A trademark is any word, slogan, or symbol that is used in trade with goods and services to indicate their source of origin. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from offering the same goods and services under a non-confusing mark. There are generally four different types of marks:
• merely descriptive; and
• generic (note, generic words are not entitled to protection).
Fanciful marks are devices which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark (i.e., KODAK®, XEROX®, and EXXON®). An arbitrary mark utilizes a device having a common meaning that has no relation to the goods or services being sold (i.e., APPLE® (for computers)).
A suggestive trademark is a word that, when applied to the products or services, requires imagination, thought, or perception to reach a conclusion regarding the nature of those goods or services (i.e., REDLINE® (suggestive for an energy drink giving you potent ingredients), MICROSOFT® (suggestive for microcomputers), and MICRODERMABRASION IN A JAR® (suggestive for a face cream that sloughs off dead skin)). On the other hand, a merely descriptive mark immediately conveys information regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product or service and is not entitled to protection (i.e., LIGHT (descriptive of a light beer), ZERO CARB (descriptive of a dietary supplement that has zero carbohydrates), and SUPERPUMP (descriptive of a dietary supplement that pumps muscles). Most marks fall into the suggestive (protectable) or merely descriptive (not protectable without secondary meaning) categories. While it is tempting to select a descriptive mark because it more readily communicates the nature of the goods or services provided, they not immediately entitled to protection. Merely descriptive trademarks are only entitled to protection upon proof of secondary meaning, i.e., 5 years of continuous use, consumer surveys, extensive sales, and/or extensive advertising.
In the United States, trademark rights are either common law (based upon use) or registered rights. Common law rights are limited to the geographic area where the trademark has been used. Registered rights are obtained by filing a trademark application with the United States Patent and Trademark Office (“PTO”). An applicant can secure its rights before it uses them by filing an intent to use application with the PTO. Registration with the PTO provides many benefits, such as:
• prima facie proof of the validity of the trademark;
• the exclusive right to use it in all fifty states;
• the registrant’s ownership of the mark; and
• after 5 years, the ability to make the mark incontestable and not subject to attack or cancellation (with some exceptions).
Like trademarks, trade dress is also entitled to protection. Trade dress is the commercial look and feel of a product or service that identifies and distinguishes the source of the product or service. As to products, it often includes the product’s elements such as the design, materials, colors, and placement of material used to package a product. As to services, restaurant chains, such as Hooters, that have a distinctive appearance are entitled to protection for trade dress. Generally, an application to register trade dress must include all the same content as a trademark application. Trade dress must be both distinctive and nonfunctional.
Trademark and trade dress law in the United States is governed by the Lanham Act. The Lanham Act sets forth the PTO application process. The Lanham Act also provides the owner of a trademark and trade dress with protection against infringement by confusingly similar marks, dilution of famous marks, counterfeiting, and other acts of unfair competition. The Lanham Act allows for injunctive relief and the possibility of treble damages and attorneys’ fees. Additionally, owners of registered marks may request U.S. Customs Officials to seize imported goods bearing an infringing registered trademark.
Regarding the trademark application process, it is important to hire an experienced trademark attorney such as Erica W. Stump to conduct a search and to prosecute the trademark application with the PTO. At Erica W. Stump, P.A., we conduct a “knock out” search of the PTO’s records to “knock out” any direct conflicts of your proposed trademark. We also search related goods and confusingly similar trademarks. We also perform online searches to uncover any potential common law use of your proposed trademark for the goods and/or services that you are going to use. Finally, we also work with third party searching companies such as Thomson to perform “comprehensive” searches. Third party search companies search PTO, state, common law, business names, and other databases.
If your proposed trademark appears “clean,” we will then file the trademark with the PTO. Again, it is important to work with a trademark attorney, as many items in the trademark application cannot be changed after filing. About 3-4 months after the application is filed, the PTO will assign an Examining Attorney to scrutinize the application. Throughout the application process, there is a substantial amount of interaction with the Examining Attorney in accordance with the Lanham Act. If there are any issues with the trademark application, the PTO will issue an “Office Action,” which will detail the deficiencies or objections to the application. The applicant has 6 months to respond to the Office Action.
The nature of the issues could be a simple amendment to the identification of goods or something substantive such as a 2(d) likelihood of confusion issue. If there are no issues or if the issues are addressed and your application is approved, the PTO will publish the mark for opposition. Interested parties have thirty days to object to your application. If no oppositions are filed, the application, if based upon use, is registered and a certificate of registration will issue. If the application was based upon intent to use, the PTO will issue a notice of allowance and you have 3 years from that date to file an “allegation of use,” after which the mark will be registered and the PTO will issue a certificate of registration. If an opposition is filed, it is filed at the “appellate” section of the PTO, the Trademark Trial and Appeal Board (“TTAB”). The TTAB also hears ex parte appeals of issues such as a 2(d) likelihood of confusion refusal and cancellation of registered marks. The team at Erica W. Stump, P.A. has extensive experience and will help you navigate through the PTO trademark prosecution process. Ms. Stump has filed and prosecuted hundreds of trademarks with the PTO.
It is also possible to register trademarks in individual states. However, this protection is very limited. In Florida, for instance, a trademark registered with the state of Florida only provides the owner with rights in the geographic area in which the trademark is used. State registration usually only makes sense if the use of the mark is not in interstate commerce, or across state lines, which is uncommon with the Internet.
If you are going to be selling your products or offering your services outside of the United States, it is important to protect your rights in that country beforehand. The laws of each country differ. The laws of most countries outside of the U.S. give trademark rights based upon registration, not use. Thus, it is important to register your trademark internationally before you actually use the trademark outside of the U.S. Registration can be done via a foreign associate in other countries. The team at Erica W. Stump, P.A. has established a vast network of foreign associates over the last twenty years. There are also various treaties and conventions that provide for blanket registration of a region, such as the European Union. The Madrid Protocol is also an option to save money for multi-country registrations. Ms. Stump has 20 years of experience in prosecuting and managing trademarks internationally.