Trademark Generals Overview

Can one register a domain name or web address as a trademark?

Yes. As long as the domain name or web address is used in commerce to identify the source of goods or services. Therefore, by simply reserving the name with a web name registry such as INTERNIC, and posting of a web site, without associating that same name in selling goods and/or services will not be considered sufficient use in commerce for the mark to be registered.

What is the difference between a U.S. federal and a state trademark?

A state trademark registration allows a registrant to enforce his rights against all subsequent users of the name within the state, while a federal trademark is effective throughout the 50 United States. It is recommended that a federal trademark registration be filed if there are sales conducted across state lines or outside the United States.

Why is a trademark search necessary?

The most important reason to do a trademark search is to avoid liability from trademark infringement lawsuits. Also, performing a trademark search to identify potential prior users will prevent one from having to change the name later. A trademark search is important because if other companies have been using an identical or similar name in similar goods previously, they may file a trademark infringement lawsuit against you for your use of the mark. They may seek monetary damages such as lost profits, and in some cases even attorney fees and punitive damages. Another reason to conduct a search is to identify any prior registrants and users so that one may determine if the proposed mark is not available. This saves the business owner both time and money. Furthermore, a trademark search opinion from a competent trademark attorney may be used as a defense in a trademark infringement suit, potentially shielding the user from intentional infringement liability that may result in treble damages and plaintiff’s attorney fees.

What is the difference between a preliminary scan versus a full search?

A preliminary scan is a quick, limited search designed to find out whether there are identical and very similar marks. Generally a preliminary scan searches the U.S. federal and the fifty U.S. states trademark registries. A preliminary scan would reveal whether an identical mark has been filed or registered by others. In contrast, a full search will also reveal what trademark professionals commonly refer to as common law usage. Common law usage is name, slogan, etc. used to identify a business in commerce but are not registered in either the federal or state trademark registries. If time is available, then it is strongly recommended that a full search be conducted before filing a trademark application.

What are the risks if a trademark search is not done?

A trademark owner with prior rights may require one to cease use of the mark, and potentially sue for monetary damages such as lost profits, and other statutory damages such as attorney fees and triple damages. If one is filing an ITU application, and the use of the mark has not commenced, one may argue that the liability is minimal because without actual use of the mark there are no profits. However various courts have ruled that trademark defendants who intentionally ignored advice of their counsel who recommended a trademark search to search for prior users be conducted were held liable for intentional infringement.

Why should one conduct a search when the trademark office does one anyway?

The search performed by the U.S. Patent and Trademark Office (USPTO) is generally limited to marks that are previously filed or registered under the federal registry. Marks that are registered under any of the fifty states’ registries, or have earlier common law usage (such as fictitious business names filed with local governments) that may create conflict with the later chosen mark are frequently not revealed. Therefore, it is possible that even after one obtained a federal trademark registration from the USPTO, it may be cancelled in the future when it turns out that a prior entity has been using the same mark for a similar product or service in the same geographic location.

Must the trademark be used prior to filing the U.S. trademark application?

No. In the United States, one can file an Intent-to-Use (or commonly referred to as ITU) trademark application based on one’s actual intent to use the mark in the near future.

How long does the U.S. federal trademark registration process take?

Normally from 15-28 months, depending on the number of refusals as noted by the examiner, and the number of oppositions filed by third parties after publication. Of course, an opposed mark may take a lot longer depending on the parties’ financial resources, merits of the case and the parties’ willingness to settle.

How long is a U.S. federal trademark registration valid for?

A U.S. federal trademark registration is valid for ten years from the registration date in the U.S. The registration is renewable upon payment of renewal fees and satisfying various statutory requirements. For example, failure to file a statement of continued use between the fifth and sixth year after the registration date may result in an abandonment of the mark.

What is the difference between a word mark and a design mark, such as a logo?

A word mark generally provides the broadest coverage, and prevents others from using the same name on the same products in both non-stylized (block letters mark) or stylized (script or design logo) manner. A design mark prohibits others from using a logo containing similar design elements that may be confusing to potential customers purchasing similar products.

Can a user put the company name, logo and slogan all in one trademark application?

No. This is because, a name, a logo and a slogan are all separate trademarks, and each application is limited to cover only one trademark.

What is the difference between the symbols TM, SM or ® and how are they used?

In the U.S., TM (trademark) and SM (service mark) symbols denote that the owner treats the name as a trademark or service mark respectively – they do not represent that the mark is on file at the trademark office. ® symbol denotes that the mark is a U.S. federally registered trademark. Only a mark that has been registered at the USPTO may use the ® symbol. Premature use of the ® symbol is considered deceptive and may result in a mark being refused registration. It is recommended that the TM (or SM) symbol be applied on new names even before an application is filed because this will give notice to the public and establish the owner’s intention to treat this name, slogan or logo as a trademark.

What is the difference between trademarks and service marks?

Marks used on goods are called trademarks, and marks used to identify services are called service marks. Generally, a trademark for goods appears on the product or on its packaging, while a service mark appears in advertising of the services (such as stationary). Both trademarks and service marks are commonly referred to as trademarks. Frequently, a mark may serve as both a trademark and a service mark.

What are the most common refusals an applicant receives in a federal trademark application?

Some of the most common substantive refusals which a party may encounter are:

• Likelihood of Confusion
• Mere Descriptiveness
• Generic Word
• Indefinite Description

In a likelihood of confusion rejection, the examiner has found prior filed or registered marks that are either identical or confusingly similar in the Federal registry. In order to prevail, an applicant must show that the mark is dissimilar, or if the marks are similar, that the respective goods or services in question are too different to be confused.

What are the obligations of a trademark owner?

• The obligations of a trademark owner are many. They include:
• Maintaining documentation to prove when the mark was first used in commerce.
• Continue using the trademark properly.
• Policing the usage of the mark in the marketplace.
• Filing the required statements in a timely manner and renewing the mark prior to expiration.

In a mere descriptiveness rejection, the examiner has found that a mark is descriptive of the product, therefore the applicant should not be allowed exclusive use of the mark. The applicant will then have to prove that recognition by the relevant public or consumer, or “secondary meaning” has been established in this name, i.e. being well known in its industry, through many years of continued sales and through advertising.

In a generic word rejection, the examiner has found that the mark is simply the generic description of the product (instead of the source), and the applicant should be denied rights because the term is simply generic. For example, choosing the name APPLE for the mark of an apple fruit stand would be considered generic.

The rationale is that if the applicant is allowed exclusive use of a generic term, then the general public and competitors will not be able to compete effectively because they cannot use the generic term of the product in their name (e.g. Abe’s Apple company would not be able to use the word APPLE in its name or to identify the fruit if “apple” had been registered to others for an apple fruit stand.)

In an indefinite description rejection, the examiner has found that the terms used to describe the goods and/or services identified in the trademark application to be too broad or unclear. Frequently an examiner will attempt to provide more definite terms to assist the applicant. For example, the term “computer software” by itself would be considered indefinite, and a more proper term would be “computer software in the field of business accounting.”

** The information is provided By Intellectual Property Law Group as general information only and should not be construed as legal advice. One should seek competent legal counsel to address any specific question arisen in a specific circumstance.