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A
TRADEMARK may be a
word, symbol, design or combination
word
and design, a slogan or even a distinctive sound which
identifies
and distinguishes the goods or services of one party
from
those of another. Used to identify a service, it can be
called
a service mark.
Normally,
a trademark for goods appears on the product or on
its
packaging, while a service mark is usually used in
advertising
to identify the owner' s services.
A
trademark is different from a copyright or a patent. A
copyright
gives protection for an artistic or literary work and
a
patent gives protection for an invention.
Unlike
a copyright or patent, trademark rights can last
indefinitely
if the mark continues to perform a
source-indicating
function. The term of the Federal trademark
registration
is 10 years, with 10 year renewal terms. However,
between
the fifth and sixth year after the date of the
registration,
the registrant must file an affidavit stating the
mark
is currently in use in commerce. If no affidavit is filed,
the
registration will be cancelled.
Trademark
rights arise from either (1) use of the mark, or
(2)
a bona fide intention to use a mark, along with the filing
of
an application to Federally register that mark on the
Principal
Register. A Federal trademark registration is not
required
in order for a trademark to be protected, and a
trademark
may be used without obtaining a registration.
Before
a trademark owner may file an application for a
Federal
registration, the owner must either (1) use the mark on
goods
which are shipped or sold, or services which are
rendered,
in commerce regulated by Congress (e.g., interstate
commerce
or commerce between the U.S. and a foreign country),
or
(2) have a.bona fide intention to use the mark in such
commerce
in relation to specific goods or services.
BENEFITS
OF REGISTRATION
Advantages
of Federal trademark registration :
1).
The filing date of the application is a constructive date
of
first use of the mark in commerce (this gives
registrant
nationwide priority as of that date, except as
to
certain prior users or prior applicants);
2).
The right to sue in Federal court for trademark
infringement;
3).
Recovery of profits, damages and costs in a Federal court
infringement
action and the possibility of treble damages
and
attorneys' fees;
4).
Constructive notice of a claim of ownership (which
eliminates
a good faith defense for a party adopting the
trademark
subsequent to the registrant's date of
registration);
5).
The right to deposit the registration with Customs in
order
to stop the importation of goods bearing an
infringing
mark;
6).
Prima facie evidence of the validity of the registration,
registrant's
ownership of the mark and of registrant's
exclusive
right to use the mark in commerce in connection
with
the goods or services specified in the certificate;
7).
The possibility of incontestability, in which case the
registration
constitutes conclusive evidence of the
registrant's
exclusive right, with certain limited
exceptions,
to use the registered mark in commerce;
8).
Limited grounds for attacking a registration once it is
five
years old;
9).
Availability of criminal penalties and treble damages in
an
action for counterfeiting a registered trademark; and
10).
A basis for filing trademark applications in foreign
countries.
NOTICE
Once
a Federal registration is issued, the registrant may
give
notice of registration by using the "®" symbol,
or the phrase
"Registered
in U.S. Patent and Trademark Office" or "Reg.
U.S.
Pat.
& Tm. Off." Although registration symbols may
not be
lawfully
used prior to registration, many trademark owners use
a
TM or SM (if the mark identifies a service) symbol to
indicate
a claim of ownership, even if no Federal trademark
application
is pending.
THE
REGISTRATION PROCESS
The
Patent and Trademark Office ("PTO") is
responsible for
the
Federal registration of trademarks. When an application is
filed,
it is reviewed to determine if it meets the requirements
for
receiving a filing date. If the filing
requirements
are not met, the entire mailing, including the
fee,
is returned to the applicant. If the application meets the
filing
requirements, it is assigned a serial number, and the
applicant
is sent a filing receipt.
The
first part of the registration process is a
determination
by the Trademark Examining Attorney as to whether
the
mark may be registered. An initial determination of
registrability,
listing any statutory grounds for refusal as
well
as any procedural informalities in the application, is
issued
about four-five months after filing. The applicant must
respond
to any objections raised within six months, or the
application
will be considered abandoned. If, after reviewing
the
applicant's response, the Examining Attorney makes a final
refusal
of registration, the applicant may appeal to the
Trademark
Trial and Appeal Board, an administrative tribunal
within
the PTO.
Once
the Examining Attorney approves the mark, the mark
will
be published in the Trademark Official Gazette, a weekly
publication
of the PTO. Any other party then has 30 days to
oppose
the registration of the mark, or request an extension of
time
to oppose. An opposition is similar to a proceeding in the
Federal
district courts, but is held before the Trademark Trial
and
Appeal Board. If no opposition is filed, the application
enters
the next stage of the registration process.
If
the mark published based upon its actual use in
commerce,
a registration will issue approximately 12 weeks from
the
date the mark was published.
If,
instead, the mark published based upon applicant's
statement
of a bona fide intention to use the mark in commerce,
a
notice of allowance will issue approximately 12 weeks from
the
date the mark was published. The applicant then has six
months
from the date of the notice of allowance to either (1)
use
the mark in commerce and submit a statement of use, or (2)
request
a six-month extension of time to file a statement of
use.
STATUTORY
GROUNDS FOR REFUSAL
The
Examining Attorney will refuse registration if the
mark
or term applied for:
1).
Does not function as a trademark to identify the goods or
services
as coming from a particular source; for example,
the
matter applied for is merely ornamental;
2).
Is immoral, deceptive or scandalous;
3).
May disparage or falsely suggest a connection with
persons,
institutions, beliefs or national symbols, or
bring
them into contempt or disrepute;
4).
Consists of or simulates the flag or coat of arms or other
insignia
of the United States, or a State or municipality,
or
any foreign nation;
5).
Is the name, portrait or signature of a particular living
individual,
unless he has given written consent; or is the
name,
signature or portrait of a deceased President of the
United
States during the life of his widow, unless she has
given
her consent;
6).
So resembles a mark already registered in the PTO as to be
likely,
when used on or in connection with the goods of
the
applicant, to cause confusion, or to cause mistake, or
to
deceive;
7).
Is merely descriptive or deceptively misdescriptive of the
goods
or services;
8).
Is primarily geographically descriptive or deceptively
misdescriptive
of the goods or services of the applicant;
9).
Is primarily merely a surname.
A
mark will not be refused registration on the grounds
listed
in numbers 7, 8 and 9 if the applicant can show that,
through
use of the mark in commerce, the mark has become
distinctive
so that it now identifies to the public the
applicant's
goods or services. Marks which are refused
registration
on the grounds listed in numbers 1, 7, 8 and 9 may
be
registrable on the Supplemental Register, which contains
terms
or designs considered capable of distinguishing the
owner's
goods or services, but that do not yet do so. A term or
design
cannot be considered for registration on the
Supplemental
Register unless it is in use in commerce in
relation
to all the goods or services identified in the
application,
and an acceptable allegation of use has been
submitted.
If a mark is registered on the Supplemental
Register,
the registrant may bring suit for trademark
infringement
in the Federal courts, or may use the registration
as
a basis for filing in some foreign countries. However,
none of the
other
benefits of Federal registration listed above apply. |
