Trademark Registration -- The Basics

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Getting Through the Maze:

Registration of a Trademark -- The Basics

It is strongly recommended that legal help be sought before investment of time or money into a mark. A Search should be done to be sure the mark is not already in use by another. This means a preliminary search by counsel and also a proper full trademark, public records and Internet search by a search firm such as Thompson & Thompson.

The passage of the Trademark Treaty Implementation Act of 1999 has wrought many changes to trademark law. THE FIRST STEP in securing ownership of a trademark (this also applies to service marks) is to USE it in commerce or have the INTENT TO USE the mark in commerce soon. In the U.S. it is still use of the mark that initiates the enforcement and exclusivity that are the right to call it your trademark. This concept is becoming weaker and ICANN rules for ADR are meeting the U.S. policy by allowing the Use date to serve as the "test" date to calculate priority. Remember a "mark" is a style, name, logo or device that distinguishes one's goods or services from those of others. Registration does not create a mark; it confers benefits and ease of proof.

Registration on the federal Principal Register provides: (1) Federal jurisdiction for infringement without proof of the required amount in controversy. (a) Claims of common law unfair competition may be asserted with infringement of a registered mark. (2) In federal court, profits, damages and costs are recoverable and treble damages and attorney fees are available. Practically speaking, these are "available," though it can be difficult to quickly obtain more than a needed injunction. (3) It is "prima facie" evidence of the validity of the registered mark, registration, registrant's ownership of the mark, and of the registrant's exclusive right to use the mark. It may also be prima facie evidence that the mark is not confusingly similar to other registered marks. It might prove that the mark has acquired secondary meaning, which is what the "average public" think of when they see, hear or perceive the mark. The color pink is a registered mark for Corning® Insulation, and the word "Windows®" is the famous mark for software. (4) Similarly, a federal registration resulting from a "use" application is prima facie evidence that the mark had been used in interstate commerce since before registration. This is so because the applicant has to declare that the use has been since a date prior to the application. This can save many hours of legal cost. (5) Registration may become “incontestable” after it has been registered and renewed in the 5th year for 6 years continuous use as conclusive evidence of the registrant's exclusive right the mark. (6) A Principal Register registration is constructive notice of a claim of ownership. This means that the "®" tells the world that this is YOURS and they thus they are deemed to "know" you claim ownership, whether they see your mark with its notice or not. (7) For applications filed after November 16, 1989, the registrant is entitled to a “constructive use date,” which has the nationwide effect of "registration" as of the filing date of the application. (8) A Principal Register registration may be used to stop the importation into the United States of articles bearing an infringing mark. (9) A Principal Register registration may be used to defeat someone from taking YOUR mark and making it THEIR URL on the Internet.

See the article U.S. TM Basics, "What's In a Name?" and the series "Trademark Registration for the Rocker" and Trademark vs. Domain Names on the World Wide Web regarding use and its issues. Use of the mark in "commerce regulated by Congress" is the key to securing it.

Once the Use has commenced, or there is a set time frame within which you will soon use the mark, you will want to register it. Registration, among other benefits, will help you to protect your rights to a URL that is the same as the mark. This is quite a benefit when there are 40,000 URLs being sought each month.

The United States Patent & Trademark Office supplies application forms with instructions. You may now more easily self apply using the PTO's E-Teas System. See Links>Government Sites>Patent & TM office. If you are brave enough to try it, you can go to the Links Page and browse the PTO. The process is not always smooth and you are dealing with (sometimes negotiating with) a lawyer - trademark examiner at the PTO. Most of our clients prefer to have us handle it. The process takes about a year to 18 months. It is similar to filing for a permit, and is examined, checked, responded to, information is requested and can be rejected if you unknowingly trigger a rule or Trademark Examining Procedure that puts it at odds with the law. The Law is The Lanham Act, 15 USC Sec. 1051 et seq. Read it if you desire; See the Links page>Government Sites>Patent & TM Office. it will inform you, enlighten and (a word of caution) may confuse you.

So, the next step is the application to register your mark. You must have certain information to fill in the application. This includes your evidence of dates of first use anywhere and in commerce, your mark, logo or drawings, who will own the mark (yourself, your partners or any of them, the corporation, the LLC, etc.). With the application you will send three specimens of the mark as used, a drawing of the mark (words or a logo) and a letter requesting registration on the principal register. Pay special attention to the "GOODS AND/OR SERVICES" section. Be sure to READ THE DECLARATION then date and sign the application on the back, under "Declaration." BE SURE to keep copies of the application, letter, specimens submitted, check and all other things sent to the PTO. We recommend you send it with the green card- Certified-Return Receipt Requested, so you will know they got it, and have proof later should a question be raised.

After the application is completed, and while waiting for the PTO to begin processing, the mark should be shown as "pending" on the federal database. A federal Trademark Examiner may require more, and this will naturally take more time. We like five (3) specimens of your present use of the mark, 1 for the PTO and 2 for the file. Be SURE to send the all of this with a check for $325 (as of January, 2000), made payable to the "Assistant Commissioner of Trademarks". This fee is for each mark and each class claimed. Thus if you have one mark but want to register in 2 classes, send $750.

If you have used the mark on a web site, on goods or advertising DO NOT use the "R-in-a circle" yet. On all printed or Web site pages, on goods, packages for the goods, labels, advertisements for services, goods and on the goods themselves everywhere the mark appears. On some goods the marks might be that of the licensor of your goods, such as merchandising. If software, apply it to the opening screens, on the CD-ROMs, on labels for diskettes, and in credits. On multimedia place it on setup and opening screens, manuals, CD-ROMs, and all other places a user MIGHT see it. Use the notice "™" for trademarks or "^SM" for service marks on all representations of "The Mark^SM". NOTE: see Protection of Copyrights - How to Arm Your Cannon and Stop The Pirates; you must register the copyrights and apply copyright notice: [© 199--, Your Co.]. .

The "USE" registration process requires that you actually be using the mark in interstate commerce (basically, between states or between the United States and foreign countries). The word "use" in this context requires a reasonable volume of retail sales across, preferably, more than one state line and hopefully, nationwide or internationally. See How to Use a mark on the Web.

The ACTION: The application will be reviewed by a Trademark Examiner attorney who may make comments and/or require further information, called an "Office Action". You will have six (6) months from the date of an Action to respond. An Action can take the form of requests for clarification or information. Some Actions are refusals to register because the Trademark Examiner's opinion is that the mark is (1) deceptively or confusingly similar to another registered or pending mark, (2) the mark is "descriptive" of the goods or services, (3) the mark does not serve as a trademark, or it fails to distinguish your goods/services from those of another, and for other reasons. Refusals can be argued, but again, this takes additional effort on our part and cooperation from you. After the review process, the mark will be published for public comment.

The INTENT TO USE registration process requires that you have a bona fide (real) desire and plans to use the mark SOON; such as within a year or so from the application date. The process differs from "use" because, once actual use commences, and depending on where the PTO is in processing the application, you will file an A.A.U. (amendment to allege use) PRIOR TO PUBLICATION ONLY. After publication of the mark, you can file a request for an extension or a statement of use. There is a limit to how many extensions one can get. The first is a "right" almost however as an INTENT TO USE application is pending, an examiner can get tired of extending, for it may appear there is no "bona fide" intent to use it.

The final step before getting back to the processes involved in "Use" applications is to acquire a Notice of Allowance. Once this is processed, the statement of use will place the application on the regular status once again. Note that the "Statement" or the "Amendment" must be accompanied by specimens or examples of how the mark is used.

PUBLICATION After actions have been cleared up and amendments made to the Application, the mark goes on to Publication in the "Official Gazette." After the mark has been published, and if no opposition is filed for 30 days and there is no opposition there is a wait for processing time. Anything can happen, such as opposition by another who doesn't like you claiming "their" mark. Opposition time expires as soon as the end of the 30 days, however an Opposer with time on their hands, can create delay for you and ask for time with in which to file opposition. If anything like this happens or if there is a PTO "Action" we recommend strongly that competent trademark counsel be hired, if not before.

NOTE: At the time you sign the Application, it states in the Declaration on the back, all statements you make are true or you believe them to be true, under penalty of perjury (a crime) including the statement that says "Applicant is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the above identified mark in commerce, whether in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; has a bona fide intent to use the mark on or in connection with...identified goods."

If you have any further questions on this please review other articles, the PTO in the LINKS page or call or e-mail us with a request for more information. BE SURE TO use the Mark consistently with ^TM for goods, ^SM for services and NOT ®, until the mark is registered and the certificate received. This includes on every mention of the name in all advertising and catalogs, labels and the like. Also See: WWW vs TMs and Frustration of TM Owners over Domain Names.

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