Trademarks Basics

January 15, 2020

The following blog breaks down some of the basics of trademark law, including important terms and courses of action in the process of registering and protecting your trademark, service mark and/or trade dress. Please be advised that the following blog is not to be taken as a comprehensive analysis or complete list of all matters pertaining to trademark law. Rather, this blog serves as a simplified compilation of information pertaining to the world of trademarks and trademark law in general. This blog is in no way meant to be a substitution for legal advice, which should always be considered when using and/or registering a trademark, service mark and/or trade dress.

BEFORE FILING YOUR APPLICATION:

Understand the difference between a “trademark,” a “service mark” and a “trade dress”

1. A “trademark” can be any symbol, word, phrase, design, image, sound, color or even fragrance that is used to indicate the source of goods and to distinguish the goods sold or made by one person/entity from another. Common examples of well known trademarks include APPLE (for computers), COCA-COLA (for beverages) and NIKE (for apparel)
2. A “service mark” is similar to a trademark, except that service marks are used to identify the source of services, rather than goods. An example of service mark is VERIZON WIRELESS (services related to the mobile phone industry).
3. A “trade dress” is a product’s distinctive physical appearance, including its size, shape, color, design, packaging and texture. Note that any functional elements of a trade dress are non-registrable. An example of a trade dresses is the HARD ROCK CAFE (the restaurant’s distinctive decor)

Consider the “distinctiveness” of your mark

Certain marks can be considered “inherently distinctive” (immediately convey to consumers the source of the goods as opposed to describing the goods themselves), making registration easier to attain. A mark might be considered inherently distinctive when the mark’s “intrinsic nature serves to identify a particular source.” The following are examples of inherently distinctive marks:

1. Arbitrary marks: an existing symbol or word chosen to serve as a mark, but has no logical relation to the goods. Arbitrary marks neither describe nor suggest any characteristics of the product (e.g. APPLE for computers).
2. Fanciful marks: similar to an arbitrary mark, yet constituting a word that is entirely made up (e.g. KODAK for copying/scanning services).
3. Suggestive marks: a mark that suggests, but does not describe, the nature or characteristics of the product. (e.g. MICROSOFT is suggestive of software for computer products).

Other marks might “acquire distinctiveness” (or “secondary meaning”) by becoming known to the general public as an indicator of the source of a product, rather than the product itself, due to the mark’s continued use in commerce. Marks that must acquire distinctiveness to be registrable include:

1. Descriptive marks: a mark that describes a characteristic or quality of the product (e.g. WINDOWS for windowing software). Descriptive marks might be able to acquire distinctiveness (or secondary meaning) over time.
2. Merely descriptive marks:
   • Primarily Geographically Descriptive Marks: (e.g. CALIFORNIA JEANS)
   • Primarily a Surname: (e.g. MCDONALDS)
3. Marks that cannot acquire distinctiveness and cannot be registered:
   • Deceptively Misdescriptive marks: (e.g. SOLID GOLD APPLES)
   • Obscene or disparaging marks (e.g. WASHINGTON REDSKINS)
   • Product designs/functional marks (e.g. HEAT DISH)
   • Generic marks: marks that generically identify a product (e.g. E-MAIL)
     • Genericized: a mark might lose its protective status if it becomes so common place that it can no longer be used as a source identifier (e.g. XEROX is now commonplace for making copies)

Do clearance work in order to verify that your mark is available for use/registration

1. Log into the United States Patent and Trademark Office (USPTO) Trademarks database: http://www.uspto.gov/trademarks/index.jsp
2. Select the Trademark Electronic Search System (TESS)
3. Search for similar marks to the mark you wish to register
4. After such searching, if you, or your representative performing the clearance, is comfortable with the intended use and/or registration of your mark, proceed to the filing stage of your mark

AT THE FILING STAGE OF YOUR MARK:

It is recommended that you use an attorney

1. A lawyer or other representative can file a trademark application on your behalf
2. A benefit of delegating this task to a representative is that the representative will have the responsibility of managing your trademark application and policing your mark thereafter, thereby keeping you apprised of this process along the way.
3. You and/or your representative can log into the USPTO Trademarks database (http://www.uspto.gov/trademarks/index.jsp) and select the Trademark Electronic Application System (TEAS) and file a trademark application.

Determine if you are filing on an “Actual Use” or “Intent to Use” Basis

1. Actual Use – marks that have already been used, sold and/or distributed in commerce
2. Intent to Use – marks that have yet to be used, sold and/or distributed in commerce, but the owner has a bona fide intent to use such marks in commerce

Determine what goods and/or services you offer/intend to offer

Determine the Nice classification and descriptions are proper for your mark. For a list of acceptable descriptions, visit the S. Acceptable Identification of Goods and Services Manual (ID Manual) at http://tess2.uspto.gov/netahtml/tidm.html.

Log into TEAS and register on the Principal Register or Supplemental Register

1. Principal Register: reserved for marks that are inherently distinctive or have acquired distinctiveness. See below for the benefits of a Principal Registration.
2. Supplemental Register: reserved for non-distinctive marks that are capable of acquiring distinctiveness but have yet to do so.
   • Marks that can be filed on the Supplemental Register include:
     • descriptive marks that are capable of acquiring distinctiveness,
     • surnames,
     • geographic terms, and
     • nondistinctive, nonfunctional trade dress.
   • A Supplemental Registration grants its owner the following rights:
     • The right to use the registered ® symbol when the mark is used with the products or services listed in the registration; and
     • The ability to block later-filed applications for confusingly similar marks used on related goods and/or services.
   • A Supplemental Registration has the following limitations:
     • It does not convey the presumptions of validity, ownership and exclusive rights to use the mark that attach with a Principal Registration;
     • It cannot be used to stop importation of counterfeit products;
     • It can never become incontestable; and
     • It cannot be converted into a Principal Registration. Rather, the owner of the Supplemental Registration can file a new application on the Principal Register. If the trademark has acquired secondary meaning, it could be granted a Principal Registration, including all of the rights and protections afforded by a Principal Registration.

AFTER FILING YOUR TRADEMARK APPLICATION:

You and/or your representative should monitor your filing for updates from the USPTO

1. Typically, a Trademark Examining Attorney (TEA) at the USPTO will review your application. It typically takes roughly three months before such a review process occurs.
2. The USPTO will frequently send you and/or your representative communications, including:
   • Office Actions (requests by the TEA to ensure your mark is worthy of registration)
   • Notifications of Pseudo Mark assignments (variations of your mark given by the TEA, which is meant to making the searching of your mark easier to find on TESS)
3. It is your responsibility to ensure such communications are responded to in a timely fashion. Otherwise you risk abandonment and termination of your application.

ONCE YOUR TRADEMARK IS REGISTERED:

Benefits of federal trademark registration attach to your trademark, including the following:

1. Right to use the federal ® symbol on your trademark
2. Nationwide priority giving your mark protection across the entire country
3. Ownership and exclusive rights to use the mark (if Principal Registration)
4. A presumption of validity attaches to your trademark (if Principal Registration)
5. Incontestability upon five years of consecutive use after Principal Registration
6. Ability to contest cybersquatters who improperly use your trademark as their domain name
7. Ability to register your trademark in other countries using the U.S. Priority Date
8. Assistance from U.S. Customs to stop foreign counterfeiters and illegal/unauthorized importation of your trademark (if Principal Registration)
9. Ability to sue in federal court for any infringement of your trademark
10. Ability to recover treble damages and attorney’s fees/costs in federal court (usually, this is only meant for “willful” infringement of your mark)

You and/or your representative must police your mark for potential infringers

1. It is your responsibility to make sure that others do not infringe your trademark rights
2. Infringing use of a trademark can include the following:
   • Infringement: the infringing mark/use of that mark is likely to cause consumer confusion as to the source of your trademark. For infringement to occur, it typically must be shown that the infringing mark is confusingly similar to your trademark (i.e. the marks are confusingly similar in name/sound and sufficiently related in goods/services).
   • Dilution: the infringing mark/use of that mark is likely to impair the distinctiveness of your trademark by whittling away its ability to serve as a source identifier of goods. For dilution to apply, your trademark must be “famous” (i.e. it must be “widely recognized by the general consuming public as a designation of goods and services of the mark’s owner”). Examples of famous marks include COCA COLA and KODAK. Dilution can exist in two forms:
     • Blurring: when an infringing mark “blurs” a mark from association with only one product to signify other products in other markets (e.g. “Kodak sunglasses”)
     • Tarnishment: when an infringing mark loads a disreputable meaning on a trademark, and thereby harms the reputation of that trademark.
   • Unfair competition and false designation of origin: when the infringing mark/use of that mark is likely to cause confusion about the “origin, sponsorship, or approval” of goods, services or commercial activities. In other words, the infringing mark/use of the mark creates a false impression of sponsorship between you, the trademark owner, and the infringer.

You and/or your representative might have to take necessary actions to protect your trademark rights, including:

1. Sending Cease and Desist (C&D) Letters to infringers of your mark. In such letters, the typical request is that the infringer stops committing such infringing use of your mark. C&D letters are usually the first step taken to stop infringers.
2. Filing legal claims. This is usually the subsequent step to sending C&D Letters. Legal claims can include injunctive relief (e.g. barring the infringer from further use of your mark/the infringing mark) and damages (e.g. monetary rewards, including lost profits caused by such infringing mark/use).

Eventually, your trademark could attain “incontestable” status

1. A trademark that has been used in commerce for five consecutive years following Principal Registration can qualify for “incontestable” status.
2. When a mark becomes incontestable it means, among other things, that the validity of the mark cannot be challenged.

DISCLAIMER: The information on this blog and website is for information purposes only. Schrager Legal PC disclaims any intent to provide legal advice to, or to form an attorney-client relationship with, any person based on viewing the information on this blog and/or website. Any information on this page does not constitute legal advice or a guarantee, warranty, or prediction on the outcome of your legal matter.

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