all countries are available through the Madrid Protocol, so for some countries direct applications are the only option.
In addition to the Madrid Protocol or individual direct applications, there is also what is called a European Community Trademark, which is one registration that covers member countries of the European Union.
When properly planned, trademark applications can be a relatively inexpensive, but important, part of an intellectual property strategy for a thriving business, providing valuable coverage for a business’ brands and marketing.
This article is reproduced with permission from the International Association of Diecutting and Diemaking's monthly magazine, The Cutting Edge, February 2018.
The IADD is an international trade association serving diecutters, diemakers and industry suppliers worldwide. IADD provides conferences, educational and training programs, a monthly magazine, online resource library of 600+ technical articles, industry experts to answer technical questions, publications and training manuals, recommended specifications, online used equipment marketplace, videos and more. IADD also co-presents Odyssey, a bi-annual trade show and innovative concept in technical training featuring a hands-on Techshop where training programs come alive in an actual working diemaking and diecutting facility inside the exhibit area. Visit www.iadd.org or call 1-815-455-7519 for more information.
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