Trademark rights in the US are based on use of the mark in commerce to provide goods and services. Proper use of the mark is critical to maintaining a company’s rights.
Scope of Protection and Registrability:
The scope of trademark protection for a particular mark depends upon the “strength” of the mark, which is roughly the mark’s source indicating ability. If a mark is “coined” or “distinctive,” it will be accorded a broad scope of protection against similar names and uses. An example of a distinctive mark would be “Kodak” or “Polaroid.” Nothing about the word Kodak suggests to the audience that the product is film.
Some marks are “suggestive,” in that they suggest a particular property or quality of the goods or services without actually naming or describing them. An example of a suggestive mark is “Roach Motel” for a roach killer product. Such suggestive marks are granted trademark protection, but generally not as broadly as distinctive marks.
Some marks merely describe the goods or services of a particular ingredient or quality. Such “descriptive” terms are not protected as trademarks unless they acquire a “secondary meaning,” which means that the public associates the goods or services bearing the mark with a particular source or origin. For instance, “US Steel” is a descriptive mark that has acquired a secondary meaning.
Finally, certain terms are the names of the objects or services themselves. These “generic” or “common descriptive” terms are never capable of functioning as trademarks and are accorded no protection. The policy underlying this rule is that no one person should be allowed to acquire a monopoly on the English language. An example of a generic name would be the word “aspirin,” which was once a federally registered mark that became generic by virtue of its common public association with the goods rather than with the producer of such goods. More recently, the term “murphy bed,” once a validly registered trademark, was declared generic and, hence, no longer protectable.
Unique/coined marks are the strongest and therefore easiest to register. If a mark is descriptive, then there is a greater chance that a similar mark already exists and/or that the United States Patent and Trademark Office (USPTO) would refuse registration. Thus, unique/coined marks are more likely to proceed through the examination process with fewer issues, while weaker marks may carry more risk and be more expensive to protect and defend.
The first step in the trademark process is to identify what goods and/or services the company will be providing. Since trademark rights are specific to goods/services being provided, and the trademark office requires the application to cite them, this is one of the more important preliminary steps. The USPTO requires applications to describe the goods/services with some specificity (i.e., “computer software” or “educational services” are considered too broad, but “computer software for analyzing scientific data” or “providing classes in the field of science” would likely be accepted). There are ways a company can use a description of their goods/services to make the trademark office more likely to accept.
The USPTO categorizes the goods/services into one or more of 45 different “classes.” This categorization is primarily for administrative purposes, though it can affect the costs, since the filing fees are per class.
Though not required, conducting a full US trademark search as an initial step is often recommended. Such a search will determine whether a third party already holds existing rights in the mark, thereby confirming the availability and registrability of a mark and/or exposing any potential risks. This knowledge, in some cases, may help determine whether or not a proposed mark is worth pursuing based on the search results and analysis.
If cost is an issue, then a company may wish to merely conduct a preliminary search, which is less expensive and time consuming then a full search. Companies will often do this type of search when considering a number of alternate marks, in order to narrow down the choices. However, a preliminary search merely screens for identical state and federal trademarks. It is not as comprehensive in scope as a full search and does not cover any common law uses that a full search would include.
Once the search is complete (if a company chooses to conduct one), then the trademark application can be prepared for the company’s review and signature. The company will have to pay a filing fee per class, in addition to the legal costs associated with preparing the filing and the application. Additional costs may be incurred for additional steps that may or may not arise, such as responding to office actions, defending against oppositions, etc. If no major obstacles arise, the complete registration process generally takes about one to three years, depending on how soon a company begins using the mark. This timeframe may be shorter or longer depending upon the issues encountered during the prosecution of the application. The following is a brief overview of the trademark process:
Examination. When an application is filed, the USPTO compares the mark with previously registered marks to determine if a possible conflict exists. The USPTO Examiner will also examine the other application materials to make sure that they are in order and fully comply with all applicable regulations. The Examiner will then issue an official examination report, called an Office Action. The company will be notified of any office actions issued and any possible conflicts, as well as any perceived defects in the application materials. A written response addressing the Examiner’s objections must then be filed within six months. This prosecution phase will continue until the Examiner either agrees that the mark is registrable or refuses to accept further arguments in support of registrability.
Publication. Once the trademark application is approved, the Examiner will pass the application on for publication purposes. During the 30 days following publication, any third party that feels it might be harmed by the application has the right to file a Notice of Opposition.
Opposition. If a party files an opposition to the application, and the conflict is not resolved between the parties, an opposition proceeding will commence. An opposition is similar to litigation, and can be very costly and can last for many years. However, if no one opposes the mark, this phase is not applicable.
Notice of Allowance or Acceptance. If no third party oppositions are filed, the application is accepted for registration about two to three months after the publication period ends. If the application was filed on the basis of use (i.e., the mark was in use at the time of filing and evidence of use at that time was provided), then the application will now proceed to registration and a registration certificate will be issued.
Otherwise, if the application was filed on an intent-to-use basis, then a Notice of Allowance will be issued providing the company with six months to begin use of the mark and to file a Statement of Use (along with evidence of use). If a company has not yet commenced use, it may obtain a series of six-month extensions of time, up to a maximum of three years. There are fees per class to file a Statement of Use and additional fees per class associated with each extension request (for each six-month extension). Therefore, if the application is filed on an intent-to-use basis rather than a use-basis, additional costs may be incurred in connection with filing a Statement of Use and/or extensions. Once an acceptable Statement of Use has been filed with the USPTO, the application will then proceed to registration.
The above information pertains only to US trademarks. Since trademark rights are afforded on a country-by-country basis, a company must file trademark applications in each country where its business interests lie, in order to be able to claim rights there. Furthermore, many foreign countries afford rights based solely on registration, as they do not consider common law rights. However, most countries recognize a six-month priority period. This means that a company can file trademark applications within six months after its US filing, and the foreign applications will be retroactive back to the filing date of the US application. If a company does not take advantage of the priority filing within six months, it can still file foreign applications at a later date (without a priority claim), once its finances permit.
Most foreign countries do not require use of the mark, as the US does, in order to register a mark. Instead, registration is granted, and then a third party can challenge a company’s registration if it does not use the mark in that country within three years (in some cases, five years) after registration.
Companies may also wish to enroll in a watch service — an annual, subscription-based program that alerts the company when third parties file trademark applications similar to a company’s mark.
A trademark registration generally lasts for 10 years, at which time it can be renewed. In the US, proof of use must be submitted along with the renewal, and must also be submitted at the six-year mark. Thus, continual use of a mark is required in order to maintain rights. However, as long as a company continues to use the mark and renew its registration, the mark can last indefinitely.
For a startup company, it is generally best to conduct a search and/or filing an application as soon as possible for its primary brand (i.e., name and/or logo). As the company grows, the company can then file additional applications for additional marks (e.g., product names, taglines and slogans, etc.), to cover additional goods or services, or file in additional countries as a company expands geographically.
