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Registration of A Trademark - Two concepts we need to keep in mind before starting.

Posted by Giselle Ayala Mateus | Nov 25, 2020 | 0 Comments

A trademark is that unique symbol you chose to distinguish what you do, what you sell, or what you and your enterprise represent. Unlike other assets that a person, an entity, or an organization has, a trademark gains value with time. Thus, it is very important to know how to protect it. Now, many clients come to the office with the intention to register a trademark, but they have not really thought carefully about the process or those preliminary considerations that could save them time and money. 

The process to register a trademark starts way before filing. To properly protect and register a trademark, it is important to think about two concepts: Clearance and Use in commerce. Why are these two concepts so important? Let's take a closer look at these concepts to understand.

1. Clearance

Before you select the symbol or logo that fits the personality of your enterprise it is very important to go through a process of clearance. In other words, a process to clear the air and determine whether you can or you cannot protect such a symbol. The process of clearance involves consulting databases to know if a symbol has been registered or not, researching the internet to know if the symbol is being used by others in the same industry, and investigating if there are any third-party rights that could raise legal concerns. 

a. Consulting databases to know if a symbol has been registered or not

It is a best practice to consult official databases to know if a symbol is already registered. In the United States, registration can be done at the State level, with the trademark state offices, or at the National level with United States Patents and Trademarks Office (USPTO). This is very important because a registration gives notice to the world that a trademark right has been claimed, but it also informs the public about the party claiming that right, the class of goods or services covered by the registration, the initial date of use, the registration #, and more. 

The identity of the party claiming a trademark right

In many cases, what a client wants is to register its own mark to develop a business project, promote a not-for-profit entity, or to develop a brand. However, in some cases, a client is interested in registering a variation of an existing trademark or in getting a license to use an existing registered trademark. To get a license to use a trademark, this is, the right to use another's trademark, a person needs to know who is the owner. This appears in the registration database. Additionally, public databases also include information about the attorneys who registered the trademark in the first place. This information can be useful too. 

The class of goods or services covered by the trademark registration

Even if a trademark is already registered, it could be used by others in the market. It is important to know that a trademark registration protects the exclusive right to use the mark, in connection with the class of goods or services covered. This means, that if you register a trademark to sell shoes and clothing, someone else could register the same mark to promote social services or events. Each registration covers certain classes of goods or services.  Why? Well, when a trademark is registered it is taken out of the market as a competitive tool, and others in the same industry cannot use it to promote the same kind of goods or services.

The initial date of use 

When it comes to trademark rights in the U.S., it is important to understand that the use of the trademark is fundamental. Trademark rights can exist even before a trademark was registered. Accordingly, the date of use indicated in the registration is good information if you want to enforce or defend your rights over a trademark. Additionally, if you are sued for trademark infringement, the first use date is important too. For example, a plaintiff could be asking for monetary damages accrued since 2018. However, if the trademark registration states that the initial date of use is January 2019, the success of such a claim is unlikely. 

The registration #

The registration # identifies the trademark registration and allows the public to do research related to the history of the trademark to know whether the trademark is alive, whether it has been sold, abandoned, or renewed, among others. 

b. Doing the typical Google or Yahoo Search

We have already said that trademark rights can be acquired by use or by registration. Accordingly, there may be trademarks that are valid and owned by others, but which have not been registered. In some cases, not every trademark is registered. For example, in industries where certain trends stay for a short period of time, companies do not register every trademark, this is because by the time the registration is complete the company may be already launching a new collection with a new temporary trademark.  

Additionally, using commercial search engines to do research allows you to see what kinds of trademarks are being used in the industry and what industries are associated with the kind of trademark or symbol that would be registered. Finally, by conducting the typical Google or Yahoo general search you can identify additional symbols or words that are usually in connection with the relevant trademark or industry. This is important because those same web results can be used as evidence by trademark examiners to reject a registration. 

c. Research of business names

When it comes to registering a trademark it is also important to know whether there is any business or entity name already registered using the same words that make your trademark. You most likely want to know what businesses, if any, are registered in the state or states where you will be doing business. However, if this an e-commerce business and you are most likely doing business nationally, you can hire an expert to do the search, or if you can focus the search on those states where you are more likely to have customers. By doing this research, you will be reducing the risk of being sued for using a business name that has been registered or is otherwise protected. 

d. The right of publicity search

If a trademark is figurative and portraits the characteristics features of a person, it may be better to determine whether those features are so manifest that a particular person could claim that the trademark is actually portraying her or him. This is important because if a trademark portraits the specific features of a specific person, it is usually required to ask for permission before moving forward. Otherwise, you could be sued and forced to pay a considerable monetary judgment. 

e. Industry-specific search

Finally, it is also important to know if the trademark at issue is actually registrable. There are certain industries and professions that have specific requirements when it comes to the use of trademarks or logos, or when it comes to doing advertising. These requirements or restrictions are intended to protect the public and to avoid the use of misleading or deceptive trademarks. According to the Trademark Manual of Examining Procedure (TMEP), it is absolutely prohibited to register marks that are likely to mislead or deceive consumers. Deceptive marks may include marks that falsely describe the material content of a product and marks that are geographically deceptive. 

2. Use in Commerce

Trademark rights can be acquired by use or by registration. If a person uses a trademark in commerce, this person gets what is called "Common Law" rights. A person can use those rights to oppose a trademark registration or to register a trademark. On the other hand, if a person registers a trademark, this person not only acquires official ownership of the trademark, by means of the registration the world is put on notice of this person's rights over the trademark. Then, if someone else uses that trademark she can be sued for infringement and forced to pay damages. 

That said, why is use in commerce so important? Well, a registration cannot be completed unless the person who claims rights over a trademark uses the trademark in commerce. According to TMEP a trademark applicant must use the mark in commerce. Of course, there are situations where an entity or a person has not started to use the trademark. For instance, because it is part of a marketing strategy.

If a person files a regular trademark registration application, also known as an "application based on use in commerce",  the mark must be used in commerce as of the application filing date, in fact, the application must include a clear statement that the mark is in use in commerce, verified in an affidavit or declaration. If this verified statement is not filed with the original application, it is still necessary to make that clear statement. TMEP Section 901. 

If a person wants to start an application but the trademark use has not commenced, a person may file an application based on "intent-to-use". In this case, the applicant must show actual use of the mark in commerce by filing documents and paying additional fees within certain time frames before the mark may be registered.

Additionally, this application must be accompanied by a "verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application" TMEP Section 902. Regarding this "good faith" intent to use the trademark, the verified statement accompanying the application is sufficient evidence of good faith. However, it is worth highlighting that if another person takes legal action to oppose the trademark registration, that person may question that good faith intent to use. Thus, it is very important that the applicant carefully documents those efforts to use the trademark in connection to the goods or services indicated in the application. An applicant can document those efforts by showing evidence of product development or market research.

In conclusion...

Before starting the registration of a trademark think about clearance and use in commerce. In regard to clearance, the analysis is focused on determining whether the applicant can register this trademark and whether there is anyone with a better right or anyone with a viable claim against the registration. In regard to the use in commerce, the focus is on whether the applicant issuing the trademark now (or at the time of filing), whether it is in social media, a video or on printed publicity, or whether the applicant wants to use the trademark in a near future. By taking care of these two initial considerations, an application for trademark registration is most likely to succeed. 

About the Author

Giselle Ayala Mateus

Giselle Ayala Mateus is a NY attorney with comprehensive experience in transactional law, creative agreements, business formation, and immigration law. She is also the founder of FOCUS a not-for-profit project focused on supporting entrepreneurs and artists.


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