Trademark FAQ

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Basics: Do I need a patent, trademark or copyright?

If you have an idea for how to manufacture a device or solve a problem, you probably should look to patent law (See the PATENT FAQS), which protects ideas. If you have a creative endeavor (a screenplay, a novel, a work of art), you are probably in need of a copyright, which law protects expressions of ideas and original works of authorship when those original works are reduced to a “tangible medium of expression” (i.e., paper, recorded tape, sculpture, canvas, digital medium, etc.). If you have written a computer program, you may have overlapping protections under patent and copyright law. On the other hand, if you have a catchy business name, brand name, product name or logo, then you probably need to consider trademark law, which is the subject of this FAQ subsection.

What is a trademark?

A trademark is any word, name, symbol or logo used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another. A trademark identifies the source of a particular good. Rolex® would be an example of a trademark for a watch.

What is a servicemark?

A servicemark is also a trademark, but instead of identifying the source of goods, a service mark identifies the source of a provider of services. For example Hilton® is a service mark for hotel services and IN-N-OUT® would be an example of a service mark for restaurant services.

Do I really need a federal registration? Why should I file to register my trademark federally?

Yes, you should file a trademark for any marks or logos you use with your business. Initially, having a federal registration on your logos is a cornerstone for brand protection and recognition among the consuming public. The advent of the Internet and today’s global economy make trademark consideration more important than ever. Even small businesses should consider trademarks now because simply having an Internet presence could place the business in the stream of international commerce. The process of searching and trademarking logos is a good way to identify and pre-empt larger problems of infringement that may surface later. Also, having a trademark registration is a way to constructively prove your ownership of the trademark, it can ensure federal jurisdiction to enforce your rights against those who would “palm off” of your reputation, and it affords you the protection of the U.S. Customs Service against infringing or counterfeit goods. Also, the U.S. registration can serve as a powerful basis for obtaining registration in foreign countries; it can serve as a basis for generating revenues through licensing; and add quantifiable value to your overall business. Ask Mercedes®, GAP®, Harley-Davidson® or Starbucks® about the value of a federal trademark registration.

Should I file a State trademark registration?

A state trademark is never a bad idea, particularly since they are relatively inexpensive, but they do not establish “constructive use” of a trademark nationally as do federal trademark registrations. State trademarks should be used to supplement federal trademarks, which are more powerful.

How long does it take to register a trademark?

A trademark application that proceeds without any complications whatsoever may occur within a year, but it is not unusual for a trademark registration to take more than a year and less than two years. If an opposition proceeding or arguments on the merits complicate the application, longer periods of time might not be unusual. The process can generally be expedited when a trademark attorney familiar with the process and the objections that might otherwise complicate the application assists the client.

How long does a trademark last?

A trademark can potentially last indefinitely. The Coca Cola® trademark has been in use and registered since the late 19th Century! To maintain a trademark, however, the owner must file certain paperwork with the Trademark Office. Namely, between the fifth and sixth year following registration, an owner must file a “Section 8 Affidavit” to prove continued use of a mark. A Section 8 Affidavit must again be filed within the year before the end of every ten-year period after the date of registration. The registrant can file the affidavit inside a grace period of six months after the end of the sixth or tenth year, by paying an additional fee. Additionally, the registrant must also file a Section 9 renewal application within the year before the expiration date of the term (10 year terms). Provided the Section 8 Use Affidavits and Section 9 Renewals are filed at regular intervals, the trademark can last forever.

Do I have any protection if I do not register my trademark? What are “common law” rights?

Applicants who have not registered a trademark, but who have actually used the marks continuously in commerce may have what are known as “common law” rights under federal law and under state laws that protect such uses. It is possible to enforce common law rights, but the rights to enforcement of those rights and damage remedies can be significantly restricted. Under common law usage, there will not be any presumption of nationwide constructive use of the mark and there is no ability to “reserve” rights to future use of a name. A trademark litigant under common law will face significant additional burdens in proving the scope of use and damages, which may geographically limited.

What is trade dress?

“Trade dress” refers to a concept closely related to trademark law, but instead of protecting a name or logo, trade dress refers to the overall look and appearance of a product. Trade dress essentially protects a product’s image, which can encompass colors, shapes, textures, ornamental, and “nonfunctional” features of a product. A primary basis for trade dress protection is found under 43(a) of the Lanham Act, codified at 15 U.S.C. § 1125. Registration and enforcement of a trade dress is possible, but can be complicated because an applicant or litigant may encounter enhanced burdens of proving “distinctiveness” of the product through “secondary meaning” by consumers.

What role does a trademark or servicemark have in franchising?

Franchising is an important way of doing business that frequently involves licensing of trademarks, servicemarks, logos, copyrights and trade secrets. A “Franchisor” will typically license intellectual properties, including trademarks, to a “Franchisee” in exchange for substantial control of a business and continuing royalties for such use. The Franchisee will benefit from brand identification (such as McDonalds® or Subway®) and goodwill among the consuming public. Franchises are an important way that business owners can use trademarks, but franchises are also heavily regulated by taxing authorities, the Federal Trade Commission and State authorities.

What protection do I have with an assumed name, or D/B/A?

Not much. This is a common question and many business owners are shocked to learn that their assumed name, which is usually registered at the county or state level, does not provide the same protections as a trademark registration. More shocking is when a business owner receives a cease and desist letter and is accused of trademark infringement by using a registered assumed name. An assumed name certificate does not necessarily mean that a name or logo is being used as a trademark. An assumed name is technically just an alternate name for a business or person. It may just be a “trade name” rather than a trademark. There is certainly utility in registering assumed names, and there may be some overlap trademark usage, but it would be a mistake to stop with an assumed name, which is no substitute for a trademark registration.

Do I need a trademark search before I register a trademark? Before I use a trademark?

Conducting a trademark search is a really good idea. A good trademark search may eliminate or at least help to avoid an expensive trademark infringement headache later. If a business chooses a name without any form of search, it risks that it will be required to change its name, logos, packaging, signage, domain names later—or worse, to defend a trademark infringement lawsuit. Prior to filing a trademark application, a search can avoid rejections with other similar marks and the need for costly legal arguments in the Trademark Office. People who might oppose a trademark registration may be inclined to file “opposition” proceedings that can significantly increase the cost of or jeopardize obtaining a trademark registration.

What is an “opposition proceeding”?

After a trademark application has been allowed and enters the publication phase of the registration process, anyone in the general public is given the opportunity to register a complaint in the form of an opposition proceeding about why a mark should not register. Oppositions are usually filed by competitors, or by persons who have a similar interest in an allegedly similar use of a particular proposed mark. Opposition proceedings are governed by specific procedures in the Trademark Manual of Examining Procedure (TMEP), and proceed in quasi-litigation fashion to explore the basis of the opposition. An opposition proceeding closely resembles a “cancellation” proceeding, which is procedure used by persons wanting to cancel a trademark that has been registered—outside of the federal court. It is not uncommon that parties in opposition proceedings will wind up as trademark infringements in federal court. It is important to have a trademark attorney assist you with any opposition proceedings. Your product and business names are at stake.

Is it necessary for a lawyer to conduct a trademark search?

It is not absolutely necessary, but it is a very good idea to have an experienced trademark lawyer conduct a search or review professional search results. There are a lot of non-attorney firms that purport to conduct a search, however, it is the legal analysis of the search results that you pay for, and which allows a business owner to make an informed decision about choice of a mark or decision to develop a brand. Only an attorney familiar with the nuances of trademark registration and trademark practice can give you this type if insight. If you are willing to stake brand planning around search results performed by a clerk, who may or may not have any legal training, a $35 search might suffice. But, you may just get the advice for which you pay.

Should I file to register my trademark before I start doing business? What is an “intent to use” trademark application?

Maybe. If you have not started using a brand name, but have one in mind, it may be beneficial to reserve the name by filing an “intent to use” application. As indicated by the name, the “intent to use” application starts the trademark process rolling before you actually use the mark. The Trademark Office will evaluate the mark and if it is entitled to registration, will issue a “Notice of Allowance” conditioned on proof by the applicant that the trademark has been used in commerce. The normal timeframe to file a “statement of use” is within six months of issuance of a notice of allowance, but extensions of time can be purchased.

If I have started conducting business with a trademark, is it too late to register?

Absolutely not. But you should probably file an “actual use” trademark application as soon as possible to protect your use of the mark and reserve the right to use the mark nationwide.

Do I really need an attorney to register a trademark?

No, but be prepared to risk a major headache and an enhanced risk of nonregistration when you get pages and pages of objections and legalese back in a response six to eight months after you file your initial application. Despite noteworthy efforts by the Trademark Office to make the process more user friendly, the reality is that the Trademark-Examining Attorneys who will evaluate your application are lawyers. They speak like attorneys, write like attorneys, and generally respond favorably when dealing with attorneys who understand the nuances of their profession and their specialty. Having a trademark attorney file your application is partially a question of efficiency, and in helping to guide you with decisions during the process that are more likely to result in a meaningful and expeditious registration.

I received a letter from an attorney to cease and desist use of a name or logo – what next?

This is when you need to hire an attorney. Do not send any letters, emails, or make any phone calls without the assistance of an attorney who knows trademark law and more specifically—trademark litigation. Anything you say, including your actions following the letter, can and will potentially be used against you to try and prove a case of “exceptional” conduct and infringement. It is imperative that you file appropriate responses and that you have effective assistance of experienced counsel.

What is trademark infringement?

Trademark infringement is use of name in commerce that creates a “likelihood of confusion” among consumers as to the source of a particular good or service. Federal causes of action for trademark infringement of registered trademarks are brought under 15 U.S.C. § 1114(a). Common law causes of action and “false designation of origin” claims are usually brought under 15 U.S.C. § 1125 and are usually accompanied by assorted state causes of action for “palming off” and unfair competition. Famous trademarks may include Lanham Act and state causes of action for “trademark dilution” by either “blurring” or “tarnishment”.

What remedies are available for trademark infringement?

Trademark infringement plaintiffs are usually concerned principally with stopping infringing use of a trademark. This relief of stopping infringing uses of a trademark is the injunctive side of the law. If emergency circumstances or irreparable harm is being done, temporary or preliminary injunctions may be available to stop infringing uses of a trademark pending a resolution of the case on the merits. Trademark plaintiffs may also be entitled to damages in the form of lost sales, or the defendant’s profits from proven infringing uses of the trademark. In cases deemed “exceptional”, successful plaintiffs who show bad faith infringement may be entitled to attorney fees and enhanced damages. If infringing imports are involved, the owner of a registered U.S. Trademark may be able to stop the infringing goods by and through seizure of goods at points of entry into the country. If your business has been damaged by trademark infringement, the attorneys of Buche & Associates, P.C. are well versed in finding the best avenues for exacting justice from the Courts and against your opponent.

What defenses are available against allegations of trademark infringement?

A case of trademark infringement can be difficult for a plaintiff, both in terms of proving liability and in proving damages—particularly when you have good defense attorneys. There are a variety of defenses that a defendant will want to explore. Initially, a defendant will look to whether the allegedly infringed mark is even properly trademarkable. The age of the claimed trademark, strength of the mark, registration status of the mark, and complications during the registration process can affect the validity of a mark. A variety of challenges may also be raised under federal law to the venue of a particular dispute and the standing of a given plaintiff to bring suit. To establish liability, a Plaintiff will need to show “likelihood of confusion”, which proof must meet federal standards of admissibility under the federal rules of evidence. Assuming a case gets to a fact finder, which may be a jury or judge, a plaintiff will still have to persuade that trier of fact that a likelihood of confusion exists. If it does not, the attorneys at Buche & Associates, P.C. will enjoy presenting your case and defense to a jury or judge. Moreover, even if a plaintiff can prove liability for infringement, damages for trademark infringement typically require the input and opinions of economists that pass muster under federal admissibility standards. Damages must also be directly attributable to infringement, and not the overall success of a defendant in business for reasons unrelated to the infringements. If you or your business has been named in a trademark infringement lawsuit, you need an aggressive defense by experienced IP lawyers. The lawyers of Buche & Associates, P.C. will provide the most aggressive defense to your business available under law.

What is counterfeiting?

“Counterfeiting” is a term reserved for the most egregious acts of trademark infringement. The term speaks to a range of conduct that can invoke both the civil and criminal justice systems. In the most commonly understand nomenclature, the act involves criminal actions of importing “fakes” of trademarked items. Counterfeiting is a major issue for the producers of software and manufactured goods and where true counterfeiting is involved, the U.S. Customs Service, the U.S. Attorney’s Office and U.S. Marshall Service may be involved. However, in recent years, the term “counterfeiting” has also been used extensively in civil courts to obtain statutory damages under 15 U.S.C. § 1117 and to address issues of infringement in the world of “grey goods” and “refurbished goods” bearing the trademarked products of others. As with any trademark infringement, if you have been accused of counterfeiting or alleged to infringe the trademarks of others, you should immediately consult an attorney experienced in the realm of trademark infringement.

What are grey goods?

The term “grey goods” is used to describe trademarked products sold outside of a realm of authorized distribution. Trademarked goods are frequently licensed to be sold or distributed only within certain territories. When the vendor of trademarked goods sells into unauthorized territories or countries, this may be considered either an act of trademark infringement, a contractual violation of a license agreement, or both. Grey goods are particularly problematic where the qualities of goods sold in one territory are different than those licensed to be sold in another territory, but where the products are sold into territories where the goods may be confused.

Do I need to be a U.S. citizen to get a U.S. trademark?

No, this is not necessary, but the citizenship of the applicant will need to be recited in the U.S. trademark application.

Is it possible to get an international trademark? Can I get trademarks in foreign countries?

It is possible, now, to file a Madrid Protocol trademark application based on a United States registration. The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows trademark owners to apply for registration in any of the countries that have joined the Madrid Protocol (61 currently) by filing a single application, called an “international application.” The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system.

Should we consider filing an international trademark application through the Madrid Protocol?

Filing a Madrid Protocol trademark application is a good way to protect your trademark rights internationally. With an increasingly globalized marketplace, and with brand confusion potentially originating from many places outside the United States, comprehensive branding strategies favor filing international applications. The Madrid Protocol application is a good way to protect trademark rights in one or more territories with a centralized filing. Filing a Madrid application can be an efficient way to protect marks in several countries at once, without hiring a local attorney in that country, and with fees in one currency. In addition, additional countries or territories can be designated after initial filing.

Today, there are 84 countries who are members of the Madrid Protocol and you can find a list of the countries or territories here. Among the list of countries or contracting parties are Australia, Austria, Belgium, China, South Korea, Japan, the European Union, France, Germany, Denmark, Netherlands, Norway, Sweden, Spain, Columbia, Portugal, United Kingdom, Ukraine, Russia, Turkey, Switzerland, etc.

If you are an individual or business in the U.S. and have an existing U.S. trademark application or a registration, you are eligible to file a Madrid Protocol trademark application. After the initial filing in the United States, and if the application meets U.S. requirements, it will be certified and forwarded to the International Bureau in Switzerland, who will then register the mark and notify each of the countries or “Contracting Parties” with whom the Applicant wishes to register. The mark will then be examined inside 18 months and protection granted if the mark meets the requirement of registration in that country or territory.

If you are interested in filing a Madrid Protocol application, please contact our firm to discuss a fee quote that matches your particular needs.