Trademarks

A trademark is a word, phrase, symbol or design—or a combination of these—adopted and used by a manufacturer or merchant to identify its goods and distinguish them from those manufactured or sold by its competitors. The symbol used to identify a trademarked product are the letters TM presented in upper case, superscript—™. In recent years, colors (such as John Deere green), sounds (such as the National Broadcasting Company's use of distinctive chimes), and scents have also been registered as trademarks. Service marks, meanwhile, are identical to trademarks except that they identify and distinguish the source of a service rather than a product. The term "trademark," however, is commonly utilized to refer to both trademarks and service marks.

Whereas exclusive rights to other items of intellectual property such as copyrights and patents eventually expire, trademark rights can last indefinitely, provided the owner of the mark continues to use it to identify its goods or services. The initial term for a federal trademark registration is ten years, but the owner has the option to renew for additional ten-year terms. The Patent and Trademark Office (PTO), however, has stipulated that between the fifth and sixth years of the initial registration term, the registrant must file an affidavit confirming the need to keep the registration alive. If no affidavit is filed, the registration is canceled, and other companies can pursue the mark for their own use if they so desire.

OTHER TYPES OF TRADEMARKS

In addition to trademarks and service marks, there are two other kinds of marks that generally fit under the generic "trademark" umbrella: certification marks and collective marks.

Certification Mark

A certification mark is a mark used in connection with products or services in order to certify the region of origin of those products and services, or to certify some other characteristic of those products and services. Other characteristics may be 1) the origin of the materials used to make a product; 2) the procedures used to assure the quality of the product or service, or 3) the union membership of those involved in the manufacture of a product or service. Examples of certification marks include the UL symbol of Underwriters Laboratories (for quality), "Made in the U.S.A." designations (for place of origin), and the Motion Picture Association of America's movie ratings (for service).

Collective Mark

Collective marks are trademarks or service marks used by members of an association, cooperative, or other group. Organizations as diverse as the National Rifle Association, the Big Ten Athletic Conference, and the Sierra Club all utilize collective marks.

TRADEMARK RIGHTS

Trademark rights to an identifying word, phrase, symbol, design, sound, or color can be secured either by actually using the mark in commerce or by registering the mark with the Trademark Office, a division of the Patent and Trademark Office (PTO). "Federal registration [with the PTO] is not required to establish rights in a mark, nor is it required to begin use of a mark," noted the PTO in its booklet, Basic Facts About Registering a Trademark. "However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide." In addition, owners of federal registration for a trademark often enjoy an advantage if legal disputes over use of a trademark arise.

The "Right to Register"

According to the Patent and Trademark Office, the ultimate right to register a trademark generally belongs to the first party—whether it is a small business or a large corporation—to use a trademark "in commerce" or file a trademark application with the PTO. ("Commerce" in this situation means commerce regulated by the U.S. Congress, i.e., interstate commerce or commerce between America and another nation; use of a trademark in purely local commerce within a state does not qualify as "use in commerce.")

The "Right to Use"

As the PTO itself admitted in its Basic Facts About Registering a Trademark, "the right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement." As indicated above, possession of federal registration can be a valuable weapon if a court fight erupts over use of a disputed trademark.

TRADEMARK SEARCHES

A small business owner who has come up with a trademark that he or she wishes to use may want to conduct a trademark search before going to the trouble and expense of sending an application to the PTO. Infringing on another's marks can often happen unintentionally, without copying the marks outright or even being in direct competition with their owner. All that is necessary is to use the same mark or a similar mark in a way that may cause consumers some confusion as to the source or sponsorship of the goods or services. A trademark search can uncover whether the mark (or a similar one) has already been registered with the PTO.

APPLICATIONS FOR FEDERAL REGISTRATION

There are two primary ways in which a U.S. applicant can apply to register his or her trademark with the PTO, depending on whether or not the mark has already been used in commerce. An applicant who has already begun using the trademark in commerce may file with the PTO based on that use. This is commonly known as a "Use" application. If an applicant has not yet used the trademark in question in commerce, but has an honest intention to do so, he or she may file an "Intent-to-Use" application with the PTO. A third option, which can only be used by applicants from outside the United States, allows the applicant to file in the United States based on an application or registration made in another country.

Applications for federal registration should include the following:

• PTO Form 1478—this application, also known as "Trademark/Service Mark Application, Principal Register, with Declaration," should be carefully completed and fully signed.

• Drawing of the mark—this drawing must be included on a separate piece of paper; the specifications for the drawing—and the paper itself—are quite extensive, so make sure that the drawing adheres to all guidelines. If a separate drawing page is not included, then the application will be returned to the applicant without a filing date.
• Filing fee—For current information on the application filing fee for trademarks, call the Patent and Trademark Office or consult its Web site ("Intent-to-Use" applications are more expensive). If the full amount of the fee is not included in the application, then the application will not be considered. Fees are not refundable, even in instances where trademark ownership applications are turned down.
• Specimens—These are actual samples of how the mark is actually used—or will be used—in commerce. For products, examples of acceptable specimens are tags or labels attached to the goods, to the containers in which those goods are packaged, to displays associated with the goods, or to photographs of the goods showing use of the mark on the goods themselves. For services, examples of acceptable specimens include signs, brochures about the services, advertisements for the services, business cards or stationery showing the mark in connection with the services, or photographs which show the mark as it is used either in the rendering or advertising of the services. Each application must include three specimens, but they do not necessarily have to be of three different uses.

PTO Acceptance and Rejection

The federal registration of trademarks is governed by the Trademark Act of 1946 (and amendments thereof), the Trademark Rules, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure. When the PTO receives an application for trademark registration, it checks the application in accordance with the above-mentioned guidelines. First, the Office reviews it to see if it meets the minimum requirements for receiving a filing date. If it meets those requirements, the PTO assigns it a serial number and sends the applicant a notification of receipt. If the minimum requirements are not met, the entire thing (including the filing fee) is returned to the applicant.

Applications that pass this first stage are then reviewed by an examining attorney at the PTO, who determines if there are any reasons why the mark cannot be registered. A mark may be turned down for any of the following reasons:

• The mark too closely resembles a mark already registered in the PTO.
• The mark's capacity for causing confusion among relevant consumers with goods or services associated with other parties.
• The mark includes a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased president of the United States during the life of his wife, except in instances where the widow has given her written consent to such use.
• The mark includes the flag or coat of arms or other insignia of the United States or any of its states or municipalities, or of any foreign nation, or any simulation thereof.
• The mark has immoral, deceptive, or scandalous connotations.
• The mark disparages or falsely suggests a connection with persons (living or dead), institutions, beliefs, or national symbols.
• The mark brings such persons, institutions, beliefs, or national symbols into contempt or disrepute.

Objections raised during this stage of the review are sent along to the applicant. Remedies that might make the mark acceptable are sometimes suggested in these letters as well. The application will be deemed abandoned if the applicant does not respond within six months of the mailing date of that letter. In cases in which the applicant's response does not sway the PTO examiner to give approval for the mark, the applicant can turn to the PTO's Trademark Trial and Appeal Board.

If there are no objections, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. At this point, anyone who believes he or she may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but it 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 application is approved and no opposition is filed, applicants may have a little or a lot to do, depending on their situation. For applicants who filed "Use" applications, most of the work is over. The PTO will register the trademark and issue a registration certificate a few months after the date the mark was published in the Gazette. Applicants who filed based on their intent to use the trademark down the line, though, need to attend to several matters to make sure that their rights do not slip away. In situations where it has approved an "Intent-to-Use" application, the PTO issues a Notice of Allowance approximately 12 weeks after the mark was published. After receiving the Notice, the applicant has six months in which to either use the trademark in commerce and submit documentation of that use or request a six-month extension. If the documentation of use—called the Statement of Use—is filed and approved, then the PTO will issue the registration certificate for the trademark.

Even if the PTO grants an applicant a trademark registration, business experts warn that such registration only provides protection to the owner in the United States and its territories. "If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws," warned the PTO in its Basic Facts About Registering a Trademark. "The PTO cannot provide information or advice concerning protection in other countries."