- Preparing the appropriate applications and filing them with the U.S. Patent & Trademark Office (“USPTO”);
- Managing objections from the USPTO as they present themselves (also called “Office Actions”);
- Once the mark is published for opposition on the Gazette, respond to any third-party objections and represent the client before the USPTO and Trademark Trial and Appeals Board;
- Manage reminders for the client as to extensions, statements of use, and declarations that are required post-registration and renewal notices.
What Is Distinctiveness?
For the trademark to distinguish your product(s) from others, it must be unique and “Distinctive.” The trademark can be any combination of words or symbols, and while it may be similar to other trademarks, it cannot be so similar as to be likely to confuse the relevant purchasers as to the source of identity.
What Is Not Distinctive – Descriptive Marks?
If you sell shoes you cannot trademark the word “shoes” because it is merely descriptive of the thing you are selling. If you are selling cinnamon buns, you cannot trademark the words “cinnamon buns” for the same reason. However, you can register “Wonkawonka Woozle Blast cinnamon buns” with the caveat that you would have to specifically disclaim any right to use the words “cinnamon buns” apart from the mark as a whole.
What Are Suggestive Marks?
Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. For example:
- In re George Weston Ltd., 228 USPQ 57 (TTAB 1985) (SPEEDI BAKE for frozen dough found to fall within the category of suggestive marks because it only vaguely suggests a desirable characteristic of frozen dough, namely, that it quickly and easily may be baked into bread).
Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. For new trademarks we assist the client in identifying potential challenges that might be encountered from the United States Patent & Trademark Office or World Intellectual Property Organization for international registrations.
STEP # 1: Analysis: Is the mark capable of registration?
Is the mark merely descriptive of your goods and services? Is it a generic term, does it contain geographic references, personal pronouns, offensive language? If so, it will have difficulty with objections by the Office. We assist the client to ensure that the mark will be acceptable to the USPTO.
Is the mark Fanciful, Arbitrary or Capricious? While these are the legal terms that define a mark under the language of the law, and which indicate acceptability as a trademark, they essentially mean that there is no connection between the actual words of the mark and the goods or services.
How you acquire rights?
The basic premise of establishing ownership to a mark is ‘First Use in Commerce.’ Are you the first to use the mark in commerce providing justification for a 1A application, or first to claim an intent to use 1B applications (intent to use or “1A” application)? You will be deemed to be the owner of that mark on the day would claim the mark was used in interstate commerce as to federal protection. However, even without selling in interstate commerce, the common law of trademarks provides you with protection from all others in the geographic region that you have sold the goods or services. The United States Code provides that you can still acquire the rights to a trademark by filing an ‘intent to use’ application, under 15 U.S.C. §1051 Subchapter 1, subparagraph (b) (called in the industry as a “1B” application).
STEP # 2: Filing and Prosecution Phase.
After the application is finalized, (design and description of goods and services approved) we file the application. It generally takes a few months for the USPTO to assign the application to an examining attorney. After the examiner performs their own analysis and research, they may have comments or objections which they issue in the form of a letter called the “Office Action.” We handle those responses in conjunction with the client and take action as necessary. These may involve preparation of legal analyses and arguments which make up the response to the office action. If the matters cannot be resolved with the examining attorney, a final refusal can be appealed to the U.S. Patent and Trademark Office Trademark Trial and Appeals Board (“TTAB”) and if successful on the appeal, the mark can go forward.
Publication on the Gazette – All marks, prior to either the Notice of Allowance or registration must be published on the USPTO’s gazette, which provides the general public an opportunity to file oppositions to the registration. We also handle such oppositions which are resolved before the TTAB.
STEP # 3: Registration
If all goes as planned, the trademark will be entered on the Principal Register and available to the world through the USPTO’s Trademark Electronic Search System (“TESS”). For more difficult marks that may be descriptive of the goods and services, it is possible to have the mark registered on a separate register for such marks, the Supplemental Register. While the full statutory remedies offered marks on the Principal Register are not available, registration on the Supplemental Register affords national/international notice of the client’s rights in the mark and at a point in the future it may be possible to transfer the registration to the Principal Register. We can help in those instances as well.
Section 8/15 Declarations. After a mark has been registered, the client who continues to use the mark as the registration indicates, must maintain the registration. First, between the fifth and sixth year of registration the owner must file a declaration of continued use with the USPTO. Additionally, this period also permits the owner to file a declaration of incontestability which says to the world, that there are have been no other marks that have appeared which might pose a claim of infringement.
Section 8/9 Renewals. Between the ninth and tenth years after registration, the owner may renew the registration for an additional ten years by filing the renewal petition declaring continued use and request to renew. Thereafter, you only need to do this every 9-10 years after the initial renewal.
Enforcement. You may sometimes discover that a possible infringing mark may have appeared on your radar. It is imperative that you take legal action to stop the infringement as if you don’t you may lose your rights to exclusive use through legal ‘abandonment’. We handle infringement actions when requested.
Infringement. Owning a trademark provides you with 2 rights:
1) the right to exclusive use of that trademark for the goods and services you claim; and
2) the right to exclude or stop others from using the trademark for those goods and services.
Infringement typically arises where there are counterfeit products or perhaps the use of a trademark that is confusingly similar to yours. In the context of a federally registered mark, you can file a lawsuit in federal court for violation of the 15 USC 2017 (the Lanham Act). If you prevail you can seize the offender’s products, their profits and in some cases receive a judgment in multiple of your damages and attorney’s fees. In the context of state registered or common law trademark claims, you will at least have the right to stop the infringer and claim provable damages.
Licensing. As you have the exclusive right to use, you have the right to grant others the right to use it as well. Some manufacturers, wishing to sell their products in areas of the world where they don’t have any manufacturing facilities will allow other companies the right to produce and sell or distribute the goods. In such case licensing agreements are used to a) ensure quality control in the hands of the owner and b) account for profits and royalties.
NOTABLE CASE SUCCESSES
USPTO Appeal: “CULINARY DELIGHTS” (Case Number 86384709). This was an appeal to overturn the USPTO examiner’s final refusal based on a claim that the mark Culinary Delights contained a single element “Delights,” which was objectionable, and needed to be disclaimed. That analysis was successfully refuted through a brief filed by counsel for the claimant, Terry Fox. The examiners immediately retracted their denial and allowed full registration on the Principal Register without any disclaimer on October 18, 2016.
Concurrent Use Application: “ISLAND CHOCOLATES” (Case Number 77225253). Our client initially filed an opposition to a pending trademark application containing the identical mark, “Island Chocolates”. As our client had initially used the mark in Hawaii, Guam and Japan prior to the other company’s application, we were entitled to common law geographic rights. Through negotiations we came too a consent agreement that allowed the dual use of the marks by our respective owners but divided the authorized use in geographic regions. This protected our client’s intellectual property and good will in the mark for the states and countries in which it had been using it.