Trademark

It all started when…

Overview of Trademarks 

What is a trademark or service mark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms "trademark" and "mark" refer to both trademarks and service marks.

Why register? 

Federal Registration provides the following benefits:

·         constructive notice to the public 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; and

·         the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Procedure

1)       Application Filed with the US Patent and Trademark Office (USPTO)

2)       An Examining Attorney at the USPTO does a legal and procedural review of the application to ensure that it complies with all applicable rules of the Trademark Act of 1946 and the Trademark Rules of Practice.  The examining attorney will do a search for conflicting marks and will also examine the application to ensure that the mark is not, among other things:  (1) primarily merely descriptive or deceptively misdescriptive of the goods/services; (2) primarily geographically descriptive or primarily geographically deceptively misdescriptive of the goods and services; (3) primarily merely a surname; or (4) ornamental. 

3)       If the Examining Attorney decides the mark should not be registered or has any issues with the contents of the application, the examining attorney will issue a letter (called an “Office Action”) explaining what the issues are.  The applicant has six months of the mailing date of the Office Action to respond.

4)       Once Examining Attorney is satisfied that the Trademark is registerable, the USPTO sends a Notice of Publication to the applicant stating the date of publication in the Official Gazette, a weekly publication of the USPTO. 

5)       Any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or a request to extend the time to oppose.  There will be a hearing before the USPTO administrative tribunal if an opposition is filed.

6)       If no opposition is filed, or if the opposition is unsuccessful, a Certificate of Registration will issue for Use-based applications and a Notice of Allowance will issue for Intent-to-Use applications.

Basis for Filing

Your application will identify your basis for filing:  (1) Use in Commerce; (2) Intent to Use; or (3) Foreign Registration.

What is "use in commerce"?

"Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. The USPTO has identified that the following are generally acceptable “use” for this filing category: 

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

What is "intent to use"?

If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce.  If you file based on intent to use, you must begin actual use of the mark in commerce before the USPTO will register the mark and an Allegation of Use form must be filed. 

What is registration based on foreign registration? 

Under certain international agreements, if you qualify, you may file in the U.S. based on a foreign application or on a registration in your country of origin.