Table of Contents
A trademark is either a word, phrase, symbol or design,
or combination thereof, which identifies and distinguishes the source of the goods of one
party from those of others. Normally, a trademark for goods appears on the product or on
its packaging. Example: Coke® is a registered trademark of The Coca-Cola Company for soft
drinks.
A service mark is the same as a trademark except that
it identifies and distinguishes the source of a service rather than a product. Normally, a
service mark appears in advertising for the services. Example: McDonald’s® is a
registered service mark of McDonald Corporation for restaurant services.
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In addition to trademarks and service marks, there are collective marks, collective
membership marks, and certification marks.
A Collective Mark is a trademark or service mark
used or intended to be used by the members of an association, cooperative, or other
collective group to identify and distinguish their goods or services. Example: FTD® is
used by member florists of the Florists' Transworld Delivery Association.
A Collective Membership Mark is a mark
adopted or intended to be adopted for the purpose of indicating membership in an organized
group. Example: the letters AAA® inside an oval indicates membership with the American
Automobile Association.
A Certification Mark is a mark which is used or
intended to be used to certify that goods or services of others meet certain standards
established by the owner. Most are those which (1) originate from a specific geographic
region, such as Roquefort cheese; (2) meet standards in relation to the quality,
materials, or mode of manufacture, such as Underwriters Laboratory approval; or (3) were
performed by an individual who has met certain standards or belongs to a certain
organization or union, such as a union label in clothing.
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Name Selection
The first step in the trademarking process is to select a trademarkable name. Names
which are descriptive of the products or services are not usually trademarkable. Moreover,
names which are generic in nature are likewise untrademarkable.
Searches for Similar Names or Designs
The second step in the trademarking process is to conduct a mark search. Although an
applicant for a mark is not required to conduct a search for conflicting marks prior to
applying with the Patent and Trademark Office ("PTO"), it is generally
recommended to do so to avoid the time and expenses which accompany a PTO rejection.
In evaluating an application, a PTO trademark examining attorney conducts a search and
notifies the applicant if a conflicting mark is found. The PTO does not conduct searches
for the public to determine if a conflicting mark is registered, or the subject of a
pending application, except when acting on an application. If such a conflicting mark is
uncovered, the application will be rejected and the filing and attorney's fees associated
with the application will be lost. Moreover, it could potentially be a very expensive
process to abandon the mark and substitute a new mark in its place. Any time and expenses
incurred by the applicant in using and promoting the mark in advertising, on the products,
and/or other marketing methods will likewise be lost after a rejection.
In order to avoid these problems, it is highly recommended that a search be completed
before the mark is used and before an application is filed with either the PTO (federal
marks) or the Secretary of State (state marks).
When it comes to searches, we typically offer three options:
Federal Register Search: This is our most basic search. It is a search of
all pending and registered marks on the federal register.
All State Registers Search: Combined with 1 above, this is a more
comprehensive search. It includes a search of the state registers of all fifty states.
Common Law Marks Search: Combined with 1 and 2 above, this is the most
comprehensive search which we offer. It includes a nationwide search for what is known as
"common law" marks. Common law marks are marks which have been used for a period
of time in a particular locality without formal registration. Common law marks are the
most difficult to find and if not found frequently can cause future problems.
The type of search one does usually depends upon where the proposed mark will be used
and how much money will be spent on advertising and promoting the mark. If you are
contemplating international use of your mark, please ask us about international searching
as such is not covered above.
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Federal Applications
Regular Application
If you are currently using the mark across states lines in the ordinary course of
business, you can file a regular application. Along with the application, specimens which
show use of the mark in commerce must be filed.
Intent-to-Use Application
If you have not already used the mark across state lines in the ordinary course of
business, but have a bone fide intent to do so in the near future, you can file an
intent-to-use application. With this application, you first file an application and when
you begin actually using the mark you file either an Amendment to Allege Use or a
Statement of Use along with specimens which show use of the mark in commerce. The only
downside to this type of application is that it is a multi-step process and thus costs
more to do.
The Registration Process
If the PTO approves the application, it will be published for "opposition."
This means the mark and a description of the goods and/or services is published in the
Official Gazette of the PTO which is available nationally and internationally. All persons
who feel they will be damaged if the published mark is registered can file an opposition
with the PTO. If this occurs, the application will not mature into a registration until
the conflict is resolved.
Basically, there are two registers: the Principal Register and the Supplemental
Register. Most marks go on the Principal Register. Occasionally the PTO refuses to put
a mark on the Principal Register and offers the Supplemental Register as an option to
rejection. In essence, the Supplemental Register exists to allow registration of marks
that are not distinctive but are capable of becoming distinctive. Once a mark has acquired
distinctiveness, it is eligible for registration on the Principal Register. "Acquired
Distinctiveness" means distinctiveness that is not inherent, but achieved through
continuous use and consumer recognition of the word, phrase, symbol, etc. acting as a
trademark. Thus, registration on the Supplemental Register does not bar later registration
on the Principal Register once the mark has become capable of distinguishing the owner's
goods or services from those of others.
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A State of California trademark or service mark can be obtained if a person or entity
is using the mark only in California (as opposed to using it in California and
across state lines). Additionally, if a person or entity who qualifies for a federal
registration chooses to seek a California registration as well, such is usually
permissible.
In order to obtain a State of California registration, you must currently be using the
mark within the State of California and must have a reasonable and good faith belief that
no one else has the right to use an identical or confusingly similar mark within the
State.
Typically the owner of only a State of California registration will not be permitted to
assert rights to the mark based on registration in any other state. Thus, the acquired
rights to the mark are only for the State of California.
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A license is a contractual arrangement whereby the owner of a mark permits others to
use the mark typically under specified conditions. The owner of the mark is known as the
"licensor" whereas the person who is permitted to use the mark is known as the
"licensee." A mark may be licensed to a single licensee or multiple licensees.
Moreover, a mark can be licensed either before or after registration.
Mr. DeCicco will advise you on licensing considerations and draft your license
agreement. Please feel free to call for cost estimates.
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Law Offices of Paul Michael DeCicco, 2003