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Trademarks – A Primer – Part Two Registration

>When I first began practicing Intellectual Property law – that was in the Pleistocene era – I wondered why it was so important to register a trademark with the US PTO.  After all, the strength of a trademark comes from its use, the more you use it, through marketing and just plain selling goods or services using the mark, the stronger it gets. Then I started doing trademark litigation, enforcing trademark rights against infringers, and I learned.  A host of benefits come with registration, many of which make enforcement easier and less expensive.

Maybe you’ll never have to enforce your trademarks.  Maybe your products or services won’t be very successful, and competitors, i.e. copycats, won’t see any reason to copy your products or start using a mark that looks or sounds just like yours.  How to stop competitors from copying the design of your products is a subject for the future.  I’ll get to it, but you’ll have to wait a little while.  Copying trademarks or snuggling up to them as close as you can, is the problem we’re dealing with today, although I will come back to it again soon when we discuss how you stop it.

Right now, it’s how can you enhance your position, should the day come when you have to act.  You know, when your products or services are actually successful, and copycats decide to move in on your markets.  And if you manufacture in China, the Chinese factory will be selling copies of your products on Amazon the moment they realize the product is selling well.  I’ve seen it way too often.  Keep in mind, by one recent estimate, trademarks account for, on average, one-third of business enterprise value.

So, what value does trademark registration offer?  Consider:

• Upon the filing of an application to register, your mark immediately appears in the Trademark Office database.  Thus, anyone seeking to adopt a new trademark that is similar to yours will find your mark listed there, along with all the details about when you started using it, what you use it for, and, if registration has been granted, become incontestable, or been renewed, it will say so.

• Alerts an Examiner to the existence of our mark.  Should a new applicant try to register a confusingly mark for a similar use, the Examiner will prevent it from happening.

• Expands the reach of your mark by treating it as if it is being used nationally.  Otherwise, if someone else comes along and registers a confusingly similar mark, you will be for the most part locked into the geographical area in which the mark is already being used.

• Provides nationwide notice of ownership of the mark as of the registration date, which prevents others from being able to claim that their subsequent adoption of the mark was made in “good faith.”

• Serves as evidence of the validity of the mark – very helpful in court – and that you are the exclusive owner of the mark for the goods and services listed in the registration, which helps, together with incontestability – which comes after five years of use, to discourage others from using a confusingly similar mark.

• Grants the right to use the ® symbol in connection with the registered goods and services, which gives the product more marketing cache and lets competitors know that you are serious about protecting your rights.

• Grants the right to sue in federal court, and, in light of recent case law, obtain treble damages and reimbursement of attorney fees in certain cases.

• In the case of actual counterfeiting, entitled you to statutory damages, eliminating the need to prove damages in court, which can be expensive.

• Provides a basis for registration in foreign countries, should you decide to sell internationally.

• Empowers US Customs and Border Protection to block imports that infringe your mark or are counterfeits, once the registration has been recorded with Customs.

Simply put, for a minor cost, you derive enormous benefits.  So how do you register a mark?  First, you need to know that there are two basic types of trademark registration applications.  There is an application for a mark that is already in use by the owner and there is an application for a mark the owner intends to use, called an ITU application.  They are treated pretty much the same during most of the registration process.

An application to register a trademark is filed with the Trademark Office of the US PTO and is processed by a trademark attorney examiner in that office.  When an examining attorney takes up a trademark application file, he or she will first review the application, make certain there are no obvious mistakes, determine whether there are any issues with the statement of use – there often are, and then conduct a search of the US PTO trademark database, checking for similar registered trademarks with similar uses.

After the Examiner completes his analysis of the file and his search of the Trademark database, he or she will send an Office Action to the attorney who filed the application.  Typically, the applicant is given 6 months to respond, although the sooner the response is filed, the sooner the registration is likely to be allowed.

Determining how to respond to the Office Action requires consideration of the Examiner’s concerns, as well as the importance of the mark to you.  Should the Examiner find a similar mark with a similar use – and similarity can be wide-ranging – the examiner will typically issue an Office Action denying the registration because of a likelihood of confusion.  There are numerous ways to dispel the Examiner’s concerns, which is why you hire an IP attorney in the first place.  The owner of the mark always has a choice, he or she can walk away and give up on the attempt to register the mark.  He or she can stop using the mark or change it enough to try again with a new application, especially if there is a threat that he may be sued and forced to stop because of a likelihood of confusion.  More often. he or she can simply correct the problems with the application, often by sampling restating or narrowing the use to which the mark will be put.

Once the Examiner has determined to allow the registration, either because he or she has no objections to the application or because you have overcome the objections, the Examiner will send the mark to the “Official Gazette,” a weekly publication of the Trademark Office.  Once the mark is published in the Gazette, persons who believe they may be damaged by the registration of the mark may file an opposition to the registration.  An opposition is similar to a proceeding in a federal court but is held before the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process, which may take a few months.  If the registration application was for a mark already in use, the mark will pass to registration, and you will receive a certificate of registration.  If the application was for an ITU, and no opposition is filed, or one is unsuccessful, the US PTO will issue a Notice of Allowance in a few months.

At that point, you have six months from the mailing date of the Notice of Allowance to begin using the mark.  If you do, you can file a statement of use during that six-month period.  If you don’t, you can request a six-month extension of time to file a statement of use during the first period.  Up to four extensions may be sought, but keep in mind, each one requires a fee.

You can also divide the application and allow some of the uses to remain in ITU status, while filing a statement of use on the products with which you are already using the mark. You may also delete goods that you have decided not to offer under the mark, or which simply won’t be ready in time.  Eventually, you will hopefully have filed a statement of use, together with a specimen showing the use, for each of the uses in the application, or you will have deleted uses or allowed the remaining portion of the sues to go abandoned when you either fail to file another extension request or run out of allowable extensions.

After five years on the principal register of the US PTO, your registration must be renewed.  Typically, this involves the filing of what is known as a Section 8 and 15 declaration that basically states that you have been using the mark continuously on the goods which the registration covers for the preceding five years.  Once this declaration is accepted, the registration becomes incontestable and the number of ways the mark can be cancelled shrink to basically non-use or fraud in obtaining or maintaining the registration.


 


The registration must be maintained at the ten-year mark and every ten years thereafter by the filing of a section 9 declaration that states that you have been using the mark continuously since the last declaration was submitted on the goods for which it is registered.

In our next article, we will discuss abandonment of the mark by non-use, fraud, and cancellation.