Fulfilling Your Trademark & Copyright Needs

A trademark is a sign used to distinguish the goods of one company from those of another. If the company provides services, then "service mark" is the more appropriate term. For simplicity's sake, we will use the term trademark or "mark" to cover both goods and services.

Typically, a trademark is a visual sign, such as a word, name, signature, numeral, device, logo, or shape. However, a trademark may also be a non-visual sign, such as a sound or scent.

The best way to protect your trademark is to register it by filing an application in the United States Patent and Trademark Office (USPTO). Although it is not necessary to register a trademark, you can establish rights in a mark based on the legitimate use of the mark. However, owning a federal trademark registration on the USPTO's Principal. Register provides several advantages.

• Constructive notice throughout the United States of the registrant's claim of ownership of the mark
• A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.
• The ability to bring an action concerning the mark in federal court
• The use of the U.S registration as a basis to obtain registration in foreign countries
• The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods

In summary, enforcing your legal rights in a registered mark is simpler, more certain, and less expensive than an unregistered mark.

Before you use a new trademark or spend substantial time and money gearing up for such use, you would be well-advised to conduct a trademark availability search to determine whether using it may risk infringing another's trademark. The search also gives you a good indication of whether your trademark may be registrable.

This applies to each country in which a trademark is proposed to be used. If you've been using a trademark for a substantial time in the United States, but intend to use it overseas, you should probably do availability searches in each country first.

Standard "Use" Application

A standard or "use" application is available when an applicant is presently using the mark in commerce to describe its goods or services, as opposed to the intent-to-use application discussed below.

The application preparation and filing is a relatively short process involving, in part, a determination of the type and number of classes in which the mark may be registered. You must supply both a drawing and a specimen of your mark.

Marks are printed in black and white when published by the USPTO, so the drawing must be a black and white image of your mark, accompanied by identifying information. Any colors in your actual mark should be described in the text of the application.

A specimen of a trademark (for goods) is typically a label, container, display for the goods, or a photograph of the mark in use on the goods. The USPTO does not want the actual goods or related materials like invoices, letterheads, brochures, or business cards.

On the other hand, a specimen of a service mark may consist of a letterhead, brochure, or business card, so long as the specimen also makes some reference to the service.

About 6 months after filing, an examining attorney at the USPTO reviews the application and determines whether the mark may be registered. If the examining attorney determines that the mark cannot be registered, he will issue a letter listing any grounds for refusal and/or any corrections required in the application.

The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within 6 months of the mailing date of the letter, or the application will be abandoned.

If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the USPTO.

A common ground for refusal is the likelihood of confusion between the applicant's mark and a registered mark. Marks that are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.

If there are no objections, or if the applicant overcomes the objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO will send a Notice of Publication to the applicant indicating the date of publication.

In the case of two or more applications for similar marks, the USPTO will publish the application with the earliest effective filing date first. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration.

An opposition is similar to a formal proceeding in the federal courts but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the USPTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published.

Intent-to-use Application

If you have not yet used your mark in commerce, you may file an "intent-to-use" (ITU) application. Recall that trademark rights are acquired by using a mark in commerce.

The USPTO recognizes, however, that you need assurance that a given mark can be protected before you spend money promoting the mark. An ITU application allows you to start the registration process before you have used the mark in commerce.

The requirements for an ITU application are essentially the same as those for a standard or "use" application with a few differences. An ITU application must include a sworn statement that you have a bona fide intention to use the mark in commerce.

Once you overcome any objections and prevail in any opposition proceeding, you are issued a Notice of Allowance, which is official notification that your mark can be (but is not yet) registered.

If you start using the mark in commerce before receiving a Notice of Allowance, you must file an Allegation of Use. If you start using the mark in commerce after receiving a Notice of Allowance, you must file a Statement of Use. You do not have to submit a specimen until you file your Allegation or Statement of Use.

If you have not filed an Allegation of Use, you have six months after you receive a Notice of Allowance to file a Statement of Use. If you have also filed an acceptable specimen, you then receive your Certificate of Registration.

If you still have not used your mark in commerce within 6 months, you may file an Extension Request. If you do not file either a Statement of Use or an Extension Request, your application is abandoned.

You may file an Extension Request every 6 months, up to 36 months after your Notice of Allowance. If you still have not used your mark in commerce after 36 months, your application is abandoned.

Once you have registered a mark, you can control that mark indefinitely if you make the appropriate USPTO maintenance filings and adopt certain business practices. Your initial registration period lasts for ten years. The USPTO requires that you file an Affidavit of Continued Use (also known as a "Section 8 Affidavit") between the fifth and sixth year following registration. The Section 8 Affidavit must be accompanied by a specimen of your mark as used in commerce.

If your mark is on Principal Register and you have used your mark in commerce continuously for at least five years, you may file a Declaration of Incontestability (a "Section 15 Affidavit").

When a mark becomes incontestable, continued registration is considered conclusive evidence of the validity of the mark and of your exclusive right to use the mark in commerce.

Although a Section 15 Affidavit is not required, it is so commonly filed between the fifth and sixth years after registration that the USPTO offers a special form for a combined Sections 8 & 15 filing.

To maintain federal protection beyond the initial ten-year registration term, you must file an Application for Renewal (under Section 9) within the year before the expiration date of your registration.

Each renewal lasts ten years. Since you are also required to file a Section 8 Affidavit and provide a specimen every ten years, the USPTO provides a combined declaration of use in commerce/application for renewal of registration of the mark under Sections 8 & 9. The combined declaration must be filed every ten years.