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Trademarks : How they work | How to avoid problems | Help Registering |
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Before filing a trademark application you absolutely need to know and understand the following:
For those facing a trademark problem such as trademark opposition, office actions, and other issues, I help resolve problems with trademarks. A trademark is the foundation of your company or brand. All know a brand name as an asset, fewer recognize the liability (which is greater). Startup or in business for years, reading this is critical to staying in business. Read this page first or skip to Trademark Basics and return to this page afterwards. Losing your brand name... far easier than most believe. Trademarks (brand names) are taken away all the time -
and involuntarily abandoned.
It makes no sense to cut corners in your name - ever - though in my practice I see it all the time. I help develop safe and sound names, yet spend more time helping people that did not do so, to save their brand names. I'm not talking about brand failure, next level, brand gone. What others don't mention can result in being put out of business, and also sued. You may be
reading this before or after you had a trademark problem. I won my own cases, and believe my success with others I've helped (helping Attorneys and non-Attorneys) is due to my business, trade customs, marketing, general knowledge, and life experiences since 1979. Perhaps for the reasons above, and my tenacity, I see things attorneys don't. I help avoid trademark problems from initial trademark application, and as the application matures, considering business, industry, and trademark issues at the same time. A rare yet necessary combination. My services may augment yet are not intended as a substitute for advice from a knowledgeable lawyer licensed to practice trademark law. Since
brands rely on trademarks, I've become a useful
brand
consultant who helps people understand the the connection between
marketing and trademark safety. "In the bud' still may mean years, since trademark problems can take years to resolve, yet years less than the typical attorney's approach. With my
ability to assess risk and reward, I also help settle trademark disputes
in the smartest possible manner - with the longest lasting results. Many trademark-related problems are the result of a poorly considered initial trademark application that leads to a trademark opposition. See trademark opposition FAQs. Trademark problems rarely make the News, and those facing a trademark problem rarely want it publicized - especially since the company or brand name is at stake - either by USPTO Office Action, or Petition to Oppose or Cancel, or a Civil Action. Many trademark problems are settled with confidential agreements no outside party can see.
With the
'ice off your front steps', people can't easily slip and fall. Please
carefully read this page first. Then contact
me about your trademark. Quick links on this page:
Basics of trademarks and the trademark process. Trademarks and service marks (Marks) are used to identify your 'goods and services' to consumers, and to differentiate your brand from others. Obtaining a trademark registration, and maintaining your rights in a mark, are not as most people immediately assume. This page helps explain. A trademark registration *is not* a license and never was, it's more like a permit or notice. It's critical that you understand the following about trademarks and brands:
Quick links to trademark problem pages: What is a trademark?
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Most common reasons that marks are refused trademark registration: 1. the proposed mark consists of or comprises immoral, deceptive, or scandalous
matter Can one trademark a slogan, positioning statement, or tag line? No, not as a rule, unless the slogan is the brand - or in very rare cases where, like 'Just Do It', the slogan has become (not becomes) so famous that most know it and the brand it relates to. Nike is one of the few with its 'Just Do It' slogan. In most cases a slogan is not a brand or source identifier and therefore a slogan does not meet the requirements for a trademark. Can one trademark a symbol? Yes. An example is the Nike 'swoosh'. However, the symbol must be made famous most often through extensive marketing, advertising and promotion. Can one trademark a design? Yes.
For example, a certain bottle design can be protected as 'trade dress'.
The original coke bottle is a good example of trade dress. Other
features can be as well. After your trademark is registered, you can use the ® symbol, not before. It is against the law to use the ® symbol unless you have received the official trademark registration certificate (which typically takes a few years). A trademark application begins the process towards a trademark registration, however, an application is not a registration. Why
obtain a trademark registration?
Trademark law is likely one of the most confusing and fuzzy areas of law, since it is constantly evolving, and subject to change. Top An interesting case: 'escalator' was once a trademark. However, 'escalator' was improperly used by its trademark holder. The term 'escalator' became 'genericized', meaning that it became the term that most think of in relation to moving stairs. Had the trademark holder referred to its product as 'Escalator brand moving stairs', rather than 'an escalator', the trademark would likely be valid today. There are many similarly interesting and unusual cases involving trademarks. A Trademark application can be filed and processed at any time, before or even years after a Mark is used in interstate commerce. A trademark application as 'intent to use' (or ITU) can be filed before a Mark is used in interstate commerce, however, an ITU must be followed up by a bona fide statement of use in interstate commerce in order for a trademark registration to be issued. Trademark registration is not a guarantee of trademark protection.
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Trademark office (USPTO) is a division of the Department of Commerce. The mission of the USPTO, like the
Department of Commerce, is fair trade.
The
first step: Your Mark is your intended trademark. It can be a word or phrase, or a design, or both. Trademarks also can be for other aspects which are not covered here including 'trade dress' which involves the appearance of your packaging. At uspto.gov you will be able to search for other existing trademarks that 'may' cause your trademark application to be refused. ! Searching for your exact same Mark and not finding your exact same Mark registered or applied for at uspto.gov is no guarantee that you will own a trademark, that the trademark office will accept your application, or that it will not later be challenged in a trademark opposition. A trademark must not cause 'likelihood of confusion' in the marketplace. Therefore, you will not be allowed to take a 'famous name', change a letter or add a hyphen, or slightly alter its spelling, and expect to have your Application go through to registration. In fact, in some cases, if your Mark even seems to sound similar to a registered trademark, or have similar elements, if that other registered trademark has achieved 'significant fame', your Application may be refused - or opposed. When you file your Application, you select a category or 'class' of goods and services provided by the USPTO. Within this 'class', you include a written description of the goods and services (G&S) that your mark is used in connection with. The 'G&S' is important in that it must be highly descriptive yet offer the broadest protection.
The
initial review by the trademark examiner at the USPTO: This Trademark Examiner (a Trademark Attorney of the USPTO) assesses your Application, and scrutinizes every detail. While it may have been simple to apply online... ... the examiner (about 6 months after trademark application is filed) is now going to scrutinize your application as if filed by a trademark attorney. The USPTO examiner must follow the laws, and treat every trademark applicant (trademark attorney, general attorney, non-attorney) as a trademark specialist. The trademark examiner examines your trademark application in its entirety, reviewing and assessing every detail. Though your trademark application may have taken you minutes to apply online, and you received a confirmation, everything you stated in the trademark application was stated under oath when you filed. It is not easy to change dates and details afterwards, and often not possible at all. The confirmation of application only means you paid, it does not indicate that you will get a trademark registration, or that your trademark application has been examined. The
examiner must make his/her judgment as to if
your Application, if allowed to proceed to Registration, could cause 'likelihood of confusion' or damage to any existing registrant.
By necessity, trademark prosecution involves many aspects more closely related to business, marketing, trade customs, and other business principles that extend well beyond civil law and/or civil law concepts. This can confuse even the most seasoned 'general law' attorneys - and often does. At the highest level, seasoned Intellectual Property (IP) attorneys may fail without the business and marketing knowledge or experience needed to prevail. Moving on... A 'Registrant' is a current registered trademark holder. An 'Applicant' is one applying for a trademark. In trademark law, the registrant has far more rights than the applicant. My services may augment yet are not intended as a substitute for advice from a knowledgeable lawyer licensed to practice trademark law. What
the Trademark Examiner looks for. Marks
that can never become trademarks:
[for more detail search "Trademarks registrable on principal register"] The following types of marks are not allowed to become trademarks: 1. Matter which is merely the generic name of the goods on which it is used cannot be registered.
Understanding
likelihood of confusion, and how it is analyzed with The DuPont
Factors.
Trademarks (registered or not) are brands, brands are used in commerce. Branded goods and services may include words or terms, colors, images, packaging design, other elements and components that hopefully set them apart. Most
important, a trademark must serve
to indicate the source of the goods (the maker), and conversely, not
create likelihood of confusion or actual confusion as to the maker. Oppositions and objections to brand names, product and service names, trademarks (Marks) and trade names rely far more on commerce and marketing-related principles than on laws. These include yet are not limited to:
Unlike civil law (where robbery is always robbery, or a burglar either did it or not), trademarks, like business and commerce, change over time, and with the times. The 'fluid' nature of business 'over time' is the reason old 'case law' can often be proven to no longer apply, and why there can be no real 'rule book' - other than procedural. The Internet, globalization, national and international mergers and acquisitions, coupled with trademark monitoring services and burgeoning Intellectual Property protection budgets have increased and escalated trademark problems, and created new ones. Unlike in the past, the moment you apply for a trademark, or use a Mark as a domain name, the world becomes instantly aware - as does the risk of objection. Many brand name problems are based on 'likelihood of confusion'. There are some basic considerations a Trademark Examiner, (or Trademark Trial and Appeal Board Judge) looks at in relation to a trademark as long as it is of an allowable nature. These are known as the DuPont Factors. The DuPont Factors are strongly considered in a trademark opposition. Whether you wish to avoid opposition, or face opposition, you need to understand the DuPont Factors more from a marketing and business perspective than legal. According to the DuPont
Factors, as you are about to read, a Mark
does not have to be the
same exact phrase or spelling, or be identical, or even be in the exact
same class, in order to cause the
possibility of confusion in the marketplace. The DuPont Factors are included here to help guide you, and make you aware of the basic issues that are normally considered when two Marks 'may' be in conflict. THE DUPONT FACTORS Each of the DuPont Factors is considered 'case by case' to determine if a trademark application should be allowed, and/or if a party opposing a trademark could prevail. Even if 1 out of the 13 is the only factor in favor, that factor could be strong enough, on its own, to win an opposition. Obviously the more factors in favor, the better. Since just about anything can affect trademark cases, it greatly helps to know about a lot of other things - (why we do such in-depth investigation). Aside from the DuPont Factors, other concepts of law, marketing, business, fair trade, trade customs, and more may also apply and may be given consideration. Since trademarks are based on business, and business changes over time, trademarks and rulings are fluid, rather than static. Things change over time, and therefore a mark's strength or weakness can as well. Marks that were extremely strong a decade ago, may not be as defensible today. On the other hand, a mark like Apple (the computer and iPod company) might become so strong it crosses classes - so Apple clothing would infringe. Apple (The Beatles) and Apple Computer, decades later, had a trademark problem. Then again, marks can (over time) become so famous that they become the generic term for the product, like 'escalator'. Xerox and Kleenex face this problem. It takes years of reading trademark cases, a marketing and business mindset, and keen awareness of changes in business, to begin to understand trademarking, to be 'artful' at it, and keep your brand, product or trade names safe. If you were asked to review the DuPont Factors while working with us on a trademark problem, you may stop here, however we strongly recommend reading this entire page. Being 'artful' in trademarks involves an unusual combination of skills. As it turns out, a smart, experienced brand, marketing, business consultant may know more than a seasoned intellectual property attorney (trademark attorney). Trademark issues and concepts are very different than people would first imagine. Very different than many Attorneys that have not specialized in trademarks would be aware of, nearly impossible to understand for anyone - other than someone with experience in marketing and trademark opposition. The artful approach to trademarks involves far deeper consideration than most would imagine (and far beyond legal) in regards to skillful:
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more >> Court - the worst case scenario for a trademark problem: Most
trademark cases never go to a civil or Federal Court and instead involve
an exchange of paperwork - reply briefs, business letters, other exchanges
between parties - or between a party and the trademark office. Most are
handled by the trademark office (USPTO) or the Trademark Trial and Appeals
Board (TTAB). Without going into too much detail, we have increasingly seen cases that have gone to court for summary judgment under Rule 56. Apparently, since civil or Federal Court is a higher court than the trademark remedies, these cases are not able to be remanded back to trademark specialists who have the necessary in-depth knowledge required in trademarks. IF
any of the factors above apply to the Mark you are applying for, you may
wish to reconsider your Application, discuss it with Rob and/or see naming
strategies.
If
no one opposes
your Mark within 40 days (as of this writing) from the date your Mark is
published in the Trademark Gazette, (typically, after about a year or more
as long as you have no problems), your trademark is approved for registration in the USPTO principal register,
a Notice of Allowance is issued, if you have not yet done so you file a
Statement of Use, the mark is then officially registered when the
certificate is issued, and you can
and should place the
'r' in the circle
® with your Mark to indicate registration. In this case, the Trademark Examiner will issue you a non-final office action (basically an initial refusal), asking you to either change or clarify elements of the application, or abandon the application if your Mark, its 'class' and its description of Goods and Services is confusingly similar with another. There are also other potential reasons for refusal that will appear in the Trademark Examiner's initial refusal that will be mailed to you. Either way, refused or accepted, the application fee is not refundable. At the Initial Refusal stage, you have the option to make corrections to and amend your Application, and respond to the examiner's concerns, or abandon it. Normally amending your application involves defining your goods and services more clearly, or redefining your channels of trade, or redefining other aspects often based on the DuPont Factors. If your amended application is acceptable, your application is allowed for publication for Opposition in the USPTO Trademark Gazette. What
if the trademark application receives a Final Refusal? This Appeal can be in plain writing, must resolve all of the concerns of the Trademark Examiner, and must include a fee, about $100. This 'Appeal' is called an 'ex parte proceeding' since it is a proceeding between an Applicant and the USPTO. [ex-partes means by or for one party. An ex parte proceeding is one brought for the benefit of one party only, without notice to or challenge by an adverse party].
In some cases, though somewhat rare, the TTAB will reverse
its decision and Final Refusal, and allow your Mark to proceed.
Your Mark, along with its G&S description, will then be published in the Trademark Gazette. It's important that your description of goods and services is very accurate since you will ultimately need to file an affidavit, provide specimens, and (in layman's terms) prove that your trademark is used in the exact way it is described. The reason for publishing in the Trademark Gazette is to notify all others of your Application, which remains pending yet proceeding. Publishing in the USPTO Trademark Gazette gives industry peers and existing trademark registrants the opportunity to oppose your application from proceeding if they feel opposition is warranted and proceeding will cause them damage or harm. Your application may be opposed by any other person who feels they may be harmed by the registration of your trademark. In most cases the opposer is the holder of a registered trademark, though an opposer may be one with no registration and base the opposition on common law rights.
What
if a Notice of Opposition is filed against the applicant? A Notice of Opposition is a list of allegations regarding how and why an existing registrant feels your pending registration will harm them, and why your registration should be refused. Like a law suit, but without a jury, you must Answer the Notice of Opposition in a timely manner (usually 40 days) as prescribed in the Notice you receive. There
are specific formalities to the way you must present your Answer, as well
as strategies that can help. Your Answer must not be argumentative, and
must not be in the form of a brief, which makes writing the Answer a bit
more complex than many would imagine. If you do not file a formal Answer in a timely manner, the registrant that filed the Notice of Opposition will prevail and your Application and Mark will be abandoned. There are certain very specific procedures that you must follow in relation to your formal Answer. In most cases the Notice of Opposition and the Answer are based on the DuPont Factors listed above. Often, large Companies routinely file Notices of Opposition against any Applicant that 'may' cause likelihood of confusion. They do so to avoid acquiescence, which is a concept where, if a registrant does not file a Notice of Opposition, that registrant may lose its rights to its own trademark by not properly defending it, and willfully allowing others to infringe on their rights. It should be understood that the USPTO does not actively police trademark registrations. Instead the USPTO serves as an administrator of trademark registrations. In a similar fashion (in layman's terms), the Trademark Trial and Appeal Board facilitates oppositions (and other trademark issues). If a Notice of Opposition is filed after publication in the Trademark Gazette, this becomes a proceeding between the applicant and the opposer known as an 'inter-partes' proceeding. An inter partes proceeding is one in which adverse parties are involved. The opposer in this proceeding is the 'plaintiff' while the applicant is presumed guilty and becomes the 'defendant'. Typically, Lawyers from both sides try to settle out of court if possible in an Opposition proceeding. A settlement may include a refinement of the definition of the Goods and Services and/or an agreement not to sell in certain channels of trade that might cause conflict. Otherwise the parties, plaintiff and defendant, stay their course and follow specific procedures of the manual of procedure. If both sides cannot agree on any resolution, the Trademark Trial and Appeal Board reviews all of the information filed, and, with three USPTO Trademark Trial and Appeal Board Judges, makes the final decision. This process can take years. Notices of Opposition are often unanswered. As mentioned previously, the defendant 'defaults' and loses the application if an Answer is not timely filed or not filed at all. Many smaller applicant companies and individuals have no idea of how to Answer a Notice of Opposition, do not have the funds for an Attorney, nor the time. In this case, the company filing the Notice of Opposition hopes to 'win by default', and have the Application refused when the Applicant does not Answer. In other words the Applicant simply gives up, and the Application and Mark are abandoned.
For more
detail on the opposition process, you may want to see this Each case is different, and each takes a great deal of research and time, and a knack for understanding the oddities of trademark law - and business - and, in an opposition or cancellation, who the opposer is.
Rob has
found solutions to trademark issues that Attorneys did not spend the
time researching, or suggest. Your
best strategy: Quick
review and further information: The trademark examiner is an attorney, so his/her judgment is normally wise in the application process. However, just because the USPTO examiner 'saw no problem' and allowed your Mark to continue on to publication does not mean another registrant might see a problem and oppose your registration - which could happen years later - after your business is up and going. Since a
successful trademark opposition could cause you to cease and desist from
using your Mark, or worse yet, pay damages for infringement of the Mark of
another registrant, it is critical that you very carefully assess your naming strategies. If the trademark examiner opposes the Mark prior to approval in an Office Action, the applicant can first file an informal answer to attempt to resolve the concerns of the trademark attorney in a reply to the Office Action. If the Applicant's reply to a non-final Office Action results in a Final Refusal, an appeal with the Trademark Trial and Appeal Board can be filed by the applicant. This Appeal becomes a proceeding between the applicant and the Board and the Appeal is known as an 'ex-partes' proceeding. If the mark is opposed by another registrant and the registrant files a 'Notice of Opposition', the proceeding becomes an inter-partes proceeding. In this case the USPTO Trademark Trial and Appeal Board mediates the proceeding though the actual proceeding is similar to a civil proceeding between Lawyers. If no resolution can be arrived at between the parties, the TTAB ultimately makes a judgment, typically years after the Mark was applied for. If allowed to be published for Opposition, and no Notice of Opposition is filed, a trademark registration is ultimately issued. In the best case, this normally takes over a year. Learn more about naming strategies.
Attorneys and non-Attorneys have said "I'm so glad I found you." If you are having a trademark problem, click here My services may augment yet are not intended as a substitute for advice from a knowledgeable lawyer licensed to practice trademark law. Other trademark-related pages:
Have a trademark problem? Click here. Thank you for visiting, hope this helps.
/rob cummings/
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