The United States Patent and Trademark Office will not protect your right to use your trademark against a third-party infringer, either in or out of court.  The obligation to protect what you have invested in your trademark resides with you.  This means that it is up to you, the trademark owner, to police any unauthorized use of your trademark.  But remember that your right to exclusively use your trademark is tied to the goods and/or services for which you received the trademark.

The legal rights that you received in your trademark because you registered your trademark with the United States Patent and Trademark Office are not permanent or indefinite.  Without you taking certain actions to maintain your trademark.  A Section 8 Declaration of Continued Use or Excusable Nonuse is due six years after your trademark registration date, or within the six month grace period thereafter.  A Sections 8 and 9 Combined Declaration of Continued Use and Application for Renewal is due 10 years after your trademark registration date, or within the six month grace period thereafter.  Your federal trademark will be cancelled or expire if you do not timely file.  If your federal registered trademark is cancelled or expires, the only remedy is to initiate a new federal trademark application process.  Depending on how you used your trademark and whether you appropriately policed infringing uses of your trademark, you may find that your rights in and to your trademark may no longer be what they were during your initial federal trademark application.

We are typically able to provide a pre-registration trademark search and represent businesses in regards to their federal trademark registration (apart from issues raised to the application by attorneys of the United States Patent and Trademark Office or challenges made to the application by third parties during the application process) based on a fixed fee.  Give us a call.  Paul would be happy to discuss your case in an initial consultation over the phone at no-charge.

 

If a business files a trademark registration application with the United States Patent and Trademark Office, the filing fee per International Class of goods or services for which a trademark is applied for will range from $225 to $375 per International Class, depending on whether the application is a paper filing (the most expensive filing option) or the type of electronic filing option selected.  We can typically work with clients to meet the requirements for the less expensive electronic filing options.  The federal trademark filing fees are nonrefundable.

A trademark distinguishes the goods of one business from those of others.  A trademark may consist of a word, phrase, symbol, or design, or some combination of these elements.  Trademarks typically take the form of brand names and logos that are used on goods.  A service mark is like a trademark, except that it distinguishes the services (instead of the goods) of one business from those of others.  It should be noted that domain names and business names, without more, are not necessarily trademarks.   You should not assume that you have trademark rights simply because you have registered a domain name or business name.

The federal trademark application process can take a year or more from start to finish.  An examining attorney from the United States Patent and Trademark Office will typically review a filed trademark application three months after the filing date.  The examining attorney will review the application to determine whether the trademark can be registered including a review of the application, the drawing of the trademark, and any submitted specimen showing how the trademark is utilized by the business in commerce.  If the examining attorney issues a letter identifying reasons to reject the application, the applicant (or the applicant’s attorney) has six months to submit a response.  If a response is not filed within the six month timeframe the application will be denied.  (Trademark application fees are nonrefundable and would be forfeited.)  If the examining attorney does not identify any issues associated with the application or if all identified issues have been resolved, the United States Patent and Trademark Office will approve the proposed federal trademark for publication in the Official Gazette.  The applicant is typically notified of the date of publication about three weeks in advance.  After publication of the proposed federal trademark in the Official Gazette, the public has a 30-day period to object to the registration of the proposed federal trademark.  If opposition to the proposed federal trademark is filed, a hearing will be held before the Trademark Trial and Appeal Board.  If an applicant has already submitted a specimen showing how the trademark is utilized in commerce (for example showing the trademark on product packaging) and no opposition was filed by the public to the proposed trademark or the Trademark Trial and Appeal Board side with the applicant, the United States Patent and Trademark Office will proceed to register the trademark.  If the applicant has already submitted a specimen of how the trademark is utilized in commerce, and if no opposition is filed to the application by the public, the United States Patent and Trademark Office will typically issue a registration certificate approximately 11 weeks after publication of the trademark in the Official Gazette.

While a business may gain some state-level rights in a trademark simply through its use of the trademark in its regular business, there are reasons why for some businesses it will be in their best interest to seek additional federal trademark protection, while for other businesses they may either not qualify for a federal trademark or it may not be worth the time and expense to seek federal trademark protection.  What follows are some factors that a business may consider when facing this question:

1. A trademark is only eligible for federal trademark protection if it is being used (or there are plans to use it) in interstate commerce (i.e., if goods or services are being sold or transported between more than one state or U.S. territory), or if it is being used (or there are plans to use it) for goods or services sold or transported between the United States and a foreign country. If your business’ goods or services do not meet this criteria and your business does not have plans that would involve either interstate or foreign commerce, then the business’ trademark may not be eligible for federal trademark registration and it may not be worth the time and expense to seek federal trademark registration.  If your business is strictly active in one state, you may wish to consider seeking trademark registration in the state in which your business is active.  [Consultation with a local attorney may help you determine the value to your business of a state-based trademark registration.]
2. Is there a likelihood of confusion between a business’ proposed trademark and a trademark already registered with the United States Patent and Trademark Office? The United States Patent and Trademark Office will not register a trademark if there exists this likelihood of confusion with an existing federal trademark.  [I would recommend consulting with an attorney if you believe your business may face this situation to better understand whether the United States Patent and Trademark Office would be likely to make this finding based on: (a) the current standard that has been developed for a finding of “likelihood of confusion”; and (b) the application of this standard to your specific situation.]
3. Is the proposed trademark a strong or a weak trademark? The United States Patent and Trademark Office generally breaks trademarks into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic.  [This is again an issue where I would recommend consulting with an attorney.  It can be particularly valuable to consult legal counsel when initially developing a trademark.  A strong trademark will be easier to protect in court and will likely face fewer issues when seeking federal trademark registration.]
4. A federal trademark registration creates a legal presumption (if your business ever needs to go to court to protect its trademark) of your business’ ownership of the trademark and its exclusive right to use the trademark nationwide related to the goods and/or services for which the trademark was granted.
5. Registration of a trademark with the United States Patent and Trademark Office provides public notice of your ownership of the trademark through the Trademark Electronic Search System maintained by the Trademark Office.
6. A business may record its federal trademark registration with the U.S. Customs and Border Protection in order to preclude the importation of foreign products that violate the trademark.
7. A federal trademark registration can serve as the basis to register the trademark in foreign countries in which your company does business.
8. A federal trademark registration permits your business to bring a court action in federal court regarding enforcement of your trademark rights.
9. Finally, a federal trademark registration permits your business to thereafter use the federal trademark registration symbol ®.

Yes.  Before going through the time and expense of applying for a federal trademark registration, and before prematurely settling your business on a particular trademark, I highly recommend a meaningful trademark search of current and pending trademarks with the United States Patent and Trademark Office, use of comparable trademarks on the Internet, and a search of state trademark and business registrations in order to determine: (a) whether another business is already utilizing the proposed trademark; (b) whether another trademark exists that, while not identical, would preclude the registration of the proposed trademark as the proposed trademark would create a “likelihood of confusion” with the existing trademark; and (c) the strength of the proposed trademark (from a legal enforceability standpoint) after researching the utilization of other trademarks and business names for the good or service for which the trademark would be utilized.  If such issues are unearthed during a trademark search, your business may be able to modify the proposed trademark to strengthen the trademark, address these issues, and increase the likelihood that your resulting federal trademark application will be approved.  Given the scope of commerce in America today, it is impossible to guarantee that all possible trademark issues may be identified in a thorough trademark search.  However, a thorough trademark search can identify many issues that would otherwise be missed and contribute to a better educated decision as to whether and how to proceed with a trademark registration before the United States Patent and Trademark Office.