When it comes to the registration of a trademark, being careful is the best strategy. No one wants to pay a nonrefundable fee to the USPTO to realize later that the trademark is not registrable. Additionally, suppose the registration has errors, clerical or not. No business owner wants to go through correcting them before getting a real chance of registering the trademark. This analysis and the additional consideration made below are the factors that explain the legal fee you pay your attorney to file your trademark application.
For many individuals, businesses, and organizations trademarks are one of their most important assets. Whether seeking to identify, register or protect a trademark such as a company or organization's name, a logo, or a slogan, our law firm works with clients to assure protection and the development of a strategy that can last.
What is a Trademark?
A trademark is a sign or symbol capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. Trademark can be nominative (words), mix (words and logos), figurative (logos), sound trademarks, audiovisual (video), and tridimensional (also known as trade dress).
If you want to understand more about what we do, that is great! To know more, read our post here: Decoding the Trademark Application Fee
What is the best trademark?
A trademark is the "best" when it reflects the message and purpose of the owner, whether it is an individual, a business, or an organization. Additionally, when it comes to word trademarks, the best are made or invented words because they are the most unique. The higher level of distinctiveness of a trademark the better. There are four levels of distinctiveness when it comes to word trademarks: generic (nor protectable), descriptive (might be protectable to some level), suggestive, fanciful, and arbitrary. The best strategy to register an effective trademark is to conduct a clearance search and to understand the process of selecting the right one. Trademark Registration, Common Mistakes No One Talk to You ABout - Download Here.
The Trademark registration process
A federal trademark registration is obtained by filing an application, along with the requisite fee, with the U.S. Patent and Trademark Office (USPTO). An application may be filed on either Principal Register or Supplemental Register and is examined/prosecuted in the USPTO by one of many staff trademark attorneys.
If there are any grounds for refusing an application, the examiner will raise them in an Office Action. The examiner's objections must be fully resolved or withdrawn for the application to proceed to publication. Once a Principal Register application is published, third parties may object to the application by filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB). The application will proceed to registration if no opposition is filed or if an opposition is withdrawn or successfully defended. Supplemental Register applications proceed directly to registration once published. You can download our guide here!
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What We Do For You...
1. The analysis of the mark the client wants
The attorney and the client's first step is to have an open conversation about the trademark that the client wants. For purposes of this meeting, it can be essential that a member of the client's marketing team is present. The attorney wants to understand what the client wants in terms of the trademark in the short and long term, what the mark looks like, and how the client and the team use the trademark in commerce. This meeting is one the most important because it allows the attorney to determine: whether the client can register the mark, whether the client needs to modify the mark, if the client needs to make adjustments in terms of the use of the trademark in commerce, or if the client needs to come up with a new trademark.
2. The number of marks to be registered
After meeting with the client, the attorney understands the client's trademark and can explain whether the client's goals require one or more applications. The client may want to protect several elements of the trademark. For this purpose, the client can register the trademark as a word trademark without protecting any specific visual elements. Suppose the client also wants to protect specific visual or artistic components of the trademark. In that case, it is necessary to file two different registrations, one for the words of the trademark alone and one for the trademark with a visual design.
Additionally, some clients sell products using specific packaging or presentation. These features of a product can be classified as trade dress if they comply with specific requirements. Trade dress is another form of a trademark, and it can be registered too. Trade dress is, generally speaking, the total image and overall appearance of a product or service. It may include features such as size, shape, color or color combinations, texture, graphics, sounds, scents, and flavors, motion and moving images, particular business techniques, and the look and feel of a website.
3. The classes of good or services for mark
Another critical aspect of the attorney's services is understanding the client's business and what the trademark is doing for it. The client may have a business that provides several goods and services; this does not necessarily mean that the mark can be registered to identify all of them. To register a trademark, the USPTO requires that the applicant make a specific description of the type of goods or services distinguished by the trademark and submit proof of such use. That evidence is called a "specimen" of use in commerce.
Considering all this, the attorney must review how the client is selling or promoting its goods or services and what marketing or advertising materials are using. Some clients are unique entrepreneurs that attract customers by talking indirectly about what they sell. An example of this is Starbucks, which is known to promote itself by "selling you an experience," not a coffee. In terms of marketing, this strategy probably works. However, in terms of trademark law, an applicant must directly show to the USPTO examiner the goods or services promoted by the trademark. In terms of the USPTO, the applicant must show a "direct association between the mark and the goods or services.".
In sum, with the attorney's help, the client can assign a proper classification of goods or services to the trademark and submit the proper evidence to show the use of the trademark in commerce.
4. The registrability of the trademark and the assessment of risk
Finally, the attorney's most crucial task is to build a Trademark Clearance Report covering the analysis explained above and assess possible problems with the registrations if the client and the attorney don't make corrections. The report explains to the client the following:
- The type of trademark that will be registered.
- Whether there are prior similar trademark registrations or applications.
- Whether there are any conflicts.
- Whether there are any factors that the examining attorney can use to deny registration or request additional evidence.
It is also worth noting that in contrast with the research that a non-attorney can perform, a U.S. trademark attorney will conduct comprehensive research in order to determine the existence of grounds for denial, including, the existence of common law trademarks, the existence of business names similar to the trademark, the existence of marks registered in states where the client wants to do business, the existence of other legal issues like a constitutional bar to registration or right of publicity issues.
The report built by the attorney is crucial because it is the basis of the client's final decision to proceed with the trademark as it is or to change the trademark. Additionally, if, despite diligent work performed by the attorney, the USPTO Examining Attorney objects to the registration, the report serves as a basis and a guide to defending the client's trademark application.
- You pay your attorney to file a trademark application that will work. Even though the attorney cannot guarantee a 100% probability of success if the attorney has been diligent the possibilities of trademark application approval increase.
- A good trademark attorney will work with you to build the trademark application because the trademark must reflect the true identity of your business.
- A good trademark attorney will give you a Clearance Report that allows you to make an informed decision about whether to file or not your trademark application.
- It is important to take the time to review the report delivered by the attorney and to request a meeting with the attorney to clarify all the points that you don't understand.
- Building a successful trademark application is a teamwork process.
What Can We Do When There Are Two Similar Trademarks?
The similarity between trademarks is important in two scenarios, registration or litigation. Similarity is a concept usually used in the context of copyright law because similarity is important to establish copyright infringement or copyrightability. In the trademark law context, similarity is important because the USPTO wants to avoid the co-existence of trademarks that are likely to confuse. Similarity by itself is not an issue; however, if two trademarks are so similar that a potential consumer could be confused about the commercial source of goods or services, then trademark similarity can be a problem.
Trademarks' similarity in the context of registration
When an applicant applies to register a trademark, the USPTO examining attorney researches to establish if there are other similar trademarks already registered. If there are trademarks using similar words, logos, or features, this is not a problem if each trademark is used to distinguish different and unrelated goods or services. In other words, if IVON and IVONN are registered but one is used to mark financial consulting services, and the other is register to promote organic goods, this is unlikely to be a problem. Considering this, before an application for registration is filed, attorneys conduct a clearance search, which allows them to advise clients regarding the viability of a trademark or the existence of risk factors.
The specific case of famous trademarks
Even though similar trademarks in different industries can co-exist, when a trademark is very popular among consumers or when it has achieved recognition in more than one market, that trademark can be categorized as a famous trademark can prevent the registration of similar trademarks, even if they are used in a different industry. For example, even though the Nike logo is used especially to promote sports clothing and sports footwear, it is unlikely that Nike will stand by while another tries to register a similar trademark in the health industry or for purposes of financial coaching services. Nike has gained such a level of recognition that it is unlikely that trademarks similar to Nike's logo are registered.
What could happen if similar trademarks are filed for registrations?
If two or more similar trademarks are filed for registration before the USPTO, the examining attorney will probably issue an Office Action requesting the applicants to offer evidence that proves there is no likelihood of confusion; that is, evidence that proves that a potential purchaser would be able to distinguish between the applicant's goods or services.
Trademarks' similarity in the context of litigation
Trademarks' similarity issues arise in the context of litigation when a trademark owner files a complaint against another alleging trademark infringement, counterfeiting, unfair competition, and trademark dilution. In this case, the owner of a trademark states that another is using its trademark without authorization, that the coexistence of the two marks is likely to cause confusion, and/or that the defendant's goods or services are being promoted as if the trademark owner offered them.
Section 32 of the Lanham Act, 15 U.S.C. § 1114(1), governs trademark infringement claims. To file a claim according to this section, the trademark of the plaintiff must be registered. The basic elements of this cause of action are that:
- Plaintiff owns a valid and legally protectable trademark.
- Defendant used that mark or a similar mark without consent.
- Defendant's use of the mark at issue has caused a likelihood of confusion.
Trademark dilution is a cause of action raised by the owners of a famous trademark. The rationale behind trademark dilution is that an unauthorized third-party using a famous trademark is likely to reduce the public's perception that the famous mark signifies something unique, singular, or particular. There are two types of dilution: dilution by blurring and dilution by tarnishment.
- Dilution by blurring occurs when a famous mark's distinctiveness is slowly whittled away by a similar mark used in connection with different goods or services.
- Dilution by tarnishment occurs when a famous mark is linked to shoddy quality products or is portrayed in an unsavory context, thus harming its reputation.
Counterfeiting takes place when a third-party try to imitate another' mark, with the intent to steal, destroy, or replace the recognition of the original, or to deceive consumers.
Likelihood of confusion
The last concept that is important to explore thinking about similar trademarks' co-existence is likelihood of confusion. Likelihood of confusion is a legal term that trademark common law has developed with time. The most famous decision about likelihood of confusion is the In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). According to the Du Pont case, there are several factors that an agency can consider to determine if there is a likelihood of confusion between two marks, such as appearance, sound, connotation, and commercial impression. An agency may also consider the similarity and nature of the goods, trade channels, consumers, and marketing strategies.
- Similarity between trademark is important because the USPTO wants to avoid the registration of a trademark can be the source of confusion for consumers.
- Similarity can be a problem if two similar trademarks are distinguishing the same type of goods or services.
- Similarity is essential in the context of litigation because it is necessary to demonstrate a likelihood of confusion.