Trademarks

What is Trademark Protection?

What is a trademark and how can I protect mine? Trademarks protect words, names, symbols, logos, sounds, or colors that are used to identify sources of goods (products) or services in the marketplace. (Technically, trademarks identify the source of goods; service marks identify the sources of services; this memo will use the term “trademark” or simply “mark” to mean both.) While there are several different types of trademarks, each requiring their own registration, the most common two types are (1) the “design mark,” which protects the visual elements of a logo trademark; and (2) the “word mark,” which (phonetically) protects the word itself.

Trademarks can be registered at the state level, but doing so offers very little in the way of protection. To protect a trademark, it should be registered at the federal level through the United States Patent and Trademark Office (USPTO). It does not make sense to invest time and resources developing a trademark only to later find out that it infringes on a federally registered trademark and you are therefore legally not allowed to continue using it. We will help you register your trademark with the USPTO.

Trademarks must be claimed and used in order to be protected. The easiest way to claim a mark is to affix the “TM” symbol (or “SM” for a service mark) at the very end of the claimed mark, like this: “MY TRADEMARK™”. Once a trademark is registered with the USPTO, the trademark owner can switch to using the “®” symbol instead. A trademark can be the name of the company, its “doing business as” or “d.b.a.” name, or the name of the good or service being offered. Owning the trademark personally or in a separate entity can allow for license fees to be paid to the owner; license fees are considered “non-earned income” for tax purposes, so this can be a tool to lower a business owner’s tax liability.

The strength of a trademark is judged by how well consumers have been “brainwashed” to associate it with a good or service. Trademark infringement turns almost exclusively on whether or not the use of a trademark will “create confusion in the mind of the consumer.” However, the term “consumer” does not mean just anybody in general; it refers to the consumer of particular good or service. That means that the same trademark can be registered by different owners and used to identify a wide spectrum of products and services.

The United States is party to several international treaties that deal with trademarks; one of them provides a framework for dividing the wide spectrum of goods and services into 45 different trademark “classes” that are relied on by the USPTO. It is possible to register the same trademark in several different classes. Take the mark “JIFFY” for example, which could be registered by one owner as the source of oil change services (a class 37 service) and as the source of the actual oils and lubricants to be put into the vehicle (a Class 4 good). Furthermore, the mark “JIFFY” is registered by several different owners in many different classes—popcorn (Class 30), plant seeds (31), wheelchairs (12), nasal splints, (10), packing materials (16), and ice drills (7), to name a few.

Registration with the USPTO is done by class; each class costs $225-$325, depending on whether you use a custom description of the mark or select from the standard descriptions provided by the USPTO. Within a few months of filing the application, the trademark examiner will issue a response. Such response may be that there are no problems and that the mark is being published for opposition to give potential opponents the opportunity to object to its registration. Absent an objection, registration follows shortly after the opposition period. Alternatively, the examiner response may indicate that the description must be narrowed because it is too broad and, if registered in a given class, could create confusion in the mind of consumers of the same or similar goods/services. Alternatively, the trademark examiner might flat-out reject the application, in which case the applicant can appeal the decision. If an application is rejected, the filing fee is non-refundable, so it is important to do a comprehensive search prior to filing to make sure that there is not a trademark already registered that is going to be confusingly similar. As mentioned, it is important to make sure that you are not spending thousands of dollars establishing a trademark as your brand only to find out later that you are legally prevented from continuing to use the mark and have to change or modify it.

If an application is filed with a custom description that describes goods/services that fall into more than one class, the USPTO trademark examiner will issue a response indicating that the applicant must either narrow the description or add the additional classes to the application. If the applicant chooses to pay the additional per-class filing fee to add the additional class(es) to the application, the filing date for such classes will be the original filing date, even if they are not added until months later (it typically takes 6-8 months to receive a response from the USPTO after filing). Therefore, one strategy is to file in the most obvious class only, with a broad, custom description of the goods/services to be offered, and then wait for the trademark examiner to suggest additional classes, which can be paid for at that time.

Trademark registration is on a “first to file” basis, so it is important to file a trademark application with the USPTO as soon as possible after making the decision to use one. What happens if someone spends decades using a mark in the great San Diego area and then someone starts a business in Maine using the same name, offering similar goods/services, and then files an application with the USPTO to protect it? Federal registration provides nationwide (constructive) notice of the Maine trademark user’s claim to the trademark; in the event it is eventually registered, the San Diego trademark user would be unable to expand beyond its market as it existed on the date the application was initially filed—any use of the trademark outside the greater San Diego area would constitute trademark infringement of the Maine trademark owner’s rights to use the mark.
Other benefits of having a federally registered trademark include:

• Federal jurisdiction;

• Statutory damages;

• Registration can be used as the basis for obtaining protection in other countries;

• Registration may be filed with the Customs Service to prevent importation of trademark-infringing foreign goods.

A trademark must be in actual use before it can be fully registered, but can be reserved for up to three (3) years after the USPTO approves the trademark. This is done by filing an “intent to use” application and then filing an extension every six (6) months after approval (at a cost of $150/class). To obtain registration, the applicant must eventually submit an acceptable “specimen” showing the mark in actual use. Such use can be on a letterhead, business card, marketing material, or website. For a trademark registration to remain valid, an Affidavit of Use (“Section 8 Affidavit”) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration.

There are two “registers” that trade and service marks are registered upon on the federal level: the Principal and Supplemental Register. The Supplemental Register is for marks that do not meet the requirements for registration on the Principal Register and it does not provide any rights beyond those provided by common law. If you had to build secondary meaning in your mark (which is explained more fully below), you might register your mark on the Secondary Register while doing so. Otherwise, it is virtually useless. The Principal Register provides statutory protection well beyond that provided by common law or state law. Once a mark is registered on the Principal Register, the owner can use the ® to indicate such registration. Anyone can use the TM next to a mark that is being used to identify their goods and services in commerce (provided such use does not infringe upon another’s superior use), but such use does not provide any protection beyond mere common law.

When picking a trademark (or service mark), it is helpful to keep in mind that trademarks are divided into five different categories: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.

Generic. A generic term is one that is the name of the product or service itself. If a term is generic, it cannot be registered either on the Principal or Supplemental Registers. Additionally, refusal cannot be overcome by evidence of secondary meaning. A lot of terms that are now considered generic started out in another category but became so identified with the product that they became generic, and thus, unprotectable. “Aspirin,” “Q-Tips,” and “sheetrock” are all good examples.

Descriptive. A mark is merely descriptive if the mark “immediately conveys” the ingredients, qualities, or characteristics of the goods or services with which it is used. Another way to explain it is if it immediately tells about or describes some particular aspect of the goods or services. “Food & Beverage Online” is one example of a similar mark that was denied for being merely descriptive. Unlike a generic term, a mark that is merely descriptive may be registered on the Principal Register if it can be shown to have developed a “secondary meaning.” To prove secondary meaning the applicant would have to prove “substantially exclusive and continuous use” of the mark for at least five years. It is possible to register a mark on the Supplemental Register while waiting for the five years to pass, but the Supplemental Register provides very little in the way of protection.

Suggestive. A term is suggestive if some imagination, thought, or perception is required to determine the nature of the goods or services from the term. “Burger King” is a suggestive mark, in that you have to put forth some mental energy to see the connection between the term and the product, hamburgers. “Camelbak” for backpack style canteens is another example of a suggestive term. Suggestive, arbitrary, and fanciful marks can all be registered on the Principal Register, provided their use will not “create confusion in the mind of the consumer.”

Arbitrary. A term is arbitrary if it is one that is commonly used in the language but has not intrinsic connection to the product or service. “Camel” as used for cigarettes is a good example of an arbitrary term being used as a trademark.

Fanciful. A fanciful term is one “coined” or made up for the purpose of serving as a trademark. Examples of terms that were made up but now are well-known trademarks are “Xerox” and “Exxon.”

How strong a trademark is, and thus, how much protection it will receive, runs the gamut from generic (very weak, no protection) to arbitrary or fanciful (strong protection once secondary meaning is established, which can take time). Basically, the more brainwashed the consumer is, i.e. the more they identify your goods or services with the mark, the stronger the protection.

Choosing a trademark that is available and protectable is a very important element in planning the start-up of a business, or the expansion of an existing business. It is very unfortunate when someone invests a lot of time, money, blood, sweat, and tears promoting a brand that is either already taken or otherwise unprotectable. Not only might you be unable to protect it, any effort to register it may result in a sternly worded “cease & desist” letter from the registered trademark owner. Therefore, choosing, vetting, and protecting a brand name should be done early in the process of starting or expanding a business; fortunately, Ely W. Sluder has years of experience protecting trademarks and will be able to help you with picking and securing your rights to a trademark, one that will contribute to the overall success of your venture.

Ready to protect your trademark? Sluder Law Firm is ready to help! Call 609-208-0999 or contact us online to schedule a meeting with him to discuss how best to protect your valuable intellectual property.