What is a Trademark?
A trademark is any word, name, symbol or device used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A trademark can consist of words, a design or logo, or even a shape, color, sound or smell. Protecting your “mark” can be difficult and expensive to enforce in your trade area, because you bear the burden of proving ownership and validity of your trademark.
How are trademarks created?
Quite simply, trademarks are created as soon as you use a mark to identify your goods or services to consumers. In fact, you can’t get a registration from the United States Patent and Trademark Office or from any state trademark office without using the mark first.
If trademarks are created when I use them, and if the PTO can’t keep me from using a mark, why do I need a federal trademark registration?
Federal trademark registrations provide benefits that are otherwise unavailable to unregistered or “common law” marks. The following are some of the most significant benefits of federal trademark registration.
If my trademark application is refused registration by the Patent and Trademark Office, does that mean I can’t use my mark?
No. The USPTO cannot tell you that you cannot use your mark even if it refuses to register it. However, sometimes the USPTO needs to be convinced that it has made the wrong decision. Everyone has at least two chances, and sometimes more, to argue a refusal. The first chance occurs after the initial “non-final” Office Action. The second occurs on appeal after a final office action. In some cases the USPTO can be convinced to reverse its decision. If the USPTO does not reverse its decision to register your mark, then that does not mean you can’t use the mark if you otherwise want to. In fact, if your mark is refused because it is merely descriptive or primarily merely a surname you will have to use it for at least five years before you can obtain a federal registration on the Principal Trademark Register. If your mark is refused because it is confusingly similar to another registered mark or because it creates a false association with some other person or company, then using the mark could make you liable to that other person or company for trademark infringement, dilution or unfair competition. Your use of such a mark would be at your peril. If your mark is deceptive or scandalous or offensive, you can still use it, but consumers may refuse to buy your products or services because of its deceptive, scandalous or offensive connotation.
What is the difference between a trademark and a service mark?
A trademark is any word, name, design, product feature or any combination of these things which you use to identify your goods to consumers and to distinguish your goods from those made by others.
A service mark is similar to a trademark except that instead of identifying a tangible object, the mark identifies a service such as a restaurant, bank, dry cleaner, investment broker or real estate agency.
What is the difference between state and federal trademark registration?
State registrations are only enforceable within the border of the particular state where the trademark or service mark is registered. A Texas state trademark registration, for example, cannot be enforced by a New York court to stop an infringement which is occurring in New York. On the other hand, a Texas company could enforce its federal trademark registration against a New York infringer in a New York court. The filing fees for state registrations vary from state to state. Many states, including Texas, charge $50 to file an application. However, federal registration will generally give you the right to use the mark in all 50 states and all U.S. territories. If you spent the same amount of money that it costs to file a federal application by filing applications in individual states you would likely only have coverage in as few as 6 states or perhaps as many as 10 states but certainly well less than all 50 states.
Are there any advantages to having a state trademark registration as opposed to a federal registration?
The main advantages to state registration are that state registrations can generally be obtained in a matter of days or weeks as opposed to a year or more with the federal government. This is particularly helpful in situations where you have a real or immediate threat of a competitor infringing your mark in a state where you do business. Furthermore, federal registrations can only be issued if you are doing business in either “interstate” or “international” commerce, not merely “intrastate” commerce or business within a single state. But the PTO and the courts are generally very liberal in determining what is “interstate” commerce. For example, a single hot dog stand located on a federally funded highway in the middle of nowhere could be considered to be engaged in “interstate” commerce even if most of the hot dog stand’s regular customers live within a few miles of the stand. If you do business over the Internet, then it is virtually impossible not to be engaged in interstate commerce since everyone in the U.S., and the world for that matter, can access your website to order goods or services.
Can I get a federal trademark registration before I actually start doing business?
The short answer is no; however, the Federal Trademark Act allows you to file an application based on “intent-to-use.” Simply put, as soon as you have decided upon a mark, you can file an application before you begin doing business, or actually use the mark. If your mark is approved by the PTO, and if no one opposes it when it is published for opposition, you will be issued a “Notice of Allowance” which is a document that means that your mark is otherwise registrable. You would then be given six months to begin using the mark in commerce and file an allegation of use by submitting sample labels or packages showing the mark in use in connection with your goods or advertisements for a service business. You can ask for an extension of time to file an allegation of use every six months after the issuance of the Notice of Allowance. A maximum of five extensions requests are allowed. You must absolutely begin use within 3 years of the issuance of the Notice of Allowance or your application will be automatically abandoned and all money spent on filing the application to that point will be lost. Once your allegation of use is filed and accepted by the PTO, your mark will be registered.
With the extra expense and risks associated with an intent-to-use application, why would I want to file an intent-to-use application?
The “intent-to-use” procedure allows you to gain priority in a mark as to third parties before you actually begin using it and it does not matter whether the other party starts using the mark first so long as their first use began after the filing of your federal application. If the mark is one in which you have made a substantial commitment to develop, then an “intent-to-use” application would be very advantageous in allowing you to continue developing your marketing plans without worrying about a competitor getting wind of your mark and beating you to the marketplace first.
Can I file an “intent-to-use” application for a state trademark application?
The vast majority of states do not have an “intent-to-use” procedure. Therefore, it is not possible to obtain priority or rights in a mark or name prior to actually using the mark or doing business in a particular state. The fact that you have being doing business in one state for many years will not allow you to obtain a registration in another state until you actually start selling goods or services in the other state.
Are all words, names or logos registrable with the PTO?
No. There are some types of marks which cannot be registered at all and there are some that cannot be registered until they “acquire distinctiveness,” that is, consumers recognize the name as indicating source in a particular company rather than simply describing a function or characteristic of the goods or services.
What are some examples of marks that are not registrable at all?
What are examples of marks which are not immediately registrable, but may become registrable?
What are the standards for determining “acquired distinctiveness”?
It varies depending on the type of mark listed above. Generally, long use in commerce, usually for at least five years, and widespread advertising and promotion of the mark will create acquired distinctiveness. However, the more ornamental or descriptive the mark is, then the PTO has the discretion to require longer use than five years as well as significant expenditures of money in advertising and promoting the mark to consumers in order to prove acquired distinctiveness.
Can a mark acquire distinctiveness in less than five years?
Yes it may be possible to shorten the time with extremely heavy advertising and promotional expenses, but the type of expenses required would likely run into the millions of dollars and extensive and objective consumer surveys would likely be needed to support the claim.
Am I completely out of luck if my marks have not yet acquired distinctiveness?
Not entirely – just because a surname, descriptive or ornamental mark has not acquired distinctiveness does not mean you cannot get some type of federal registration. Such marks can be put on the Supplemental Register. This is a second register maintained by the PTO which is designed specifically for these marks.
What is the difference between the Principal Register and the Supplemental Register?
The benefits of a Supplemental Registration are not as great as with a Principal Registration. For example, there is no presumption of ownership or nationwide exclusivity in the right to use the mark as there is with the Principal Register. You cannot use a Supplemental Registration to block imports which contain otherwise infringing marks. However, you can use the ® symbol and you can use the Supplemental Registration as a basis for obtaining a registration in a foreign country.
What is trademark dilution and how different is it from trademark infringement?
Trademark dilution is a concept which, by federal statute, now protects “famous and distinctive” marks from being “diluted” by allowing its use by someone else on unrelated goods or services. Unlike infringement, which requires a showing that consumers would likely confuse the source of the goods or services because of the similarity in the marks, dilution does not require any showing of likelihood of confusion or that the goods or services of the parties are even directly competitive. For example, KODAK is a famous and distinctive mark primarily for camera film. If someone were to use KODAK as a trademark for cream cheese it does not matter that cream cheese and film are not competitive products or that consumers would likely think that KODAK cream cheese was made by the film company in order for a court to find the mark has been diluted.
What does “famous and distinctive” mean for purposes of the federal anti-dilution statute?
Fame does not necessarily equate with distinctiveness and distinctiveness does not necessarily mean a mark is famous. For example, the Ringling Brothers and Barnam and Bailey Circus slogan “The Greatest Show On Earth” is undoubtedly famous, but because of its highly laudatory meaning and the fact that thousands of others have used similar slogans to describe their unrelated goods and services, e.g., “The Greatest Bar On Earth” or the “The Greatest Snow On Earth,” does not make the circus slogan distinctive. Likewise, a surname that has been used in commerce for 75 years and has been heavily promoted to consumers may have acquired distinctiveness, but that does not necessarily mean that it is also famous.
What if I can’t show that my mark is famous and distinctive on a national scale?
About 30 states have their own anti-dilution statutes which are enforceable in the particular state. Many state dilution statutes are highly similar to the federal statute. The key difference between the application of the federal and a state anti-dilution statute is that under the federal dilution statute, fame and distinctiveness must be shown on a nationwide basis or at least within a large geographic region of the United States. State dilution statutes only require fame and distinctiveness in the particular state which may be easier for many trademark owners to prove.