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Your Guide To

U.S. Trademark Law

Learn about the steps you need to take to claim trademark rights and apply for trademark registration. The information here is an overview and does not review every aspect of the law or registration process.

1. Selecting The Trademark

If you already have a mark in mind, you should consult with a trademark attorney concerning its availability for use and registration. A mark that is the generic term for the goods, such as LEAF BLOWER for a leaf blower product, cannot be registered, and cannot function as a trademark. Terms that are “merely descriptive” of the product likewise cannot be registered on the Principal Register without proof that the mark’s primary significance in the minds of consumers is to identify the source of the product. Thus, you might have trouble registering LAWNCLEANER because the PTO may contend it is “merely descriptive” of your leaf blower product. By contrast, a mark such as SMERDRUF for a leaf blower would be registrable, as it is a fanciful term. Likewise, the mark BLUE HERON would be registrable for a leaf blower, as it is incongruous with the product it designates.

Trademark rights in the United States derive from adoption and use of the mark in commerce. By using your mark in commerce as a source identifier for your goods or services, you establish your common law rights to the mark, which exist independent of federal registration of the mark. You obtain additional safeguards for your trademark rights through Federal Registration.

Different marks are afforded different levels of protection under trademark law. Fanciful, arbitrary or incongruous marks are accorded stronger protection than suggestive or descriptive marks. Through consultation with a trademark attorney, you can avoid selection of a mark that is generic or merely descriptive of your goods or services, and thereby establish stronger common law rights while also improving your chances of obtaining federal registration. Consultation with a trademark attorney will also help you to avoid selecting a mark that would be barred from federal registration for other reasons, and thereby save you the expense of application fees and trademark screening and clearance searches for marks that would simply not be registrable.

2. Trademark Screening & Clearance

Your right to a mark is not without limits. If you apply for federal registration of a mark that is very similar or identical to a mark that is already registered, or for which a prior pending application for federal registration has been filed, the trademark examiner at the USPTO will object to registration of your mark on the grounds that it is “likely to cause confusion” with the prior registered mark.

More importantly, if you adopt a mark that is very similar or identical to a mark already in use by another party for similar goods or services, you may be subject to litigation resulting in your rights to the mark being substantially curtailed, or even extinguished. Depending on the outcome of the litigation, you may have to pay damages, forfeit all rights to the mark, and rebuild your name and reputation in the market from scratch under a new brand name. This is why it is extremely important to perform proper screening and clearance before adoption and use of a trademark. Otherwise you expose yourself to the enormous risk of having to give up your mark after years of hard work and advertising expenses promoting your goods or services under the mark.

Bearing in mind the risks associated with the adoption and use of a trademark, once you have selected a mark to designate your goods or services, the next step should be a knock-out screening to determine if there is any prior use of the exact mark for similar goods or services. The knock-out screening saves you money by avoiding the need for a comprehensive trademark search report in the event an exact match is found. If no exact matches are found during the knock-out screening, the next step is to order a comprehensive search report, which ordinarily examines U.S. registrations and applications for federal registration, state registrations, common law marks, business names and domain names. If you plan to use your mark in Canada, or worldwide, the search can be expanded to include the regions you need covered.

Your comprehensive search report should then be reviewed by an experienced trademark attorney, who will draft an opinion letter for you setting forth the mark’s availability for adoption, use and registration. If the opinion letter indicates that the mark is available, you can then move forward with your plans to market your goods or services using the mark. It is important to understand, however, that although comprehensive searching and attorney review can substantially reduce your risk in adoption and use of a trademark, it cannot eliminate such risk. Even after taking the steps above, there is still the possibility of prior use of the mark that was simply not uncovered by the search.

3. Federal Registration

3.1 Preparing The Application

Once you have selected a mark and performed appropriate screening and clearance searches, it is usually advantageous to obtain federal registration in order to enhance your trademark rights. An application for registration includes certain formalities which can best be handled by an experienced trademark attorney.

You cannot register a trademark in the abstract.  It can only be registered for specific goods and services.  In your application you will have to list the goods or services provided in connection with your mark.  Even if you are already using the mark, you can benefit from having an experienced trademark attorney draft the list of goods and services because the USPTO is notoriously finicky when it comes to goods and services listings (and getting more finicky all the time).  If you are making an intent-to-use (ITU) application, you may be tempted to list every potential product or service that you may someday want to provide in connection with the mark. Don’t.  An ITU application cannot register until the applicant provides proof of actual trademark use of the mark.  This is accomplished by filing a document known as an Allegation (or Statement) of Use.  The Statement of Use requires its own filing fees, which will depend on the number of international classes.  When filing the Statement of Use, the applicant will be required to declare that the mark is in use in commerce on all of the goods/services listed in the application.  If this is not the case, the applicant must either delete those goods/services from the application that are not being offered in connection with the mark, or file a Request to Divide prior to filing the Statement of Use.  This is just one of the reasons it’s wiser not to include an extensive “laundry list” of goods/services in an ITU application.

Once you have decided what goods/services your mark designates, you will need to describe them by their common commercial names and list them according to their international classes. It is important to describe your goods or services accurately, as the description of goods and services cannot be broadened once the application is filed.  Marks designating more than one good or service may fall into multiple international classes.  The more international classes your application covers, the higher the application fee.  Thus, if you intend to register your mark to designate a range of products or services, it is important to list each product or service in its appropriate international class, and to submit the correct application fee with the application.

Another potential source of difficulty lies in the drawing of the mark. You need to decide whether you wish to register your mark as a “standard character” or a “special form” drawing.  A standard character drawing has letters depicted in Latin characters and numerals depicted with Arabic or Roman numerals, while a special form drawing may include a picture or logo, or consist of the mark rendered in a stylized manner.  Your trademark attorney can advise you as to which form of drawing will better serve your interests.

Designs or logos submitted for registration must comply with certain formalities. If necessary, your trademark attorney can assist in ensuring that the drawing you submit will be acceptable by having it drafted by an experienced trademark artist who is knowledgeable concerning the formal requirements of the PTO.

Besides the drawing and the identification of goods and services, you will need to indicate the basis of your application – that is, ordinarily, whether it is based on actual use of the mark in commerce, or on a good faith intent to use. If your application is based on use, you will need to submit appropriate specimens of the mark as used in commerce on the goods or in connection with the services.  Consultation with your attorney can help you decide on a filing basis, and which specimens to submit.  You also need to consider the extent of protection you desire. International trademark protection can now be obtained pursuant to the Madrid Protocol, under which U.S. trademark applicants can apply for extensions of protection in many foreign countries.

3.2 Office Actions

By consultation with a trademark attorney prior to and during the application process, you can substantially increase the possibility that your application will proceed without the issuance of an office action, which is a letter issued by the trademark examiner raising objections to registration of your mark. Even apparently simple office actions, such as those requiring a disclaimer or clarification of the identification of goods and services, are best handled by an experienced trademark attorney. Although many office actions amount to an initial refusal to register, often there are strong arguments available to refute the grounds for refusal. Your trademark attorney can perform appropriate legal research and draft a response refuting the refusal to register, where good faith legal arguments are available. Thus, even “likelihood of confusion” and “merely descriptive” or other substantive objections may be successfully overcome by well-crafted arguments drafted by an experienced trademark attorney. Of course, some objections to registration cannot be overcome by even the most skillfully drafted arguments, and it can sometimes be very difficult to persuade a trademark examiner to withdraw a refusal to register.

3.3 Opposition Period

If your application is approved by the examining attorney at the PTO you will receive an email or letter announcing that your mark has been approved for publication in the Official Gazette. Publication in the Gazette gives notice of the pending registration of your mark to third parties who may have reason to oppose such registration – usually because they believe your use of the mark will infringe on their own trademarks. The Opposition Period lasts 30 days after publication in the Gazette. Assuming that no Notice of Opposition or Request for Extension of Time to File a Notice of Opposition is filed during this period, the next communication that you will receive from the PTO will be either a Certificate of Registration (if your application was based on use in commerce) or a Notice of Allowance (if your application was based on an intent to use). If you receive a Notice of Allowance, you will have 6 months to file a Statement Of Use or a Request For An Extension of Time To File a Statement Of Use. Your Statement Of Use, when filed, will need to be accompanied by specimens showing use of the mark in commerce, as well as the appropriate filing fee.

Got it? It’s complicated, and that’s why step one should be to contact a trademark lawyer.

4. Trademark Enforcement

As a trademark owner, it is up to you to police the marketplace for infringing uses, and to take appropriate action to halt such use when you find it. If you do not enforce your trademark rights, they may be whittled away and eventually extinguished through use by third parties of similar designations for similar goods or services. The best way to enforce your rights in your mark is to engage a watching service, which will check uses of your mark or similar marks periodically and notify you when potentially infringing uses are uncovered. Your trademark attorney is ideally suited to handle your trademark watching needs and can help you determine the extent of the watching services appropriate for your situation.

5. Maintaining Your Registration

There are certain mandatory filings that must be made periodically in order to maintain a federal trademark registration. Between the fifth and sixth anniversary of your registration date you will need to file an Affidavit or Declaration of Use, declaring that you are continuing to use the mark in commerce, or Affidavit/Declaration of Excusable Nonuse, explaining that any nonuse of the mark is due to special circumstances and not to an intention to abandon the mark. Should you fail to file the Affidavit of Use or Excusable Nonuse the registration will be cancelled. An application for renewal must be filed within one year before the expiration date of the registration, or within the six-month grace period after the expiration date of the registration. If no renewal application is filed within this period, the registration will expire. Your trademark attorney can assist you in ensuring that these important deadlines are not missed.

Thomas M. Wilentz, Attorney At Law, PPLC, is a New York Trademark Lawyer.

Thomas M. Wilentz is a graduate of Columbia Law School with honors (Harlan Fiske Stone Scholar). He is a member of the American Bar Association, the New York State Bar Association, the New York State Bar Association Intellectual Property Section, and a member in good standing of the bars of New York and New Jersey. Mr. Wilentz has assisted U.S. and international clients ranging from small companies to large multinational corporations in their applications for registration and other trademark matters. Learn More