How to register a trademark in the United States?
Trademarks often are the most important and valuable assets for a business, in that they identify the origin of the products or the services put in the stream of commerce by a certain company.
Through the trademark, the customer is able to associate certain products with a specific company, and to distinguish them from those sold by the competitors. Customers rely on a trademark to identify a product and to understand its general characteristics, such as value, quality, price, durability, reliability etc.
A trademark confers upon the owners the exclusive right to use such trademark in connection with a product or a service. In the United States generally trademark rights belong to the person who first uses the mark in commerce, as opposed to other countries where trademark rights arise upon registration.
In the United States, at the federal level the United States Patent and Trademark Office (USPTO) is the federal agency that regulates the trademark registration process and enforce the trademark rights together with the Courts, even though in different ways.
As noted above, since in the United States trademark rights belong to the first one using the mark in commerce, registration of the mark is not mandatory to protect same from third parties’ infringements. However, the registration of a trademark with the USPTO provides significant benefits to the owner, such as:
- Prima facie evidence of ownership of the mark
- Nationwide use of the mark
- Strong remedies for infringement such as treble damages and attorney’s fees
- Incontestability of the use of the trademark after five years of the registration
- Right to use ® in connection with the mark
- Basis to register the mark in other countries
- Right to prevent the import of infringing goods via the US Custom
REQUIREMENTS FOR TRADEMARK REGISTRATION AND LEGAL PROTECTION
Use in commerce. A trademark is granted protection if it is used in commerce. However, it is allowed to apply for registration of a trademark even though the trademark is not yet used in commerce at the time. In this case, within 6 months of the Notice of Allowance issued by the USPTO, the applicant is required to provide evidence of the use of the mark in commerce by submitting a specimen of use (see infra). This six-month deadline can be extended for five times for a period of six month each, then if no evidence of use in commerce is provided, the application will be disapproved.
Distinctiveness. A mark cannot be generic but must be distinctive enough to identify the product as coming from a specific source. If a mark is distinctive, it can be registered in the Principal Registry of the USPTO and benefit from full statutory protection. Perfect examples of distinctive marks are made up words that cannot be found in the dictionary, such as Kodak, Nikon, Exxon, Pepsi, Xerox. These kinds of marks enjoy full and immediate protection from the USPTO. Another category is represented by words of common meaning that have no relation whatsoever with the products or goods for which the registration is sought. The most popular instance of these types of marks is “Apple”, which associates a fruit to personal computers, phones and other similar products. If a mark, instead, is merely descriptive, it may be registered in the Supplemental Registry and acquire full protection after a certain period of time during which such kind of mark acquires distinctiveness (so called “secondary meaning”) as a result of intensive advertising etc. A mark is descriptive when it only describes the characteristics of a product. Examples of merely descriptive marks are “Cold & Creamy” for an ice cream, or “Beef and Beer” for a restaurant. If a mark is simply generic, it cannot be ever entitled to protection. Examples of generic marks are “orange” for oranges, “shoes” for shoes etc. Such marks will never be capable of being registered. A trademark may also become generic over time and thus lose legal protection. This happens when a mark has become so popular that its name, with the time going by, has started to identify the product itself rather than its source. Typical examples of marks that became generic are Xerox, Velcro, Aspirin, Jet Ski, Thermos and so on. When a mark becomes generic, it can no longer enjoy legal protection from infringement even if registered. A company which trademark became generic cannot prevent other entities to use the same trademark in commerce for their products. In such cases, it is up to the company to put in place an intensive advertising campaign so that the customers may go back to associate that certain mark not with the product itself but with a product manufactured by a specific company.
Likelihood of confusion. Two identical or similar marks in the same class of products or services cannot coexist nor can they be registered with the USPTO at the same time. Two trademarks are considered “confusingly similar” if there is a good chance that a customer may be led to believe that the products associated with them come from the same source. There is no likelihood of confusion if the two conflicting marks distinguish products belonging to two different industries. A mark may be similar to another in many ways: (i) similarity as to the words; examples: Hypnotiq for liqueur and Hopnotic for beer. Woody Stout, Woody Wheat, and Woody Brown Ale for beer. Frickin’ and Flip’n Chicken for restaurant services. Alair for medical devices for the therapeutic treatment of pulmonary diseases and Holaira for medical devices for the treatment of obstructive lung diseases. (ii) similarity in appearance and design; (iii) similarity in sound: examples, Seycos vs. Seiko, Entelect vs. Intelect; Cana vs. Canya; Kresco v. Cresco; (iv) similarity in meaning. Examples: Mr. Clean vs. Mr. Rust; Thirty Forty Fifty vs. 60 40 20; Pledge vs. Promise.
Deceptive Marks. A deceptive mark improperly conveys a misleading description of the good or services. Example: the trademark TITANIUM was refused registration for vehicles that do not contain titanium. SILKEASE was deemed deceptive for clothes not containing silk.
Person’s Names. A living person’s name cannot be registered as a trademark except with the person’s written consent.
MARKS. DIFFERENT TYPES
A mark may consist of words, phrases, symbols, designs and combination thereof. A trademark may also include sounds, smells, colors, shapes. A trademark may be a domain name and a trade name, as well as a trade dress (feel of the product, its packaging and labeling).
Service Marks. Service marks refer to trademarks which identify a service rather than a good. There is no difference between service marks and other types of marks as to registration process and legal protection.
Certification marks. Certification marks certify that a certain product meets specific requirements or standards set forth by the certifying entity. The mark is not used by the certifying entity itself, but only by third parties to sell products or services that meet the requirements established by the certifying entity.
Collective marks. Collective marks belong to an organization and may be used by the members to distinguish the products of the members from those of the non-members. Similarly to the Certification Marks, however, the collective mark shows that the members are in compliance with certain specification established by the organization.
THE USPTO REGISTRATION PROCESS
Trademark clearance should be conducted by the owner before the commencement of the registration process and consists of a search of other marks that are potentially conflicting with the prospective mark in the same industry. One first light search should be conducted, at minimum, on the USPTO database and on Google. As the case may be, a more thorough search should be conducted on existing registrations or applications for similar marks to better evaluate the risk connected with the registration of a certain trademark.
Once the trademark clearance is completed and the results show that a mark may be eligible for registration, this is when the application process with the USPTO starts. If the mark meets the main requirements described above (distinctiveness, no likelihood of confusion, no deception etc.) it should be eligible for registration in Principal Register. Registration in the Principal Register confers upon the owner of the mark full legal protection and all the benefits previously discussed.
If a mark is deemed to be descriptive, it may still qualify for registration in the Supplemental Register, which grants the owner of the mark a limited legal protection compared to the Principal Register. In presence of a merely descriptive mark, the examining USPTO attorney may propose to amend the application and register the mark in the Supplemental Register, otherwise the application may be disapproved. According to some opinions, the continuous use of the mark for a period of five years should be considered automatic evidence of acquired distinctiveness, even though in most cases the examining attorney will require additional evidence of acquired distinctiveness, such as evidence of notoriety, advertisements of the mark, and statements from third parties certifying that the mark has become popular enough to identify the goods or services at hand.
A trademark application may be filed on line visiting the USPTO website. Paper applications are still permitted but they are highly discouraged, also in terms of the higher fees associated with them.
The application includes, first, the general information regarding the applicant. Then the description of the mark should be provided. As noted above, typically a mark consists of words, designs or a combination thereof. If a trademark is a combination of words and design, a jpg file containing the drawing of the mark should be uploaded to the website. Otherwise it will suffice to just type in the words that represent the mark. If the words contained in the mark are not in the English language, a translation should be provided no matter the language in which any given word has a meaning. This is not a secondary aspect, because if the applicant fails to indicate the translation an additional fee may be charged on the applicant upon the examining attorney’s review.
At this point, the applicant is required to indicate the class of goods or services which the mark is supposed to cover. There are 45 standard categories of goods and services pursuant to the Nice Classification, and it is up to the applicant to choose the preferred classification for the goods or services which the mark refers to. The same good or service may be included in multiple classes. For each class under which the registration is sought a minimum fee of $225.00 will be charged by the USPTO.
After indicating the classes under which the mark should be registered, the applicant is required to choose the filing basis for his application. As previously noted, while the USPTO requires that the owner provide evidence of the use of the mark in commerce, it is however possible to file an application based on the intent to use the mark in the near future (i.e. intent-to-use application). In any such case, after a 6 month period from the issuance of the so called notice of allowance by the USPTO, the applicant is required to provide evidence of use in commerce filing a specific form containing one or more specimens relating to the goods or services for which registration is being sought (so called Statement of Use).
Accepted specimens could be tags, labels, images of the goods where the mark is displayed, advertisements, web pages, business cards and much more. Of course, any of those specimens have to clearly display the mark at hand, which should match the mark displayed in the original drawing.
Another basis for filing is an existing application or registration of a mark in a foreign country under Section 44. In any such cases USPTO does not require evidence of use, at list in the beginning. The foreign country must be a party to the WIPO Paris Convention.
Examination by the assigned trademark attorney
Typically, after three months of the filing, a USPTO examining attorney assigned to the case will review the application and will issue his/her determination as to the eligibility of the proposed mark for registration. The examining attorney will check whether the application meets the requirements, whether the mark is distinctive and if any likelihood of confusion may exist.
If the examining attorney has objection to the registration of the proposed mark, he / she will issue a response to the applicant (Office Action), typically via email. At this point, the applicant has a six month strict deadline to respond. Certain office actions, mostly those based on failure to meet formal requirements, may be quite simple to respond to and generally a quick amendment to the application will be enough. Other office actions, specifically those based on descriptiveness and likelihood of confusion, require that the issue at hand be addressed by an attorney’s formal response containing legal arguments in order to overcome the examining attorney’s objections. Before serving a response, it is a very good practice to reach out to the examining attorney over the phone and try to understand what he / she is exactly looking for and to get helpful tips as to how to draft the document. Once received the applicant’s response, after a certain time the examining attorney will issue a final determination which could result in the approval or refusal of the application. In case of refusal, the applicant is entitled to file an appeal with the Trademark Trial and Appeal Board (TTAB), and, if he outcome doesn’t change, with the US Federal Courts.
Publication and Opposition
If the examining attorney approves the application, the mark for which the registration is sought will be published in the Official Gazzette of the USPTO. At this point, within 30 days of the publication any interested party may file an opposition which most likely will be brought by owners of other marks claiming likelihood of confusion. The opposition proceeding will be administered by the TTAB. In the majority of cases the parties will reach an agreement to settle the dispute before the opposition proceeding comes to an end. Most typically the parties will enter into a Trademark Coexistence Agreement which will allow both parties to use their confusingly similar marks with certain reciprocal limitations.
If no opposition is filed within 30 days of the publication, the trademark can be registered and an official Certificate of Registration will be issued to the applicant.
As previously noted, in case of intent-to-use based applications, if no opposition is filed the USPTO will issue a Notice of Allowance, which must be followed by the Statement of Use as previously described. If the Statement of Use is accepted by the office, the application may proceed to registration.
In order to keep the registration alive, the owner is required to file with the USPTO: (i) a Declaration of Continued Use or Excusable Nonuse or a combined Declaration of Continued Use and Incontestability, between the fifth and the sixth anniversary of the registration (the latter is permissible only for marks included in the Principal Register); (ii) a renewal application every 10 years (the first time between the ninth and the tenth anniversary of the registration). Each of these filings must be accompanied by a fee.