How to Select and Protect a Trademark

Posted on May 26, 2015 by I'M WITH THE B(R)AND

1 – SELECT YOUR MARK

Choosing the right name for your product, service or creative project can be more complicated than you might imagine. Click here for more information about how to select a strong mark.

2 – CONDUCT A SEARCH

Once you have a mark in mind, a preliminary trademark search should be conducted to determine whether there are identical or similar marks already used, pending or registered. In case the preliminary search uncovers an existing mark that could preclude registration or use of your mark, you may want to have a back-up mark (or two) selected just in case.

Depending on the results of the preliminary search (which might only cover marks filed or registered with the U.S. Patent and Trademark Office, and potentially state registrations and some common law uses), you may want to have a more comprehensive search performed to review all federal and state trademark records, common law sources, domain name registrations, web results, and business names to be as certain as possible that your mark is available for your use and registration throughout the United States.

3 – FILE AN APPLICATION

Description of Goods/Services – When specifying the goods and/or services to be filed in connection with your trademark application, use clear, concise terms, i.e., common commercial names and language that the general public easily understands. Once the application is filed, you can clarify or limit the goods/services; however, you may not expand or broaden the identification of goods/services. If based on use in commerce, you must already be using the mark in commerce on or in connection with all the goods and services listed. If based on intent to use, you must have a bona fide intention to use the mark in commerce on or in connection with all the listed goods and services.

Actual Use – Your application will be based on actual use if you are currently using your mark on goods or services in interstate commerce. For goods, “interstate commerce” involves sending the goods across state (or country) lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” involves using or displaying the mark in connection with selling, advertising or offering a service to those in another state (or country) or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

In order to file an application based on use, you must submit the dates of first use (the date you first used the mark anywhere and the date you first used the mark in commerce) and a specimen showing use of the mark in connection with the goods or services. Specimens for goods include labels, tags, packaging, or containers for the goods, a display associated with the goods, or a photograph of the goods that shows use of the mark on the goods. For services, specimens may be website screenshots, magazine advertisements, brochures, a sign, a business card or stationery, or a photograph showing the mark as used in rendering or advertising the services (with some reference to the type of services rendered on the specimen).

Intent-to-Use – If you have not yet used the mark, but plan to do so in the near future, you may file an application based on intent to use. Although an Intent-to-Use application will go through the same review process as an Actual Use application, a registration will not issue until a specimen showing actual use has been filed with the USPTO.

4 – GET EXAMINED

After an application is filed, it will be assigned to an Examining Attorney at the USPTO. If the Examining Attorney determines that the mark is suitable for registration, the application will be approved for publication.

If the Examining Attorney determines that the application is not suitable for registration, the Examining Attorney will issue an Office Action detailing the reasons the application was initially refused. In order to maintain the application, an applicant must submit a Response to the Office Action within six months. If the Response is acceptable to the Examining Attorney, the application will be approved for publication.

5 – GET PUBLISHED

Once an application is approved for publication, the applicant will receive a Notice of Publication indicating when the mark will be published in the Trademark Official Gazette. Third parties will have 30 days from the date of publication to oppose registration of the mark.

6 – GET ALLOWED

If an Intent-To-Use application is published and is not opposed, the USPTO will issue a Notice of Allowance for the application. Within six months after the application is Allowed, you must file (1) a Statement of Use or (2) a Request for an Extension of Time to File a Statement of Use. A Statement of Use consists of the dates of first use and a specimen showing use of the mark in connection with the goods or services. You may file up to five six-month Extensions, providing up to 36 months of protection from the date the application is Allowed before use is required. If no Statement of Use or Extension Request is filed by the deadline, the application will be abandoned.

7 – GET REGISTERED

If an Actual Use application is published and is not opposed, or a Statement of Use is filed for an Allowed application, then the USPTO will issue a Registration Certificate for the mark.

8 – POLICE YOUR MARK

You will want to police your mark to ensure that third parties are not infringing or misusing your mark.

9 – MAINTAIN YOUR REGISTRATION

Once your mark is registered, because trademark rights are based on use of a mark, you will need to file additional documents from time to time in order to maintain your registration.

Declaration of Use and Incontestability – Between the fifth and sixth years after the date of registration, a Declaration of Use (and potentially a Declaration of Incontestability) must be filed with the USPTO to prove that the mark is still in use. Specimens of use must be submitted with these Declarations, and the mark shown in the specimens must match the mark as shown on the registration certificate.

Declaration of Use and Renewal – Prior to each ten-year anniversary of the date of registration, a Declaration or Use and Renewal Application must be filed with current specimens.

10 – GO GLOBAL

Trademarks registered with the USPTO are protected in the United States only. However, if you are using or plan to use the mark in other countries, it is highly advisable to register your mark in those countries as well. As the owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may be able to seek protection in any of the countries that have joined the Madrid Protocol by filing a single application, which can be much less expensive than filing in each country individually. Many other countries also recognize a United States application or registration as a basis for filing an application to register a mark in those countries under international treaties. Foreign applications filed within six months of the U.S. filing date may claim priority from such earlier date. Foreign applications filed after this date take the actual date on which they are filed.

Protect Your Brand: The Duty to Police Trademarks

Posted on April 14, 2015 by I'M WITH THE B(R)AND

So, you’ve found and registered a unique brand. Congratulations! That’s a major accomplishment! However, once you have rights in a brand, you need to make sure you keep those rights in tact to protect the brand.

Although you are not required to prosecute (or even act immediately against) every potential infringer of your brands, you do have a legal duty to protect against infringement and act reasonably in protecting your trademark rights. If you fail to properly “police” your marks, you risk diminishing the value of your brand, damaging your goodwill, and weakening your mark. police-294107_1280

In extreme cases, failure to police a mark can lead to abandonment of all trademark rights in the mark. For example, ASPIRIN used to be a brand name owed by Bayer and ESCALATOR used to be owned by Otis Elevator Company…but these marks became so widely used as the name of the underlying products themselves that the marks became generic terms for those products, and both companies eventually lost their trademark rights in the names. (Unlike a trademark, a generic name consists of the word commonly used to identify a product. For example, the terms “computer,” “software” and “internet” are generic names and anyone is free to use them.)

To protect your marks and prevent competitors from using confusingly similar marks that could affect your reputation and bottom line, you should implement a plan to monitor your marks and enforce your rights when necessary.

To help you monitor your marks, you may want to sign up for Watch Services that will notify you of potential issues, such as new trademarks filed with the US Patent and Trademark Office (USPTO), Secretary of State Offices or in foreign countries, as well as domain name filings, common law marks and corporate filings. At the very least, you may want to set up Google Alerts to monitor mentions of your brand or products on the Internet. If you have licensed any of your marks to third parties, you should monitor your licensees’ use of your marks as well.

In the event you become aware of a potential infringing or confusingly similar mark, you can determine (in consultation with your trademark attorney) what, if any, actions you may want to take to protect your trademark rights. Depending on the situation, you may decide to send a cease and desist letter to the infringing party, file an Opposition or Cancellation action with the USPTO, file a lawsuit in State or Federal Court, pursue a combination of these options, or decide on a different strategy.

How to Protect Titles of Creative Works

Posted on March 26, 2015 by I'M WITH THE B(R)AND

Although movies, TV shows, art, books, musi books-498422_1280 c, lyrics and recordings are protected by copyright, the titles, names and tag lines associated with these types of creative works do not qualify for copyright protection. However, in certain instances, titles of creative works may be protectable as trademarks.

For example, you cannot register a trademark for the title, or a portion of a title, of a single creative work (such as a book, a television episode, a film, a live theatre production, or a phonograph record). [NOTE: Computer software and computer games are not treated as single creative works.]

However, if the title has been (or will be) used in connection with a series of creative works (e.g., a series of books, the second edition of a book with significant changes, a periodically issued magazine, a television or movie series, a series of live performances [such as by a musical artist], educational seminars, or a continuing radio program), it may constitute a mark for either entertainment or educational services.

For more information about how to protect titles, here’s an article I wrote entitled “A Different Kind of Title Insurance: How to Protect Titles of Creative Works” that was published in Bloomberg BNA’s Patent, Trademark and Copyright Journal.

Trademark Notices

Posted on March 24, 2015 by I'M WITH THE B(R)AND

Use of the ™ or ^SM Symbols. Unless and until you obtain a federal trademark registration for your mark(s), you can (and should) use the ™ or ^SM (for trademark and service mark, respectively) symbol in connection with your marks to indicate to others that you claim rights in the marks.

You do not need to have filed a state or federal trademark application or obtained a trademark registration to use the ™ or ^SMsymbol, as common law trademark protection subsists from the time a mark is first used in commerce…although there are several benefits to registration.

You may also want to include a trademark notice on your documents and website.

Example: I’M WITH THE B(R)AND^SM is a service mark of Danica L. Mathes.

Use of the Federal Registration Symbol ®. You cannot use the federal registration symbol ® until you receive a federal registration certificate from the U.S. Patent and Trademark Office (USPTO).

Even if you have a pending trademark application, the registration symbol may not be used before the mark has actually registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

You may also want to include a trademark notice on your documents and website.

Example: CAST A BIG SHADOW.^® is a registered service mark of Bell Nunnally & Martin LLP.

NOTE: JUST BECAUSE A MARK IS REGISTERED FOR ONE ITEM DOES NOT MEAN YOU CAN USE THE ® FOR OTHER ITEMS. If a specific product or service is not listed in the identification of goods/services for a registered mark, then ™ or ^SMwould be the correct notice to use in that case.

Trademark Notices in Other Countries. Some countries have severe civil and criminal penalties for improper use of trademark registration symbols. Therefore, you should not use ® in countries where your marks have not been registered. If you are unsure if a trademark is registered in a particular country, you should use the ™ or ^SM symbol.

Use of Third Party Marks. You should observe the trademark ownership of others by including the following:

“[Enter trademark name here] is a [registered] trademark of [enter trademark owner’s name].”

If the trademark owner information is unknown, you may want to include the following:

“All trademarks are the property of their respective owners. [Company Name or Your Name] is in no way endorsed, sponsored, approved by, or otherwise affiliated with the owners of such trademarks.”

NOTE: IN MANY INSTANCES, YOU WILL LIKELY NEED PERMISSION FROM THE OWNER OF A MARK IN ORDER TO USE THAT PARTY’S MARK…especially if use of a third party mark is likely to lead consumers to believe that there is an affiliation, connection or association with the third party mark or that the owner of the third party mark sponsors, approves or originates your products, services or commercial activities.

I'M WITH THE B(R)AND®

The Branding & Creativity Law Blog

Tag Archives: intellectual property protection

How to Select and Protect a Trademark

Protect Your Brand: The Duty to Police Trademarks

How to Protect Titles of Creative Works

Trademark Notices

Share this:

Like this:

Share this:

Like this:

Share this:

Like this:

Share this:

Like this: