At Frijouf, Rust & Pyle, P.A., a significant portion of our practice is devoted to handling trademark law issues.  We have years of experience in all phases of trademark prosecution, including the preparation of trademark clearance and availability opinions, preparation and prosecution of state, federal and international trademark applications and conducting appeals before the Trademark Trial and Appeal Board.  We represent clients in drafting and negotiating trademark licensing agreements and co-existence agreements.  We also have experience in trademark opposition and cancellation proceedings and litigate trademark infringement, unfair competition, false advertising, cybersquatting and trademark dilution cases.  We also have experience with Internet law, including domain name acquisition, registration and disputes.

 

 

GENERAL INFORMATION

 

1. Definition of a Trademark
2. Selecting a Trademark
3. Trademark Clearance Searches
4. Advantages of a U.S. Trademark Registration
5. U.S.Trademark Prosecution
6. Duration of Trademark and U.S. Registration
7. International Trademarks
8. Internet Domain Names
9. Transactional Matters
10. Trademark Litigation

 

 

 

DEFINITION OF A TRADEMARK

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods 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.  The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.  Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.  Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office.

 

SELECTING A TRADEMARK

Not all trademarks are created equal in the protection they offer you.  The United States trademark laws recognize a spectrum of distinctiveness, or a sliding scale of protectability, where the more distinct and unique the term, the easier it is for the trademark owner to acquire enforceable trademark rights in and to the trademark.  Trademarks can be divided into five (5) basic categories:

 

1. Fanciful or Coined Trademarks:  fanciful trademarks consist of invented words or phrases without a dictionary meaning, such as, KODAK, ROLEX, EXXON and STARBUCKS.  Fanciful marks are inherently distinctive and immediately function as a trademark upon use in commerce.  They are typically afforded the greatest amount of trademark protection and an infringer has little defense in the unauthorized use of a coined or fanciful mark.  A trademark owner who selects a fanciful or coined trademark will have a distinct advantage in the marketplace.

 

2. Arbitrary Trademarks:  arbitrary trademarks are comprised of common words, but when applied to the goods or services they are applied in an unfamiliar or arbitrary manner.  For example, the trademark APPLE for computer products is arbitrary because the fruit has no direct relation to computer products.  Whether a mark is arbitrary depends upon its context.  For example, the mark APPLE used in connection with computers is arbitrary, but when used in connection with the sale of apples, the term would be considered generic.  Like fanciful trademarks, arbitrary marks are inherently distinctive and very strong.

 

3. Suggestive Trademarks:  suggestive trademarks suggest or allude to, rather than describe, a characteristic or quality or purpose or property of a good or service.  Suggestive marks require the consumer to exercise his or her imagination to reach a conclusion as to the nature of the goods or services.  Suggestive marks include SAMPSON for rope suggesting that the rope is strong, MARATHON for eye mascara suggesting that the mascara lasts a long time, GREYHOUND for bus services suggesting the speed of the service and PIRANHA for saw blades.  Suggestive trademarks are deserving of trademark protection but are typically afforded less protection than fanciful or arbitrary trademarks.

 

4. Descriptive Trademarks:  descriptive trademarks identify or describe a characteristic or quality or purpose or property of a good or service.  Descriptive trademarks include COMPUTERLAND for computer stores, OATNUT for bread containing oats and nuts and VISION CENTER for a business selling optical goods and services. Descriptive trademarks are not initially entitled to trademark protection and/or registration because the marks merely describe the goods and services to the public, and as a result, do not function as trademarks; i.e., indicating the origin of goods or services.  Descriptive marks may be protectable and registered if they have acquired distinctiveness or secondary meaning for the consuming public.  To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the brand.  This usually requires the presentation of evidence that the mark has been used over an extended period (five years is generally sufficient) and that substantial expenditures have been made to promote the mark.  For example, the descriptive term FROSTED MINI WHEATS was granted registration after Kellogg showed its extensive use and advertising of this mark and had thus established secondary meaning. Descriptive marks also frequently include increased costs of trying to register the marks, which are frequently rejected registration by the United States Trademark Office.  In the event that the owner of a descriptive trademark is not able to develop secondary meaning in the trademark, the mark is not protectable and consequently the owner will not be able to prevent others from using the same or similar trademark or term.  Moreover, even if a trademark owner is able to prove secondary meaning, courts generally hold that descriptive marks are weak and grant such marks a narrow scope of protection.

 

5. Generic Terms:  generic terms consist of the common or generic word or words for goods or services.  These terms cannot serve as a trademark; and thus, are not afforded any trademark protection.  An example is MILK for milk.

TRADEMARK CLEARANCE SEARCHES

We highly recommend conducting a trademark clearance search prior to the use of a trademark and prior to the filing of a trademark application to determine whether the proposed mark is available for your use and registration.  A full trademark clearance search should also minimize your risk of infringing upon the trademark rights of a third party.

 

We will use our expertise to evaluate the search report and provide you with an opinion letter as to the availability of your proposed trademark.  If a mark is determined to be available, preparation and filing of an application for federal registration typically follows.  Prior to authorizing a trademark search, you may wish to review the trademark and service mark records of the United States Trademark Office at www.uspto.gov.

 

ADVANTAGES OF A U.S. TRADEMARK REGISTRATION

The following is a list of advantages of a federally registered mark on the principal register of the United States Patent and Trademark Office over a common law trademark.

 

1.  Nationwide Priority:  the owner of a federally registered trademark enjoys nationwide protection, or priority of use, of the trademark in conjunction with the goods or services as of the filing date of the trademark application.  If your trademark is not registered with the United States Patent and Trademark Office, your trademark rights may be restricted to a narrow geographic area and you may be prevented from expanding your business in the future.

 

2.  The Right to Commence an Action in Federal Court:  the owner of a federally registered trademark has the ability to use federal courts to prevent others from improperly using the registered mark on the same or similar goods or services.  You also have the ability to receive up to three times your damages if a party is found by a court to be improperly using or infringing on your trademark.  Federal registration further provides the advantage of a legal presumption that you are the trademark owner, the trademark is valid, and that you have the exclusive right to use the trademark throughout the United States.

 

3.  Use of ® Symbol:  the owner of a federally registered trademark has the right to use ® or “Registered Trademark” wording in association with the trademark.

 

4.  Incontestable Rights:  the owner of a federally registered trademark has the ability to achieve the incontestable right to use the registered mark in commerce for the respective goods or services after five years of use after registration.

 

5.  Protection of an Asset:  a federal registration increases the value of a trademark and trademarks may be licensed to third parties for profit and used as collateral for business loans and lines of credit.  Also, a federal registration is crucial if you intend to sell your business in the future.  For example, if a potential buyer values your trademark as representing a favorable reputation or substantial goodwill, a lack of a federal registration may reduce the value of your business because it increases the buyer’s risk that a competing trademark will limit future expansion plans for the business.

 

6.  Basis for Foreign Registration:  the owner of a federally registered trademark has the ability to file applications for trademark registrations in other countries, based upon a United States Registration.

 

7.  Prevention of Importation of Infringing Goods:  the owner of a federally registered trademark has the ability to prevent people and/or businesses from other countries from shipping goods into the United States, that falsely display your mark on their goods.

 

U.S. TRADEMARK PROSECUTION

In the United States, trademark rights are acquired when use of the trademark begins.  However, these rights are limited and greater rights are available by registering the trademark with the state or federal government.  Trademarks used in interstate or foreign commerce may be registered with the United States Patent and Trademark Office (“USPTO”).

 

A trademark application can be filed with the USPTO based upon actual use in commerce or a bona fide intent to use the mark in commerce.  Thus, you need not wait until you actually use a trademark before filing an application with the USPTO.  The filing date of a U.S. Trademark Application establishes a nationwide priority of ownership rights in a trademark, except for presently unknown prior users in the geographical area of the prior use.  Accordingly, if a favorable search opinion has been given by our firm, we recommend that a trademark application be promptly filed in the USPTO to protect your rights nationwide.

 

Upon your authorization, we will prepare an application for registration of your trademark in the USPTO.  The application to register the mark is submitted to the USPTO, along with specimens of the mark as actually used in interstate commerce.  No specimens are required if the application is based on an intent to use the mark in interstate commerce.  Upon filing of the application, the USPTO will assign a serial number and filing date to the application for registration.  We will advise you of the serial number and filing date by forwarding to you a copy of the official receipt.

 

In about three to six months after the filing of the application, the USPTO will examine the application for registration and conduct an independent search of all registrations and pending applications in the USPTO.  If no registered mark or pending application for a mark is found which is construed as confusingly similar with the subject mark, the USPTO will publish the mark for opposition.

 

If a confusingly similar mark is found, or if there are formal objections, then an Office Action will be issued by the USPTO rejecting the application.  You may authorize us to respond to the Office Action and to argue against the rejection.  If we are successful in overcoming the rejection, the mark will be published for opposition.

 

Upon publication of the mark by the USPTO, any person or entity who believes that it will be damaged by the registration of the subject mark may oppose registration by filing a Notice of Opposition.  However, if a favorable trademark clearance search opinion was given by our firm, it is not likely an Opposition will be filed against your trademark.

 

If no opposition is filed against the registration of the mark, the mark is automatically registered on the Principal Register of the USPTO.  If the application was based on an intent to use the mark in commerce, the mark must be actually used in commerce before the USPTO will register the mark on the Principal Register.

 

It is important to prosecute your trademark application with the assistance of a firm that has experience in trademark matters.  Many aspects of a trademark application cannot be changed after filing and some errors may render an application void ab initio or invalid from the outset.

 

DURATION OF TRADEMARK AND U.S. REGISTRATION

Unlike copyrights and patents, trademark rights can last indefinitely as long as the owner continues to use the mark to identify its goods or services.  Similarly, a federal trademark registration can last indefinitely as long as the owner files the necessary renewal documentation.

 

The term of a federal trademark registration is ten (10) years, with ten (10) year renewal terms.  However, the United States Patent and Trademark Office requires that between the fifth and sixth year after the date of registration, the owner must file an affidavit stating that the mark is still in use.  If no affidavit is filed, the registration is cancelled.  Our firm will handle filing the requisite Affidavits of Use or Excusable Nonuse, Affidavits of Incontestability, Applications for Renewals, and any other documentation necessary for maintaining your federal trademark registration.

 

INTERNATIONAL TRADEMARKS

A United States trademark registration provides exclusive rights to the trademark owner in connection with the goods and services in the United States.  However, it does not provide protection in other countries.  Therefore, it is important to consider trademark registrations outside the United States.  Foreign trademark protection can normally be obtained through two (2) different methods.  First, foreign trademark protection may be sought by instructing one of our foreign associates to file a trademark application in the desired foreign country.  Second, foreign protection may be sought through the Madrid Protocol.  Each method has its advantages and disadvantages and the decision requires a case-by-case strategic analysis based on a thorough understanding of the advantages and limitations of each option.

 

1. MadridProtocol

The Madrid Protocol is an International Treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application (“international application”).  The World Intellectual Property Organization (“WIPO”) administers the Madrid Protocol system from Geneva and many countries around the world, including the United States, are members of the Madrid Protocol.  To view a list of member countries of the Madrid Protocol go to www.wipo.int/madrid/en/members To file an international application through the United States Patent and Trademark Office (“USPTO”), an applicant must have a pending U.S. trademark application (“base application”) or a U.S. trademark registration (“base registration”).  The USPTO will certify the international application based on the information in the base application or base registration.  The USPTO will then forward the international application to the International Bureau (“IB”) of WIPO.  The IB will examine the international application and determine whether it meets the filing requirements of the Madrid Protocol.  If it passes the IB examination, the international application will be published in the WIPO Gazette of International Marks.  Next, the IB will notify the member countries designated in the international application of the request for an extension of protection.  The international application will then be examined by each designated member country.  If the international application meets the standards of the designated member country, then the countries will grant protection of your trademark.  An international registration endures for ten (10) years from the date of registration, and may be renewed for additional ten (10) year periods. The Madrid Protocol offers advantages over directly filing an application with a foreign country.  First, filing through the Madrid Protocol can save you a significant amount of money in legal costs and fees.  For example, if the foreign trademark office accepts the application and registers the trademark after receiving the application, then fees associated with hiring foreign counsel to file the trademark application are saved.  Second, the prosecution of the application typically takes less time.  Because the initial work can be done through the USPTO based on the base application or base registration, delays involving foreign counsel, translations, and across-the-globe time differences can be avoided.  Third, trademark owners can designate new countries at any time in the future by filing a subsequent designations.  Finally, filing through the Madrid Protocol will allow for more efficient record keeping and will help ensure compliance with renewal dates and other post registration filings as it can be done in one location. However, the Madrid Protocol does have its disadvantages.  First, some foreign countries allow for broad descriptions of the goods which would be rejected by the USPTO.  The Madrid Protocol, however, requires that the goods and services description in the international application be no broader than that in the base application or base registration.  Accordingly, if a country would have allowed a broader description of goods or services if the application was directly filed with the country, it may be prudent not to seek protection of the mark through the Madrid Protocol.  Second, the individual foreign trademark registrations remain dependent on the base application or base registration for five years.  Accordingly, if a base application is abandoned or narrowed, each foreign trademark is affected as well.

 

2. Direct Foreign Filing

The second option in seeking to protect trademarks abroad is direct foreign filing.  This option uses local counsel in each country in which protection is sought to assist in filing trademark applications.  We maintain a network of select international associates, with whom we work closely on foreign trademark matters.

 

INTERNET DOMAIN NAMES

With the importance of the Internet in today’s business environment, a significant part of our trademark practice is dedicated to the acquisition, registration and protection of domain names.

 

TRANSACTIONAL MATTERS

We regularly handle a variety of agreements concerning intellectual property, including license agreements and coexistence agreements, and we are experienced in conducting trademark due diligence in connection with acquisitions or other corporate transactions.

 

TRADEMARK LITIGATION

In matters of litigation, we endeavor to resolve the matter in the most cost-effective way possible by attempting to negotiate a settlement.  However, if the matter cannot be resolved outside of court, we will advise you as to your litigation options.  We have experience in trademark opposition and cancellation proceedings and litigate trademark infringement, unfair competition, false advertising, cybersquatting and trademark dilution cases.

 

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