More About Trademarks

This letter is directed to general information relating to trademarks in the United States. If you are new to the trademark process, please read this general information.

A "trademark" is a word, design, slogan, color combination, sound, smell, or a combination of any of the foregoing, used by a manufacturer or merchant to identify the merchant's good and/ or services and distinguish them from others. Trademarks include brand names identifying goods ("Coca Cola" for a soft drink), service marks identifying services ("Marriott" for hotel services), certification marks identifying goods or services meeting certain qualifications ("UL" for appliances meeting the safety standards of Underwriters Laboratories, Inc.), and collective marks identifying goods, services or members of a collective organization ("AFL-CIO" for union locals). The same legal principles generally apply to all of these terms, often simply called "marks".

The important thing to remember is that a trademark need not be registered to be protected. Reserving a corporate name in one or more states is irrelevant to trademark rights. Trademark rights can be acquired only in one of two ways: (1) by actually using the mark on or in connection with goods or by displaying the mark in the sale or advertising of services, or (2) or by filing a federal intent-to-use trademark application, declaring that the applicant has a "bona fide" intent to utilize a particular mark in connection with designated goods and/or services.

Registration of a mark is not mandatory, and rights will be protected without it. An applicant for registration of a trademark in the U.S. Patent and Trademark Office will only receive a registration certificate once goods bearing the mark have been shipped in interstate or foreign commerce, or if services under the mark either are subject to federal regulation or have been rendered in more than one state, or alternatively if the owner is foreign and has registered the mark in its country of origin or has applied to register it there during the previous six months.

When issued, which normally takes about one year, a federal registration has substantial advantages: (a) it is constructive notice of the registrant's claim of ownership, applicable nationwide to everyone subsequently adopting marks; (b) it will be listed on search reports obtained by others; (c) it is evidence, albeit rebuttable, of the registrant's exclusive ownership rights, shifting the burden of proof to anyone challenging those rights, and in some circumstances it can be conclusive evidence of those rights; (d) it gives federal courts jurisdiction to hear infringement claims, counterfeiting claims, and related claims of unfair competition under state law; (e) it precludes states from requiring modifications in the display of the registered marks; (f) it can be used as a basis for registration in some foreign countries; and (g) it can be recorded with the U.S. Customs Service to prevent importation of infringing foreign goods.

Use of a trademark registration notice before the mark actually has been registered not only is inappropriate, but may also prevent the owner from obtaining relief against an infringer. The informal symbols TM (for trademarks) or SM (for service marks) are often used with unregistered marks to indicate a claim of common law trademark rights. After registration, one of the following trademark registration notices may be used: "Registered U.S. Patent and Trademark Office," "Reg. U.S. Pat. & TM Off." or ®. Such notice is not mandatory, but under some circumstances its use is necessary to obtain damages from an infringer.

Trademark rights continue indefinitely as long as the mark is not abandoned and is properly used. A federal trademark registration is maintained by filing a declaration of use during the sixth year after its registration, and by renewal every ten years as long as the mark is still in use in federally regulated commerce. The law provides that non-use of a mark for two consecutive years is ordinarily considered abandonment, and the first subsequent user of the mark can claim exclusive trademark rights.

Normally the first step in the process of obtaining a federal registration for a mark is to conduct a trademark availability search. There are several levels of searches available, but the two most common are a comprehensive search ($1000.00) and an abbreviated search ($300.00). Most clients elect to have the abbreviated search conducted prior to filing an application.

If a trademark appears to be available based on the results of the selected search, then an application should be filed. Once filed, it normally takes 12 to 18 months for the application to complete the processing and examination procedures prior to issuance of a registration. It must be understood, however, that even if the search reveals no conflicts which would bar registration or use of a mark, the search and filing of an application for federal registration is no guarantee that a registration will issue, nor is it a shield against a third party claiming prior rights in a mark.

The cost for filing the application is typically $895. The United States Patent and Trademark Office (USPTO) charges an additional filing fee of $325.00 for each additional class of goods in the application. Over the course of the 12-18 months it will take to get the registration, it may cost between $450 and $1000 in addition for prosecuting the application to registration, depending on the Examining Attorney's objections at the USPTO.

It must be understood, however, that even if a search reveals no conflicts which would bar registration or use of a mark, the search and filing of an application for federal registration is no guarantee that a registration will issue, nor is it a shield against a third party claiming prior rights in a mark.

I will need the following information for each mark you would like to register:

1. the name and address of the owner of the trademark;

2. a list of all goods sold and/or services rendered under the mark;

3. confirmation from you whether or not the mark has been used in interstate commerce (commerce subject to regulation by Congress - call me if you need more information about this); If the mark has not yet been used in commerce in connection with actual product, then I do not need any additional information. If, however, the mark has been used in commerce with actual product, I need the following additional information:

4. the dates of (a) first use anywhere and (b) first use in interstate commerce.

5. a specimen of use for each different general class of goods and services sold/rendered under the trademark. Acceptable specimens for goods are labels, tags or packaging for the goods (photographs of such are fine). For services, acceptable specimens are advertisements, store signage, brochures or websites featuring the services rendered under the trademark.

I hope that you will find the foregoing information helpful. If you have any further questions, please do not hesitate to call me.

Best Regards,

Marc Martino

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