An Overview of The Trademark Process

(Rev. 1-20-04)

 

by John M. Huff

Trademark Partners

The following article provides an overview of the process of creating, clearing, and applying for federal registration of a trademark for your product or service. The majority of the article discusses trademarks consisting of one or more words (often called "word marks"). We discuss the use of graphic logo trademarks (or "design marks") later in the article. Businesses that operate under a business or "trade name" can also use, register and protect their trade name as a trademark. If you decide to use your business name as a trademark, this article explains certain steps to use and protect the trademark. One important immediate step is to register the name in the State(s) in which the business operates.

Before we begin, I will briefly discuss the legal basis for trademark protection. The authority and rights of trademarks are ultimately the rights to the full ownership and rights to the profits from products and services a business creates and sells. Trademark laws protect against the illegitimate use of a trademark that is similar or identical to a pre-existing trademark, resulting in buyer confusion and even loss of sales by virtue of redirection to the company infringing on the trademark. A secondary protection is against activity that damages a trademark holder's reputation by virtue of confusion with a company involved in activities perceived by the public as questionable or immoral. The rules addressing how these rights are enforced or disputed are based on principles of law and practice established by court decisions going back to before the U.S. Constitution, back to English common law.  I'm sure the basic principles even pre-date England if you consider the history of using symbols to identify the origins and ownership of property. In any case, the rules generally protect the first use of a mark for a specific product or service. All States have laws protecting the use of trademarks within the state's borders, and even laws protecting business names not necessarily used as a trademark. Additional protections, related to use of a trademark in commerce between States and internationally, and additional rights for federally-registered trademarks come from federal statutes known collectively as the Lanham Act (Title 15 U.S.C. §§1051 to 1127). With that covered, let's discuss creating, clearing, and applying for federal registration of a trademark.

1. Create a Proposed Trademark

The act of creating a trademark is probably the most important aspect of this process. A well-crafted trademark has two important qualities: it is a symbol of the value and distinction of a product or service. It effectively presents a positive image to customers and prospects. For whatever number of reasons, people feel good about it. The second and equally (or even greater) quality is that it is legally defendable as a trademark, and as a result protects the connection between customers and providers. As our marketplace becomes more global, connected, and diverse, even the smallest companies are starting to consider trademarks as valuable assets and investments. We will leave the marketing and advertising benefits of names for another article, and focus on the legal guidelines for creating and protecting trademarks. 

The essential concept is that your investment of time and energy (and even money if you hire a naming consultant), spent on creating a superior trademark is likely to be rewarded by effectively communicating your unique position and offerings in the marketplace. The creation of a powerful trademark could easily be considered an art more than a science, but the guidelines used by the United States Trademark Office and courts of law are more specfic and established. A trademark is more likely to be registered and defended if it is distinctive, and not merely suggestive or a straightforward description of a product or service. In other words, simply stating a quality of the product or service being sold, such as "Red Guitars" to identify guitars with a red color is not acceptable. Also, a geographical reference such as the name of the town or city where a product is made will not be approved. The attorneys and courts place more favor on distinctive and "fanciful" marks, even marks that consist of coined terms never before used in the english language. These are easiest to identify as originating from one source, and therefore, defended as a unique trademark. The challenge for a business with a limited marketing and advertising budget is the expense necessary to create a connection in the consumer's mind between a trademark and a specific product or service. In other words, selling a computer with the trademark "Apple" is easily defendable, but is likely to be a difficult challenge if you do not have a substantial budget to associate apples with computers. So in the interests of effective marketing, many companies desire to convey at least one distinctive feature of the product or service through their trademark. In order to do so and still avoid the challenge of conflict or confusion in the marketplace with other similar names, a business must create a name that is distinctive yet suggestive enough to be effective. We will discuss this more in an upcoming article.

Note: Creative Naming Assistance Available from Trademark Partners.

If you have not yet created a trademark, and desire professional assistance to help develop an ideal name, Tradmark Partners can help. We start by having you complete a questionairre about the nature of your products or services and the feature(s) that you wish to communicate with your name. Not only will we provide ideas for possible trademarks, but we will search the federal trademark database during the process to make sure that the names we propose do not obviously conflict with existing marks. When you have settled on a trademark, we can provide a more comprehensive clearance search, and even prepare the trademark application for you.

When you have at least one proposed trademark for your product or service (better to have at least one additional / alternative mark in the event that a conflict arises with the first) you are ready to begin the search and clearance process. Searching for existing trademark helps to protect you from accidentally infringing on marks currently being used for an identical or similar product or service (and the possibility of lawsuits and costly changes to your trademarks later). It also clears the way to start the registration process to protect your mark.

Special Note Regarding Rights to a Trademark: Since federal registration is not mandatory to establish trademark rights (it only provides certain additional protections and public notice of your claim), there is no process that guarantees you an immediate and absolute right to your trademark. The results you receive from the following searches (and any searches done by any trademark service in the country for that matter) only allow you to presume that your trademark is available, and show that you have made a reasonable effort to identify and avoid infringement on someone else's mark. There is a procedure, however, that allows you to file for incontestible status once your trademark has been registered and used for five years, to protect you from any claims following that period. You must also file an affidavit every ten years in order to keep a registration once it is issued.

2-1. Conduct an "Eliminator" Clearance Search

The first step to clearing a trademark to apply for registration is to perform an "eliminator" search of federally registered trademarks. This will provide immediate results to indicate if there is an obvious, exact match to your proposed trademark already registered or pending, before you proceed with the comprehensive clearance search. When ordering this search, you will be asked to describe the nature of your product or service, and a researcher will match the description with the International Class(es) of Goods and Services that all trademarks are registered under. If you are unsure of which class is appropriate, the PTO has also created a "Trademark Acceptable Identification of Goods and Services Manual." The Manual is simply a list of common products and services and how they are categorized in the International Classes for registration and searching purposes. You may search or browse the Manual to find this information quickly on the Trademark Office Website. As I mentioned, this is automatically performed by our research staff before we start a clearance search.

2-2. Conduct a Comprehensive Clearance Search

This is the second and final step to reasonably determine if a trademark is already in use. This is a comprehensive search, the most comprehensive search of its kind that we're aware of. This search checks the records of PTO, as well as all 50 States for active or pending trademarks. Next, it searches for "common law" trademarks by searching the names of all state corporations and other business entities, as well as up to 30 million business names using various directories. It also searches known brand names. Lastly, it searches millions of newspaper, business, and trade publication articles to find possible conflicts.

3. Obtain an Attorney Search Opinion (optional)

If, after reviewing your search results, you determine that a similar trademark exists, either in the federal or state registries, or in use by a company as their business name or brand name, and wish to be certain that you are not infringing on that trademark, it is often helpful to obtain an attorney's opinion about your search results and the potential of infringement on other existing trademarks. Many clients will use this service simply as a precaution, even if they don't believe there is a conflict with existing trademarks. (If a trademark is totally unique and the comprehensive search fails to identify even similar marks, using an attorney is purely optional.) If you require an attorney's assistance and are not already working with one, we will be happy to provide a free referral to a reputable lawyer who charges reasonable fees for what are generally standard procedures involving trademarks.

4. Apply for Federal Trademark Registration

After you have received the results of the comprehensive search, and are reasonably certain that your  trademark is available, the next step is to submit an formal application for federal trademark registration. Whether or not you have begun to use the mark to identify your goods or services, you may apply for federal trademark registration. You will need the application form provided by the USPTO. You may download the form from the USPTO website or order the form by calling the USPTO at 1-800-PTO-9199. The PTO also recently started accepting applications online through their website. It is recommended that you either research the procedures and requirements of the application carefully or seek the assistance of a provider such as Super! Small Business™ Consultants. If you decide to prepare it yourself, we recommend using a guide from self-help legal publisher Nolo Press. You may also obtain assistance from an attorney who specializes in intellectual property law.

5. Use Your Trademark Properly, and Protect It from Infringement

Many business people believe that once a trademark has been federally registered, it remains in force indefinitely. This is NOT the case by any means. There are two important steps to be taken to protect your trademark rights against competition, dilution, and loss of legal protection.

5-1. Properly identify and use your trademark(s) to identify your products and services.

Even before you register your trademark, it is a good idea to put the "TM" notice on your product or service. While this practice is not necessary to acquire trademark rights (rights come from use of the mark itself in commerce), it is helpful because it notifies the public of your trademark. After receiving federal registration of your mark, it is a legal requirement to use the registered "â " symbol in order to receive full legal protection. Failure to properly identify your trademark may be used by a competitor to challenge your rights to the mark. Another aspect of protecting your trademark is to establish guidelines for how the mark is used in your advertising copy, and how it is used in the news media.In order to avoid it becoming a generic term to describe goods or services similar to yours, you should always use it as an adjective modifying the product or service it describes, and never a noun or verb. For example, The Xerox Corporation protects its famous trademark by discouraging improper use such as to "make a Xerox", or to "Xerox a document." By diligently following these guidelines in its advertising, and actively pursuing those who misuse its trademarks, they avoid their mark becoming an unprotectable generic name for photocopiers and related supplies. Some examples of trademarks that were not protected and became generic terms are "shredded wheat," "aspirin", and "escalator."

5-2. Use a monitoring service to "police" unauthorized use(s) of your trademarks. Notify offenders and protect your trademark in court if necessary.

Trademark rights arise from the exclusive first use, and continued use, of a trademark. However, the right to continue using a trademark depends on the actions of the owner of the trademark. This includes challenging any infringement of the mark. Infringement occurs when another business uses an identical or confusingly similar trademark in the same area of business as yours.

To challenge infringement of a trademark, one must first be aware that such an infringement is occuring. In the case of federally registered trademarks, it is not often apparent that an infringement is taking place until it has persisted for some time, because a confusingly similar mark may be used to identify a product or service located in a distant area of the country. To give "advanced notice" of potential infringements, many trademark holders use a monitoring service that checks the weekly publication of proposed federal trademarks, to identify conflicting marks that were not caught by the PTO Examining Attorneys. Trademark Partners provides this service for its clients.

5-3. Oppose Infringement of Your Trademark

If you become aware that your trademark rights are being infringed upon by someone using an identical or similar trademark, the first step you should take is to notify the business in writing. Notify the infringer of your registered trademark, that it appears that their use of their trademark is infringing on your trademark rights, and that you demand that they cease and desist from using the offending mark. Ask them to provide written notice within 30 days that they have ceased the activity. If they respond with a claim to prior rights in the trademark, you may wish to seek assistance from an attorney to address it. If no reply is received, attempt to verify if they are continuing to use the offending trademark. If they have continued to use the mark, you should seek the assistance of an attorney to address the situation. With your attorney's assistance, it may still be possible to stop the activity without needing to file a lawsuit. Be sure to address all suspected infringements as soon as possible, or you may risk losing protections and exclusive claim to your trademark.

Special Note Regarding Design Marks (Logos):