The USPTO is not responsible for stopping others from infringing your mark. In the United States, trademark owners are responsible for protecting their rights in their marks.
Monitor USPTO filings. Although the USPTO Examining Attorney will conduct a search of the USPTO database for conflicting marks before allowing a new mark to be registered, sometimes they allow marks to proceed that you may believe will cause confusion with your mark.
State Registers and Directories. Other places to monitor are State registers, business directories, and the market in general. Monitoring for conflicting use is not mandatory but good practice.
The longer you use your mark and the more widely known it becomes, the more valuable it becomes. That value is generally referred to as your company’s goodwill. It is your business reputation for the quality of your goods and services.
If someone decides to compete with you selling similar goods and services and chooses to use a mark that is very similar to your mark, customers may be confused and buy your competitor’s goods and services thinking they are yours.
The possible confusion in the minds of customers over the source of goods and services stemming from the similarity of the marks raises trademark infringement issues.
Once you realize confusion is occurring, it is important to take steps to protect your mark. Failure to enforce your rights against others will ultimately weaken your rights and impair your mark’s value. However, before contacting the other user, it is important to confirm as best you can that the other user commenced use of the mark AFTER you did. Even if you have a USPTO registration and the other user does not, if the other user commenced use BEFORE you, there is a chance that the other user could cancel your registration and force you to use a different mark.
DO NOT WAIT AND HOPE THE OTHER USER GOES AWAY! If you discover a competitor using a mark that you believe may be causing confusion, seek professional assistance to assess the situation and determine how to best proceed.
Section 9
A Section 9 filing is your request to renew your registration. Section 9 renewals must be made every ten years. Each time a Section 9 filing is required, a Section 8 declaration of use must also be filed confirming you are still using your mark as registered.
Sections 8 and 71
Between the fifth and sixth anniversary of your USPTO registration date, you must file a Section 8 Declaration of Use to keep your registration active. Section 71 also a Declaration of Use applicable to USPTO registrations obtained using the Madrid Protocol. If a proper declaration of use is not timely filed, the USPTO will cancel your registration.
Section 15
At the time your Section 8 (or 71) filing is required, you may also qualify to make an optional Section 15 filing asserting that your registration has attained incontestable status. This is filing is optional.
To be eligible for a Section 15 filing, you must declare under oath:
–You have used your registered mark for five consecutive years on the goods and services described in the registration and you are currently using the mark as registered.
–There has been no final decision adverse to your claim of ownership of the mark or right to register your mark or keep it on the register.
–There is no pending legal proceeding before the USPTO or any court of law involving your mark.
Once your registration attains “incontestable” status certain aspects of your mark and registration become more difficult to challenge. It does not mean others cannot challenge your mark or registration. But incontestable status makes it harder for a challenger to win. It’s a one-time expense and generally considered worth doing.
You have probably seen these two most common symbols used with marks.
The notices show you are claiming rights in your mark. The TM symbol is an informal notice.
You can use the TM symbol immediately as soon as you begin using your mark.
The circle R symbol is legally reserved solely for use with registered marks. In the United States, the mark must be registered in the USPTO. Registering your mark on a state register will not suffice. Penalties can be levied for misuse of the circle R symbol.
Placement of either symbol is pretty much up to you. It should be close to the mark, but you may place it where you like. Size is also not mandated. However, it should be recognizable.
There is no legal requirement mandating use of either symbol. If the USPTO registers your mark and you never use the circle R symbol with your registered mark, the USPTO will not care. Nor will the USPTO care if you use or do not use the TM symbol before or after your mark is registered. However, there are benefits to using these symbols properly and consistently. It is good practice to properly use these symbols.
Proper use of your mark is key to maintaining your registration.
Registered Format
If you registered a word mark in Standard Character format with a typed drawing then you have some flexibility. You can use the mark in any font or style you like, in all-caps or lowercase or mixed caps, all fonts and styles, any color or mixed colors, and it will support your registration.
Use as Registered
To maintain your registration, you need to use your mark as registered. You are not prohibited from using your registered mark on other goods or services not described in the registration. And, you may modify your mark as well. Your registration does not restrict your use of your mark.
But you will need to show the USPTO that you are still using the mark as registered on the goods/services described in your registration if you want to maintain your registration. In some limited instances, non-substantive variations to your mark and goods/service may be allowed.
The USPTO trademark registration process is open to the public. Scammers have taken advantage of this and can obtain your name and address from the USPTO system and send you what looks like an invoice from the USPTO seeking payment of fees related to your application or registration. The USPTO provides a list of offers and notices from private companies, some of which are scams. None of these companies are part of the USPTO.
You cannot ignore a Notice of Opposition and expect your mark to be registered. You must do something. You will have a limited time to file an Answer or to seek an extension to do so.
If you have reasonable grounds to defend, then it is often worth filing a formal Answer to the Notice of Opposition. Doing so communicates your position to the opposer. It also helps to clarify the specific points of contention, both factual and legal.
After answering the Notice of Opposition there may be an opportunity to negotiate a resolution of the opposer’s concerns.
Absent a resolution by negotiation, you will need to determine what the likely cost will be to put forth a defense. Properly defending an opposition can be costly. What is the value of your mark? Will you be able to continue using your mark even if you abandon your application? Are there substitute marks that may be acceptable to you that might resolve the dispute?
There are practical business issues and legal issues that will need to be evaluated. It is best to seek legal advice to obtain better insight into the strengths and weaknesses of your situation.
If you receive a Notice of Opposition, you will need to determine whether it has merit and if you have good grounds to defend the registration of your mark. At times, the opposer’s concerns can be addressed by entering an agreement that results in the opposer withdrawing the opposition.
After the USPTO Examining Attorney approves your application it is published for thirty days. During this time others may contest the USPTO’s decision to register your mark by filing a written Notice of Opposition. The Notice of Opposition is like a complaint in a lawsuit. It explains why the opposer believes the USPTO’s decision to allow your mark to be registered will harm the opposer or is otherwise inappropriate. The proceedings are conducted before the Trademark Trial and Appeal Board and are similar to litigation in a court.
If your response to an Office Action fails to convince the USPTO Examining Attorney to withdraw the refusal to register, you can file a request for reconsideration. You can also, at that time, file an appeal to the Trademark Trial and Appeal Board (TTAB) should the Examining Attorney, upon reconsideration, continue the refusal. The appeal process involves filing a timely notice of appeal, preparing, and submitting proper documentation and legal arguments to the TTAB.
If you receive an Office Action, you must file a timely response, or your application will be considered abandoned. Absent your response, the USPTO will take no further action on your application, and you will not be entitled to a refund of your filing fees. An Office Action may raise non-substantive issues or substantive issues, or both. Your response must correct any non-substantive issues and must explain why you believe the Trademark Examining Attorney is wrong in refusing to register your mark on any substantive issue. To effectively persuade a Trademark Examining Attorney to withdraw substantive refusal will require knowledge of trademark law and the registration process.
The issues can range from minor non-substantive corrections to an address, clarification on goods and services, re-classification, or similar corrective issues.
A common substantive issue is a refusal to register based on likelihood of confusion between your mark and a prior pending application or registered mark. Other issues could be that your mark is merely descriptive of the goods or services or that it is primarily geographically descriptive. These issues go to the heart of whether you have selected a strong mark and thoroughly cleared your mark for use in commerce.
If you receive an Office Action, you must file a timely response. If you do not respond your application will be deemed abandoned. You will not be entitled to a refund of your filing fees.
An Office Action may raise non-substantive issues or substantive issues, or both. Your response must correct any non-substantive issues and must explain why you believe the USPTO Examining Attorney is wrong in refusing to register your mark on any substantive issue. To effectively persuade a USPTO Examining Attorney to withdraw a substantive refusal will require knowledge of trademark law and the registration process.
The issues can range from minor corrections to your street address, clarification on goods and services, or similar corrective issues.
A common substantive issue is a refusal to register based on a finding that your mark, as applied to the goods/services in your application, is likely to cause confusion due to its similarity to a mark in a prior pending application or active registration. Other substantive issues are that your mark is merely descriptive of the goods or services or that it is primarily geographically descriptive.
Initial Office Actions give you an opportunity to respond and present evidence and arguments to attempt to persuade the Examining Attorney to withdraw the refusal to register.
An “Office Action” is the title given to a formal written communication from the USPTO Examining Attorney.
Once filed, your application is assigned to an Examining Attorney for review and processing. The Examining Attorney will ensure the application is properly completed and conduct a search of the USPTO database for marks that are the same or similar to your mark for goods and services that are the same as or similar to yours.
If the Examining Attorney finds issues with your application, you will receive an Office Action describing all issues that must be addressed before your application will be allowed to move forward.
You must properly identify the “Applicant.” Is it you, as an individual? Is it your company? What difference does this make? Propre identification of the applicant is essential.
You must properly identify the mark. Will you apply to register your mark in Standard Character format or do you want to claim a specific rendering of your mark. Not sure? Book a Consult below.
If you are applying to register your mark in Standard Character format, then you can use a typed drawing. Otherwise, you will need an image file that contains a drawing of your mark. If you want to claim color, then a color version of your logo will be required. What difference does all this make? Book a Consult below.
You must properly describe your goods and services. If you are using the TEAS Plus application, then you should be using the USPTO’s ID Manual to select an appropriate description of your goods and services. Not sure how to do this, Book a Consult below.
The USPTO categorizes goods and services in different Classes. You will need to identify the proper Classes for your goods and services.
If you are using your mark in your business before you file your USPTO application, you must state the date of your first use of the mark anywhere and first use in commerce. Your “use” must be more the “token” use so that you can put a first us date in your application.
You will need to submit a specimen showing how you are using your mark on your goods or packaging or in advertising your services. This is not the same as the “drawing” requirement.
If you are selling goods, then you must apply your mark to your goods or to the packaging of your goods.
If you are selling services, then your mark must appear in your advertising material. Your advertisements must identify the same services identified in your application to register your mark and must display the mark too.
Your specimen can be a picture of your goods with your mark displayed on the goods or on the packaging for the goods, or a picture of your advertising that describes your services and displays the mark. Your picture must show both elements – the mark as applied to your goods (or packaging), or the mark as applied in your advertising of the services.
If you are not using your mark in your business but have a good faith (“bona fide”) intent to do so, then you must choose “intent-to-use” as your filing basis. You will not need to specify a first use date in your application, nor will you need a specimen of use to file your application.
However, you will need to start using your mark in commerce before the USPTO will register your mark. You must notify the USPTO when you start using your mark in commerce by timely filing either an Allegation of Use or a Statement of Use and include a proper specimen of use.
The USPTO filing fee applies to each Class included in your application.
You must properly sign using electronic signature.
You must pay the appropriate filing fee and submit your application via TEAS.
To use this form, you must select from the USPTO’s ID Manual your descriptions of goods or services. There are additional requirements to properly complete this application, but the USPTO filing fee is less than TEAS Standard.
You are not limited to using “canned” USPTO descriptions for your goods or services and have fewer mandatory requirements, but the USPTO filing fee is more than TEAS Plus.
You want your mark to be on the Principal Register, if possible. Inherently distinctive marks are eligible for registration on the Principal Register. Another reason to select a strong mark.
The Supplemental Register is for marks that are not inherently distinctive. The USPTO considers them incapable of functioning as a mark. Registering these on the Supplemental Register still has some advantages over no registration at all. A mark registered on the Supplemental Register can still be used to block someone else from registering a similar mark on the Principal Register. Also, after five years of continuous use of a mark registered on the Supplemental Register, you can apply to register your mark on the Principal Register and reference your Supplemental Register registration. The USPTO will presume your mark as acquired secondary meaning making it eligible for registration on the Principal Register.
Likelihood of Confusion: The “legal” basis for clearing rights is whether there is a “likelihood of confusion” between the mark you want to use on your goods or services and another mark that someone is already using for the same or similar goods or services. There are two factors that come into play: the similarity of the marks and the similarity of goods and services.
XYZ for bicycles. My use of the same mark for the same goods will be likely to cause confusion. People shopping for a bicycle will not know whether the bicycle is manufactured by me or my competitor – both bicycles will display the same XYZ mark.
XYZ PLUS for bicycles. Again, this is probably going to be considered likely to cause confusion. Although the mark has two “words” or elements, the lead element is identical to your desired mark and the goods, bicycles, are identical.
AB XYZ for bicycles. Leading elements are sometimes the “dominant” element that people focus on. Although the trailing element, XYZ, is identical to my desired mark, if AB is dominant, I can argue there is sufficient difference in the marks to avoid a likelihood of confusion. If I found ABC XZ or ABXZ or other combinations that tend to minimize the XYZ element, then I have stronger arguments that the marks are different and thus, even though the goods are identical, there is no likelihood of confusion.
XYZ for scooters or tricycles. There’s still likely to be confusion. Someone looking to buy a bicycle may also find scooters or tricycles offered for sale in the same store. Because the marks are identical the buyer may think the bicycles, scooters, and tricycles all come from the same manufacturer when in fact they come from two different manufacturers.
XYZ for kitchen tables. Although someone is using the identical mark, the goods are completely unrelated and not likely to be sold in the same place or “channels of trade.” Someone looking to buy a bicycle is not likely to see kitchen tables offered for sale in the bike shop (whether online or brick and mortar), and vice versa. I can use XYZ for bicycles without causing a likelihood of confusion over the mark XYZ for kitchen tables.
The assessment of “likelihood of confusion” is critical to your choice of a strong mark. If you select a mark that is a “close call” then you are probably not selecting a strong mark. You may get by with it and never have a claim or actual confusion but the closer the call the less distinguishable your mark will be in the marketplace. Strong marks are highly distinguishable.
Ownership: To register a mark in the USPTO, you must own or have a right to own the mark. In the United States, in general, whoever first uses a mark in commerce for a line of goods or services owns the mark for use on the same or similar goods and services. So, if I’m the first person to use XYZ to brand kitchen tables then I own the exclusive right to use XYZ as a brand for kitchen tables.
Clearance: The purpose of a “clearance search” is to see if someone else has grounds to claim ownership of the mark. If someone is already using the same or similar mark for the same or similar goods, you may not be able to claim ownership in your application. A search of the USPTO database can reveal whether someone else has applied for or obtained a registration for the same or similar mark for the same or similar goods/services. Again, the concept is pretty simple to say, but applying it can be complex. Remember, it’s not just an identical match that can be problematic. It’s also “similar” marks. Think about this: How many ways can you spell “cat”? Three, maybe four or five? How about 14! A thorough search will cover spelling variations to discover possible “similar” marks. The same holds true for design marks and those are as complex to search, if not more so. And that’s just the mark itself. The other important element involved in a search is the similarity of the goods/services. Again, searching seems simple at first blush. And it can be simple in some instances. But often it is not.
What to Search: You should always search the USPTO database. Other information sources include state trademark databases, business directories, and other sources of business information. If you expect to use your mark in the U.S. and internationally, then searching foreign trademark registers would be warranted.
A strong trademark is inherently distinctive. It is easily distinguishable from other marks used for similar goods or services.
Fanciful – coined or “made-up” terms with no dictionary meaning.
“Exxon” for gasoline
“Kodak” for cameras and film
“Rolex” for watches
Arbitrary – words that have a meaning but that meaning does not describe or suggest any characteristic of your goods/services.
“Camels” for cigarettes
“Ivory” for soap
“Horizon” for banking services
Suggestive – words that have a meaning that suggests a characteristic of your goods/services but that require imagination to connect with the goods/services
“Citibank” for banking services
“Spray ‘n Vac” for aerosol rug cleaner
“Contact” for self-adhesive paper
Descriptive – words that have a meaning that merely describe an aspect of the goods/service – these are only protectable with “secondary meaning.”
The words “Extra Strength Pain Reliever” describe characteristics of the goods – a strong pain reliever product. But over time, because the words have been used repeatedly in advertising, purchasers learned to associate these descriptive words with a single source/manufacturer, Bristol-Myers, makers of Excedrin branded pain reliever. The learned association is the “secondary meaning.” Other examples:
“Jet” for spray nozzle
“Baby Brie” for mini-size brie cheese
“Quik Print” for fast printing and duplicating services
Generic – words that are so commonly used to describe the goods/services that every competitor needs to use them – these are not and cannot become trademarks.
“Consumer Electronics” for title to a magazine about consumer electronics
“Gold Card” for credit card services
“Super Glue” for strong-bonding, rapid-setting glue
“Surgicenter” for surgical center
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Fanciful – coined or “made-up” terms with no dictionary meaning.
“Exxon” for gasoline
“Kodak” for cameras and film
“Rolex” for watches
Arbitrary – words that do not describe or suggest any characteristic of the goods/services.
“Camels” for cigarettes
“Ivory” for soap
“Horizon” for banking services
Suggestive – words that suggest a characteristic of the goods/services but that require imagination to match with the goods/services
“Citibank” for banking services
“Spray ‘n Vac” for aerosol rug cleaner
“Contact” for self-adhesive paper
Descriptive – words that merely describe an aspect of the goods/service – only protectable with “secondary meaning.”
The words “Extra Strength Pain Reliever” describe a strong pain reliever product. But over time, purchasers learned to associate these words with Excedrin made by Bristol-Myers. The learned association is the “secondary meaning.”
“Jet” for spray nozzle
“Baby Brie” for mini-size brie cheese
“Quik Print” for fast printing and duplicating services
Generic – words that are so commonly used to describe the goods/services that every competitor needs to use them – these are not and cannot become trademarks.
“Consumer Electronics” for a title to a magazine about consumer electronics
“Gold Card” for credit card services
“Super Glue” for strong-bonding, rapid-setting glue
“Surgicenter” for surgical center
