PROTECT YOUR BRAND WITH A FLAT-FEE TRADEMARK REGISTRATION PACKAGE

Protecting your brand’s identity (a name, logo, or slogan) is easy and affordable with Creative Vision Legal’s flat-fee trademark registration package.

TRADEMARK MYTHS DEBUNKED

Here are some “myths” related to trademark law, along with the facts to dispel them (all of these are questions from past clients):

“I just need to run an internet search to find out if my trademark is available.”
Unlike a basic internet search, comprehensive trademark searches scour (1) USPTO records, (2) the internet, (3) databases of periodicals, (4) state and local business listings, and (5) state trademark registrations. Failure to uncover preexisting users of your proposed mark can lead to rejection of your trademark application, or worse (i.e., litigation). The most critical step in the firm’s trademark registration process is its trademark clearance search and analysis. Creative Vision Legal uses Thomson Reuters software solutions to uncover any uses of your trademark by others in the U.S. or internationally (if needed). The firm’s trademark attorney will review your trademark search results and render an opinion letter outlining the prospects for registering your trademark.

“Once I file my trademark application, the USPTO will automatically register my trademark because the application is just a formality.”
WRONG! The USPTO website is very clear about this: “[r]egistration is NOT automatic and requires legal review by an examining attorney.” (emphasis added). The examiners at the USPTO have discretion to deny a trademark registration for a variety of reasons, including unavailability of your proposed trademark because of someone else’s prior filing or registration.

Trademark examiners don’t rubber stamp applications. They perform their own search in the USPTO’s records for your proposed mark. This reality makes Creative Vision Legal’s trademark clearance and analysis process all the more vital for the success of your trademark application. Importantly, if your application is rejected, your filing fee will not be refunded by the USPTO.

“The government makes sure nobody else infringes my registered trademark and will tell me if that happens.”
This would be a nice perk to registering your trademark. However, it is NOT TRUE. The USPTO makes sure on the front end that no one else receives a federal trademark registration for an identical or similar mark to yours. But after your mark is registered, YOU are responsible for discovering possible infringements and enforcing your trademark rights. Ultimately, “the USPTO is not an enforcement agency, so you will be responsible for pursuing any infringing users.”

“I can put the ® symbol next to my trademark whenever I want.”
Only registered trademarks can have the ® symbol next to them. In fact, placing the ® symbol next to your unregistered trademark can have unintended and dire consequences, like a fraud inquiry by the USPTO. If your trademark is in use but is still unregistered and you want to tell the world that it’s yours, use a ™ symbol instead, which is legal.

OVERVIEW OF TRADEMARK LAW

What is a trademark?

A trademark identifies the source of particular goods and distinguishes them from others in commerce. Service marks perform the same function for providers of services. A trademark or service mark can be something as simple as a single word or combination of words like a slogan, a name (for example, a product name or a band’s name), or a logo or symbol. Alternatively, a trademark can be as off the wall as a color, a melody, or even the shape of a bottle (something known as “trade dress”).  Basically, as long as the identifier (word, symbol, etc.) is used in connection with a good or service, it can serve as a trademark, service mark, or trade dress.

How do I get a trademark?

You get trademark rights by using your trademark in commerce, with or without registration. “Use in commerce” basically means that you are using your trademark on your goods via packaging, labels, tags, or displays where the goods are sold or transported. Your trademark can also be used in commerce when it is used to sell or advertise services (known as a “service mark”).

Without registration, your use of a trademark in commerce gives you common law trademark rights in whatever geographic area your goods or services are offered. Common law trademark rights are valid, but not as robust as having a trademark registration. Registering your trademark gives you federal trademark rights, which are governed by the Lanham Act (also known as the “Trademark Act of 1946”). For federal trademark registration, your goods or services must be offered in more than one U.S. state or territory, or in the U.S. and at least one other country.

If you are not currently using a trademark in commerce but think you will in the future, you can also get limited trademark rights by filing an “intent to use” trademark application with the USPTO. Subsequently, if your application is approved by the USPTO, you will have to prove use in commerce within 3 years. After proving use in commerce, you would then receive full trademark rights.

However, if your trademark could potentially cause confusion with another trademark that is already registered or applied for with the USPTO (a “2(d)” rejection), you could run into “likelihood of confusion” problems. “Likelihood of confusion” can result in rejection of your trademark application or a lawsuit from the senior user of a trademark that is confusingly similar to yours.

Benefits of Federal Trademark Registration

Getting a federal trademark registration gives you many valuable benefits over relying on common law trademark rights. These benefits include:

Constructive Notice

Federal trademark registration gives notice to the public (known as “constructive notice”) that you have the exclusive right to use your trademark nationwide. Specifically, once your trademark appears on the principal register, constructive notice occurs. After five continuous years of use following your trademark registration date, your mark becomes incontestable. After becoming incontestable, your mark can only be challenged by defendants you sue under limited circumstances.

Injunctions with a Nationwide Reach

With a federal trademark registration, you can sue in federal court. Then, a federal district court can issue an order on your behalf forcing the infringer, wherever they are in the U.S., to immediately stop using your trademark.

Profits, Costs, and Treble Damages

Success in a federal trademark infringement case, if you have a federal trademark registration, gives you more options for damages. A court may award you (1) the defendant’s profits from the infringing use of your registered trademark, (2) the actual damages you suffered, and (3) your costs in bringing the action. The court may also in exceptional cases award you treble (3x) damages and reasonable attorneys’ fees.

FEDERAL TRADEMARK REGISTRATION PROCESS OVERVIEW

SUBMITTING A TRADEMARK APPLICATION

Federal trademark registration applications fall into two categories when initially filed:

• Section1(a) applications, based on a mark’s actual use in commerce, or;
• Section1(b) applications, based on your intent to use your mark in commerce in the future.

Besides determining which category your application falls under, here are some other issues to consider before filing your trademark application, all of which are dealt with during your initial consultation with Creative Vision Legal’s trademark attorney:

“What should I register? A word or slogan, a logo, or both?”
Registering the word or combination of words of your trademark (known as a “standard word mark”) generally yields the best protection for your brand. This is because your trademark registration won’t be limited to one particular graphic representation. With standard word mark protection, any unauthorized use of your trademark would be an infringment regardless of how it is used by the infringer. However, for maximum protection it may be advisable to register both the standard word mark and your logo.

“What class(es) of goods/services does my trademark belong to?”
There are 34 distinct classes of goods and 11 classes of services recognized internationally for trademarks. Your trademark application must identify the class(es) that you are seeking registration in. Each class of goods/services requires a separate fee with the USPTO. For example, registrations for your band name trademark might be possible in class 9 for the streams or CDs your band is selling and in class 41 for your live performances.

“When did I first use my trademark or service mark in commerce?”
When filing a section 1(a) trademark application based on actual use in commerce, you have to identify the approximate date you first began using your mark in interstate commerce (i.e., in two or more U.S. states or territories). Further, your trademark application must also contain at least one specimen of your trademark being used in commerce. For services, a screenshot of your website with a description of your services in proximity to your service mark will usually suffice. For goods, pictures of store displays of your goods with your trademark on them can satisfy the specimen requirement.

AFTER SUBMITTING A TRADEMARK APPLICATION

After your trademark application, fees, and specimen are submitted, you receive an application serial number, and an examining attorney begins reviewing the application, which can take a few months. The progress of your application can be tracked online via the “Trademark Status and Document Retrieval” system. Barring any Office Actions (letters or communications from the examining attorney seeking clarifications or corrections or in the extreme, a refusal of registration), your trademark application will be approved after review for publication in the USPTO’s Official Gazette.

In the case of trademarks already in use (section1(a) applications), if nobody steps forward during the 30 days following the date of publication to oppose your trademark registration, then the USPTO will usually issue a registration certificate 11 weeks after the date of publication in the Official Gazette. For intent-to-use registrations (section1(b) applications), a “notice of allowance” will issue from the USPTO about 8 weeks after the date the mark was published, if there is no opposition.

You then have 6 months from the date of the notice of allowance to begin using the mark in commerce and submit a “Statement of Use” (SOU) form with a $100 fee to the USPTO, or to request a six-month extension of time to file a statement of use. Extension requests require an additional $150 fee with the USPTO. An examining attorney reviews the SOU and if no basis for refusal exists or additional requirements are not needed, then the USPTO will issue a registration, usually within 2 months after approval of the SOU.

POST-REGISTRATION MAINTENANCE OF YOUR TRADEMARK

After your registration, maintenance is required to keep your trademark registration enforceable. To that end, certain documents must be filed periodically with the USPTO or you will lose your trademark registration.  For example, a “Section 8 Declaration of Use or Excusable Nonuse” must be filed, along with a $100 USPTO fee per registered class, between the 5th and 6th year after the registration date. Around the same time as the Section 8 Declaration is due, an optional Section 15 Declaration of Incontestability may be filed (with a $200 USPTO fee) which gives a trademark owner certain valuable rights (see “Benefits of Trademark Registration” section above). Finally, between the 9th and 10th year after the registration date and every 10 years after that in which you continue to use your mark, you must file a combined “Declaration of Use or Excusable Nonuse” and “Application for Renewal” which requires $500 total in USPTO fees.