1. What is a trademark?
A trademark can be any combination of letters, numbers, designs and/or other distinctive elements used to identify the source of goods and services. Trademarks can be non-verbal and even non-visual — the shapes of products or their containers, colors, and even sounds (such as NBC’s three chimes) can all serve as trademarks. “Trade dress,” such as the thematic decor, menus and color scheme of a restaurant, can also be protectable.
2. What is a service mark and how is it different from a trademark?
“Service mark” is simply the term used for a trademark when applied to services rather than to tangible products. The difference is largely semantic; the legal protections available for trademarks and service marks are essentially identical.
3. How can I establish my right to use a trademark?
In the United States, one establishes and accrues trademark rights simply by being the first person to use a mark, continuously, in commerce. Under U.S. trademark law, rights to a mark arise from use of the mark, not registration. Once you begin using a trademark in commerce, you begin accruing common law rights to that mark which increase over time. These common law rights include the right to prevent others from using the same or a confusingly similar mark in the same market area. Because common law trademark rights can be difficult to prove in court, federal and state laws provide a registration process — a mechanism for trademark owners to document their exclusive ownership of, and right to use, a trademark. Federal registration is particularly valuable because it gives nationwide protection even in geographical areas where the mark is not currently being used; it also provides a federal forum for enforcement, and penalties against infringement not available in state courts.
4. Can any word be used as a trademark?
Yes and no. The essential function of a trademark is to identify the goods and services of one seller and distinguish them from those sold by all others. Put another way, a trademark is not supposed to tell you something about the product itself, but rather identify who produced it. A mark may therefore not be entitled to protection if it is determined to be (i) merely descriptive of the goods or services to which it relates, or (ii) the generic term for such goods or services. A useful practical illustration for this rule would be the phrase DOMINO® GRANULATED SUGAR. The word DOMINO is a protectable trademark, because it is used arbitrarily (i.e., without reference to its dictionary meaning) to identify the source or origin of the goods. GRANULATED is not protectable because it is descriptive of a characteristic of the product, and SUGAR is not protectable because it is generic – it is the dictionary word for what the product is.
Put another way, a generic term is one that is commonly understood and used as the name of a kind of good or service. For example, in the phrase “XEROX® brand copiers,” the term COPIERS is generic and not protectable because it merely identifies a type of office machine, rather than the source of this particular office machine. Generic terms are never registrable or protectable as trademarks under any circumstances. A mark is considered descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Hence in the brand name SANKA® DECAFFEINATED COFFEE, the term DECAFFEINATED is descriptive because is merely describes a non-unique characteristic or feature of the product. Geographical terms (such as “New England Clam Chowder”) are also considered descriptive in most cases, since it would be unfair for one competitor in a particular location to monopolize the name of that location and thereby prevent others in the area from telling customers where to find them. Similarly, laudatory terms like BETTER or SUPERIOR are also considered descriptive and not registrable.
The United States Patent & Trademark Office (“PTO”) will in most cases deny registration of a mark if it determines that the mark is descriptive or generic. The general rationale for this is that such terms merely tell the consumer about the product, but provide no information to the consumer about the identity of the actual source of this particular product in order to distinguish it from competing products. Further, it would be unfair and a restraint on competition to permit one player to monopolize words which its competitors legitimately need to describe their own goods in plain English. In recent years, we have noticed that the PTO has become much more aggressive about issuing and maintaining descriptiveness refusals.
Whether or not registration is obtained, marks which are relatively descriptive or generic are generally considered to be “weak” marks, which will be enforced, if at all, only within a narrow field. In order to gain the most protection, it is best to choose a “stronger” or more distinctive mark which is suggestive (hinting at the nature of the goods or services, or something about them, without describing them), arbitrary (totally unrelated to the goods or services), or fanciful (a symbol or coined word such as KODAK® or XEROX®). A common illustration of this spectrum of distinctiveness is the word APPLE, which would be generic for apples, descriptive for apple pies, suggestive for vitamins (“an Apple a day…”), and arbitrary for personal computers or a musical recording studio (both of which are actual trademarks).
This descriptive/distinctive dichotomy results in a constant battleground between the marketing professional, who understandably wants a name which immediately conveys to the consumer what the product or service is, and the trademark lawyer, who has to push the client away from such descriptive marks and toward something more distinctive that the PTO is more likely to accept and courts are more likely to enforce.
5. Can I register my own name as a trademark?
As a general rule, a mark which is primarily merely a surname is not entitled to registration on the federal Principal Register. The purpose of this rule is to prevent one person from monopolizing his surname in commerce and preventing others who happen to have the same last name from competing in their own name in the same line of business. Surnames are eligible for registration on the Supplemental Register, and can subsequently become eligible for Principal registration once the owner can prove that as a result of extensive use as a trademark (for at least five years), the name has come to be recognized by the public exclusively as a trademark of the applicant for its goods and not necessarily as a surname. This is how marks like FORD® for automobiles, TURNER® for entertainment and broadcasting services and KELLOGG® for cereals have become enforceable trademarks.
Marks which consist of the name of a particular living individual are only registrable with the written consent of that person. Well-known examples of marks which originally were the name of the founder of the business include GIORGIO ARMANI® and HOWARD JOHNSON®.
Marks which consist of a first name only or a fictional name which does not refer to a particular individual are generally registrable.
6. What do trademark rights do for me?
A valid trademark is a form of intellectual property right that gives the owner the right to prevent others over whom the owner has priority from using a confusingly similar mark for goods or services that are closely related to the goods or services that are sold by the trademark owner under the mark. These three critical elements – priority, confusing similarity and competitive proximity – are more fully described as follows:
- As mentioned above, priority of use usually generally controls the outcome in trademark disputes. Thus, even a prior unregistered user whose first use predated both the first use date and application filing date of a federally registered mark will prevail over the federal registrant and generally retain the exclusive right to use his mark in his own geographic market area.
- Similarity of marks is evaluated on the basis of the overall impression conveyed by each mark. Marks do not have to be identical for trademark rights to apply, and variations between marks may or may not eliminate the likelihood of confusion depending on the extent to which the variation has a dominant effect on the overall impression. Courts look at a variety of factors, including visual appearance, pronunciation, connotation, commercial strength of the mark, consumer sophistication, etc.
- Goods and services that are unrelated can generally be sold under similar or even identical marks (e.g., DELTA® Airlines and DELTA® Faucets), but this does not mean trademark rights only apply against direct competitors. Rather, courts look to whether the products or services in question are sufficiently similar or related in function and market focus such that the likeness in the marks is likely to lead to customer confusion.
In addition to remedies for direct infringement, the owner of a “famous” mark that has, through long use and aggressive advertising, become widely recognized beyond the confines of a particular market, also enjoys protection under federal and state statutes against “dilution” – meaning that the mark cannot be used by others on any goods or services, whether or not related, if such use will operate to tarnish, blur or otherwise diminish the power of the mark to refer exclusively to its “famous” owner. Federal dilution protection has been held to apply generally only to truly famous national and international marks, but state dilution statutes may provide broader protection, depending on the mark and the state.
Trademarks are assets which can generate cash as well, through licensing arrangements, for example. Trademarks also can be pledged as collateral in financing transactions.
7. Do I have to be actually using the mark to get a registration?
In the United States, yes. However, federal law permits a trademark owner to begin the application process before the mark is in use, provided the applicant has a bona fide intention to use the mark in commerce, and that such use can be documented within a specified period after the application is allowed (six months to begin with, with rights to extend up to 36 months in most cases). Such an application is referred to by the initials “ITU,” for “intent to use.” The ITU application process can be more lengthy and expensive, but it provides the advantage of getting “on the record” and establishing a federal priority claim at an earlier date.
At the state level, the ITU option is not available; the mark must be in use in that state at the time the application is filed.
Overseas the rules vary, but in many countries it is possible to obtain a registration without providing evidence that the mark is in use. Unfortunately, trademark pirates often take advantage of these rules and register well-known marks, and use them either to sell counterfeit goods or to charge the rightful owner a ransom.
8. How do I go about getting a federal trademark registration?
The federal trademark registration process breaks down as follows:
- Trademark Search. Prior to filing any applications – and indeed before even making a final decision on a mark – we strongly recommend having a professional trademark search done to ensure that no one else is using the same or a confusingly similar mark. This is important because a trademark application includes a statement under oath by the applicant affirming that no one else is using the mark at the time of the application. Moreover, as a practical matter, one never wants to spend time and effort on launching, promoting and attempting to register a trademark only to have the PTO reject the mark because it has already been registered by someone else, or worse, to find oneself on the receiving end of a trademark infringement claim. The search is therefore a risk management tool as much as anything else. Trademark searches can be done by a professional search firm for a fee beginning at several hundred dollars (not including attorney review time).
- Preparing the Application. A U.S. trademark application is not unduly complicated and requires only some fairly basic information. Typically, the applicant (which can be a person or an entity) must provide its name and address, nationality (for a person) or its state of organization (for corporations and the like), a description and drawing of the mark, a description of the goods and/or services the mark is used to identify, the date(s) when the mark was first used, and sample labels or other “specimens” showing how and where the mark is actually used. As mentioned above, the application also includes a sworn statement from the applicant attesting to the accuracy of the information in the application and of the applicant’s claim of exclusive right to use the mark. Typically the most difficult aspect of preparing the application is drafting the description of goods or services, which must conform to certain arcane PTO conventions for phraseology, and at the same time should also be drafted broadly enough to cover the whole market in which the goods or services are sold. State trademark applications (discussed below) usually require the same data, with the additional requirement of documenting how and when the mark is used in the particular state.
- Filing Fees. The filing fees charged by the PTO for a trademark application currently range from $275 to $375 per class of goods or services, depending on which application procedure is used (electronic filings are less expensive than paper, for example). The class of goods and services refers to an international classification of goods and services system used by the PTO and most other national trademark offices around the world to organize marks for pricing, searching and enforcement purposes. There are 45 classes covering virtually every conceivable product and service. For ITU applications, there is an additional filing fee of $100 per class to be paid later in the process, when the applicant submits its proof that the mark is actually in use.
- Examination by the PTO. Once a new application has been received by the PTO , it is then placed in queue to be assigned to a trademark examining attorney and begin the examination process, which typically takes six to eight months. As a result of the examination process, the examining attorney will either refuse registration or approve the mark for publication. A refusal of registration takes the form of an “Office Action,” in which the examining attorney sets forth the reasons for the rejection and gives the applicant six months to cure the defects or otherwise respond. Often, if the problems with the application are minor technicalities, they can be resolved over the telephone. An Office Action raising more serious substantive issues which must be addressed with a written response can add six to 12 months to the examination process. Such substantive issues may involve either a potential conflict with a registered mark or with the mark in an earlier-filed application, or a determination by the examining attorney that the mark is too “descriptive” to be entitled to trademark protection. An Office Action raising either technical or substantive matters is issued in the vast majority of cases.
- Approval, Publication and Registration. Once the mark is approved for publication, it will appear in the PTO’s Official Gazette about one to three months later, after which members of the public have 30 days to file notice with the PTO if they object to the mark being registered. If such a Notice of Opposition is filed, an opposition proceeding will be conducted before the Trademark Trial & Appeal Board (the “TTAB”), a panel of three administrative law judges within the PTO who adjudicate disputes over the registrability of trademarks. Procedurally, opposition proceedings are not unlike civil litigation in court, and they can be just as time-consuming and costly. On the other hand, if no one opposes the registration of the mark, either a Certificate of Registration or (in the case of an ITU application) a Notice of Allowance will issue, which can take another six to 12 weeks. From beginning to end, the entire application process can take 18 months to two years to get to this point (the current average is believed to be around 19 months). In the ITU context, after issuance of a Notice of Allowance the applicant has six months to file a sworn statement (including one or more specimens) establishing that the mark is actually in use; up to five extensions of this deadline are available for an additional fee, provided the applicant can show that it is making a bona fide effort to put the mark into use. This Statement of Use goes through a brief examination period, and if and when it is approved a Certificate of Registration will issue.
- Final Refusal. If, on the other hand, the examining attorney does not accept the applicant’s arguments in a response to an Office Action, the PTO will issue a final refusal. At that point, the applicant may file a request for reconsideration with the examining attorney and/or may appeal the matter to the TTAB. The applicant may also abandon the application at any point during the review process. This does not mean that the applicant cannot use the mark – it’s just not entitled to the benefits of federal registration. If, however, the problem with the application arises out of a conflict with a mark having priority over the applicant’s, it would often be inadvisable to use the mark because of the possibility of a claim of infringement.
9. How long do trademark registrations last?
Common law trademark rights will last as long as the mark is in use in commerce, and therefore can potentially be perpetual. There are well-known marks, such as Bass Ale’s red triangle, which are literally hundreds of years old.
The term of a U.S. federal registration is currently 10 years. Registrations are renewable for additional 10-year periods, provided the mark is still in use. The renewal fee for a U.S. registration is currently $400 per class. As long as the mark is in use on the goods or services claimed in the registration, there is no limit to how many times the registration can be renewed.
Also, federal trademark law provides that a federal registration will be cancelled six years after it is issued unless the registrant files a sworn statement (called a “Section 8 Affidavit”), together with a specimen, affirming that the mark is still in use. The Section 8 Affidavit must be filed sometime between the fifth and sixth anniversaries of the registration date, and the filing fee is currently $100 per class. A Section 8 Affidavit must also be filed at the time of each renewal as well (in effect increasing the renewal fee to $500).
Moreover, at or after the time the first Section 8 Affidavit is filed, if the registrant can also establish that the mark has been in continuous, exclusive and uncontested use for a period of at least five years, Section 15 of the Trademark Act provides that the registration shall be deemed legally “incontestable” – yet another advantage in the event of litigation. The current filing fee for the Section 15 Affidavit is $200 per class. Incontestable status is not, however, quite as strong as sounds – even an incontestable mark is still subject to challenge by someone who can show earlier use of a conflicting mark.
State registrations vary in length from state to state, but typically last either five or 10 years. Application and renewal fees are generally low – under $100.
10. What do ®, ™ and SM mean?
The ® symbol designates a federally registered trademark, and may only be used (indeed, must be used) when the owner has a federal registration for that exact mark. A state registration does not permit use of the ® symbol; nor does a pending federal application.
The “TM” (for trademarks) and “SM” (for service marks) symbols denote common law trademark rights and their use is not governed by any federal statute. They merely announce to the world that one is claiming exclusive rights to this mark, irrespective of federal registration. We encourage clients to use the “TM” or “SM” symbol liberally on all their unregistered marks, including marks that are going through the federal registration process.
Using the appropriate trademark symbol is important because it forecloses infringers from raising the defense that they were unaware that the mark in question belonged to someone else. Moreover, federal law requires that owners of federal registrations use some form of notice that a mark is registered – either the ® symbol or the abbreviation “Reg. U.S. Pat. & TM Off.” –among other things, it is a precondition to any award of money damages in a federal trademark infringement suit.
11. What are the benefits of federal vs. state trademark registrations?
A federal trademark registration provides presumptive evidence in court of your ownership of, and exclusive right to use, the trademark in question throughout the United States – even in parts of the United States where the mark is not yet in use. Federal trademark law also provides for awards of significant money damages for infringement of a registered mark — damages which may not be available for unregistered marks.
For U.S. clients, we often recommend obtaining state trademark registrations in their home state(s) and other states where they may have a physical presence, as well as federal registrations, particularly when the goods are services are sold primarily in local or regional markets. The primary advantage of a state trademark registration (in most states) is that it can be obtained at low cost and in relatively short time (for example, the filing fee in Massachusetts is only $50 per class and applications are typically approved in a matter of days or weeks). The state registration will quickly and cheaply get the mark listed in the various international trademark databases – where it will be found by others conducting trademark searches – and thus can often put potential rivals on earlier notice of your claim to own and use the mark. Owners of state trademark registrations may also have additional legal remedies for infringement or dilution of their marks under the laws of that state. (Most notably, many state trademark dilution laws are much broader in application than the federal statute, so it can be an advantage in litigation to be able to assert a state trademark dilution claim to protect a mark which would not be eligible for federal dilution protection.) For this reason, state registration is highly advisable in states where an infringer has been located and legal action is contemplated.
12. What about foreign trademark registrations?
U.S. trademark rights are territorial – that is, they do not extend beyond the boundaries of the United States and the jurisdiction of its courts. For companies doing a significant amount of business overseas, it is recommended to register its trademarks in those countries where they have a physical presence or generate a significant amount of revenue.
Certain treaties to which the United States is a party do provide some reciprocal rights to American trademark holders who seek to register their trademark rights in other countries. Chief among these is the right under the Paris Convention to have one’s foreign filing date relate back to an earlier U.S. filing date, provided the foreign application is filed within six months of the U.S. application. Thus, to give a practical illustration, suppose an unscrupulous rival, upon learning that you had filed a U.S. application for a particular mark, proceeded to file an application for the very same mark in Canada a month later. If you then file a Canadian application for your mark within six months of your U.S. filing date, it will be treated as having been filed on your U.S. filing date and therefore ahead of the unscrupulous rival’s. This six month filing window means that companies with a significant overseas presence should give serious, early consideration to the registration of their trademarks in countries in which they are doing a substantial amount of business. For companies with a heavy Internet presence running English language websites, the English speaking countries are often the first priority. The time, paperwork and costs involved vary from country to country, although the implementation of various treaties is making the task less complicated than it once was. Still, one should assume that the cost of obtaining a foreign registration in almost any country will be at least as much as the cost of a U.S. registration, and typically more because of the need to retain local counsel (a requirement in most countries).
In addition, in November of 2003 the United States became a full contracting member of a multi-lateral trademark treaty known as the Madrid Protocol, which permits a U.S. applicant to secure protection for a mark in the dozens of other Madrid System member nations simply by filing one application here in the United States Particularly for companies with large trademark portfolios and broad overseas operations, filing under the Madrid Protocol can help realize some significant cost advantages.
13. Can I get a registration of my domain name with the PTO?
A mark composed of a domain name is registrable as a trademark or service mark, but only if it functions to identify the source of particular goods or services, rather than merely serving to locate a website. Examples of appropriate uses of a domain name for trademark purposes include, for example, the use of the domain name on the actual pages of a website offering services, and off-line use of the domain name as something more than just a URL address, such as use of the domain name on marketing or promotional materials for services, and use of the domain name on packaging for a product. The classic example is AMAZON.COM, a name which appears all over the company’s website, is featured in all their advertisements in all media, and is indeed the name of the company. If a company’s domain name is not currently being used in the manner described above, a modification in the way the domain name is being used may optimize a company’s rights.
If a company is not using its domain name in the manner described above, but is using or intends to use the “interior” or second-level portion of the domain name (i.e., excluding “www” and “.com” or other domain identifier), protection may be available for the second level domain name if that word is also being used as a trademark and not merely as a portion of a web address. In many cases, businesses try to use some version of their company name or flagship trademark as their second level domain (thus, for example, Volkswagen’s primary web address is at www.vw.com). However, if a company does not presently have the appropriate trademark application or registration in place for its second level domain name, and that term is being used as a trademark, then application(s) should promptly be filed for that term for use in connection with (at least) the same goods or services in which the entire domain name is being or would be used. Registering one’s domain name both with and without the “.com” in this way can strengthen the company’s rights against cybersquatters or others who would use similar marks and/or domain names.
On the other side of this issue, it is also important to secure the domain names corresponding to your trademarks. Similar domain names can pose practical problems for people looking for you or your facilities on the Internet — sometimes serious problems – and, if found to be used as a trademark and not just an internet location, they also can dilute or weaken the distinctiveness and enforceability of your mark. For these reasons, we always advise clients to register and/or otherwise acquire the .com, .net and .org (and perhaps .biz, .info and .us as well) domain names corresponding to their important trademarks, including any variations in spelling, spacing, hyphenation, abbreviation, gripe names, common typographical errors, etc. Cybersquatters and phishers can be extremely creative and resourceful in devising ways to divert Internet traffic away from its intended destinations, so we need to be just as creative and thorough in trying to preclude them from doing so.
Companies should always keep in mind the fact that trademark use and protection on the Internet is an expanding and ever-changing issue in the PTO, the courts and the governing bodies of the Internet worldwide, and as a result, the decisions of these authorities in this area, as in other areas, are not always predictable.