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TRADEMARK TUTORIAL
A trademark is a distinctive indicator, including a name, word, phrase, logo symbol, design, image, or a combination of these elements, that identifies and distinguishes the source of goods. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service. The terms "trademark" and "mark" are generally used to refer to both trademarks and service marks. The owner of a trademark is granted a bundle of legal rights, including the right to exclusive use of the mark in relation to the products or services for which the mark is registered. One policy underlying the trademark system is to protect the consuming public from confusion as to the source of goods and services. Another underlying policy is to protect the owner of a trademark from offending uses of the same or similar marks that tarnish the mark or dilute the strength of the mark.
REGISTRATION WITH THE UNITED STATES PATENT & TRADEMARK OFFICE (USPTO)
Under common law, rights in a mark are established upon legitimate use of the mark. However, federal trademark registration on the Principal Register provides certain advantages, including:
- Constructive nationwide notice to the public of the claim of ownership of the mark;
- A legal presumption of ownership of the mark and the exclusive right to use the mark nationwide in connection with the goods and/or services listed in the registration;
- Extension of trademark protection beyond the specific goods and services in use in commerce - extending to related goods and services;
- The ability to bring an action concerning the mark, such as an infringement action, in federal court;
- The use of the U.S. registration as a basis to obtain registration in foreign countries; and
- The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
The symbols “TM” (for a trademark) and “SM” (for a servicemark) may be used to give notice to the public of your claim to rights in the mark without registration with the USPTO. However, the symbol ® may only be used after the USPTO has registered the mark on either the Principal Register or the Supplemental Register.
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TRADEMARK REGISTRATION & MAINTENANCE PROCESS
A timeline of activities involved in the TRADEMARK REGISTRATION PROCESS and POST-REGISTRATION REQUIREMENTS is provided in the following figure. CLICK on the FIGURE to open a FULL-SIZED VIEW.
SELECTING A TRADEMARK: STRENGTH & REGISTERABILITY
To function as a trademark, a mark (name, word, phrase, logo symbol, design, image, or combination of these elements) must be sufficiently distinctive to distinguish the source of the associated goods. Marks are generally divided into five classifications based upon distinctiveness. The strength and registerability of a mark is determined by these classifications. The five classifications, in order of most distinctive to least distinctive, are:
- FANCIFUL.
- ARBITRARY,
- SUGGESTIVE,
- DESCRIPTIVE, and
- GENERIC
Fanciful, arbitrary and suggestive marks are inherently distinctive (capable of identifying the source of associated goods and services). These marks are generally registerable without any distinctiveness-based objection and are afforded a high degree of protection. Descriptive marks are not inherently distinctive and must acquire secondary meaning (as an identifier of the source of the associated goods and services) to be protected. Generic terms lack sufficient distinctiveness to function as trademarks and may never be registered.
Fanciful marks are the strongest marks. Descriptive marks are the weakest registerable marks. Generic terms are not protected at all.
FANCIFUL: Fanciful marks are entirely made up words with no dictionary meaning. KLEENEX is an example of a fanciful mark.
ARBITRARY: Arbitrary marks are common words used in a context that has no meaning with respect to the associated goods or services. APPLE, as used in connection with computers, is an example of an arbitrary mark.
SUGGESTIVE: These marks generally suggest some quality or characteristic of the associated products or services. These marks require mental gymnastics to associate the word with the products or services. IVORY, as used in connection with soap, is an example of a suggestive mark.
DESCRIPTIVE: These marks describe the associated goods or services. Clients often favor these marks because the consumer will automatically know what the associated goods or services are, without the use of any imagination, and without the necessity of large marketing and advertising investments to create the association of the mark to the associated goods and services. However, descriptive marks are not automatically entitled to registration (on the Principal Register). It must be shown that the descriptive term has acquired a secondary meaning in the relevant market – that secondary meaning being the source of the associated goods and services. This secondary meaning may be shown by evidence including industry literature, extent of advertising, consumer surveys and amount of sales. In addition, once a mark has been in use in commerce for five years, it is presumed to have acquired that secondary meaning.
Until the mark has acquired secondary meaning, the mark may be registered on the Supplemental Register. While not offering all of the advantages of the Principal Register, registration on the Supplemental Register does provide the following benefits:
- Allows an infringement action to be brought in federal court.
- The mark is on file with the USPTO, and can be cited by the USPTO against a later application by a third party to register a substantially similar mark.
- The registrant can subsequently apply to have the mark registered on the Principal Register upon acquiring secondary meaning.
- The symbol ® may be used to provide notice that the mark has been registered (on the Supplemental Register) with the USPTO.
Later, after either demonstrating acquired secondary meaning or after five years of use in commerce, the mark may be registered on the Principal Register. HOLIDAY INN is an example of a mark that is merely descriptive, but has acquired secondary meaning as a particular source of the underlying service.
GENERIC: Generic terms describe the associated goods and services by their common names. Generic terms are never registerable because registration would provide an unfair advantage - essentially prohibiting others from competing in the market. For example, if a party were allowed to register the term SODA in connection with a carbonated beverage, then no one else could use the word "soda" to describe their competing carbonated beverage.
Note, however, that adding an adjective to a generic term can result in a registerable mark. For example, WINDY CITY SODA is the registered trademark of a producer of carbonated beverages. In addition, the same term, soda, has been registered in association with such diverse goods and services as office furniture, handbags, computer software and air shipping services - none of which is described in any meaningful way by the term "soda."
A once-distinctive trademark can become generic when, in the minds of a substantial majority of the public, the mark denotes a type of product rather than a specific source of the product. ASPIRIN, which was originally a brand name, lost its capacity to function as a trademark when its common usage became a reference to a product containing the active chemical ingredient of aspirin rather than identification of the source of a good.
MAINTAINING A TRADEMARK: POST-REGISTRATION DECLARATIONS & RENEWALS
Once a trademark is registered, the USPTO requires the filing of certain Declarations and Renewals to maintain your trademark registration. If these Declarations and Renewals are not timely filed, the USPTO will declare the trademark registration expired or cancelled.
WARNING: The USPTO will not provide notification of approaching Renewal or Declaration dates. The trademark owner is responsible to meet these requirements.
HEPNE®LAW CAN REVIEW YOUR DECLARATION & RENEWAL REQUIREMENTS AND FILE THESE DECLARATIONS ON YOUR BEHALF
E-mail your inquiries to HepnerLaw
Email: inquiries@hepnerlaw.com
Phone: (949) 280-4800Declarations, Renewals and associated filing dates are identified in the following table.
DECLARATION
TIME TO FILE
NOTES
Section 15 Declaration of Incontestability (RECOMMENDED to protect your trademark)
After 5 years of continuous use after registration
Incontestabiliy provides the highest level of trademark protection under federal law. Incontestabiliy is conclusive evidence of:
1) validity of the registered mark,
2) registration of the mark, and
3) the owner’s exclusive right to use the mark with the identified goods and services.
This declaration protects your registration from challenge based upon key registration requirements:
1) lack of inherent or acquired distinctiveness,
2) confusing similarity to another mark, or
3) the mark is merely functional.Section 8 Declaration of Continued Use (MANDATORY)
Between the 5th and 6th year anniversaries of the registration
Failure to file a Section 8 Declaration will result in cancellation of the registration.
Combined Declaration of Continued Use and Incontestability under Sections 8 & 15 (RECOMMENDED)
Between the 5th year and 6th year anniversaries of the registration
Because both the Section 8 and Section 15 filings come due between the 5th and 6th years, the USPTO accommodates an efficient combined filing.
Combined Declaration of Continued Use and Application for Renewal under Sections 8 & 9 (MANDATORY)
Between the 9th and 10th year anniversaries of the registration, and each successive 10 years after registration
Failure to file a Section 9 Application for Renewal will result in expiration of the registration.
Because both the Section 8 and Section 9 filings are due at each ten year anniversary of the registration, the USPTO accommodates an efficient combined filing.
Richard J. Hepner
Attorney & Counselor At Law
Juris Doctor - M.B.A. - B.S.M.E.Voice: (949) 280-4800
FAX: (866) 663-2635 inquiries@hepnerlaw.comCLICK HERE to contact HEPNE®LAW
by e-mail at inquiries@hepnerlaw.com