Gerdes Law assists clients with trademark clearance, legal opinions, choosing and creating trademarks, registering those marks, obtaining international protection through the Madrid Protocol or individual country registration and all post registration flings.
What is a Trademark?
A trademark is a word, name, symbol, device, or other designation that is distinctive of particular goods or services and used in commerce in such a way that identifies those goods or services and distinguishes them from those of competitors. Trademark protection is available under the federal Lanham Act, as well as at the state level through state and common law.
Choosing a Good Trademark
In general, a trademark must be distinctive or recognizable as an identifier. This means that generic words like "computer" or "potato chips" can never earn trademark protection on their own, unless they are used in an unusual way. On the other hand, use of a word that under most circumstances would be generic, on a product unrelated to the meaning of the word can be a great mark, such as "Apple" for computers. The best choices are arbitrary marks or words created solely for the purpose of being a trademark. Examples of "arbitrary" or "fanciful" marks include, "Exxon," "Xerox," or "Rolex".
Ted Gerdes can assist your company with choosing a mark that is sufficiently distinctive, and obtaining clearance for that mark. He will advise about and obtain the appropriate search of existing registered marks, pending applications, business and trade directories, phone books, the Internet, and any other source that might be helpful to determining if someone else is already using a confusingly similar mark.
In the United States, registration of a trademark or service mark is not required. However, registration provides several important benefits. It notifies the world that you own the mark, provides a presumption that you are the mark's owner should that be challenged, and gives you the ability to stop infringers in federal court. After five years, a registration becomes largely incontestable. The mark also shows up in conflict searches, so competitors can find your mark in a search and avoid infringing upon it. You also earn the privilege of using the circled R to announce that your mark has been registered and it is presumptively yours.
Registration provides additional procedural tools. You can use U.S. Customs to enforce ownership and prevent importation of infringing goods, and use U.S. registration as the basis for registering for trademark protection in other countries.
The registration process begins by filing a trademark application with the United States Patent and Trademark Office (USPTO). The application will be assigned to a Trademark Examiner who will analyze the application and determine whether the proposed mark is eligible for registration. The examiner may raise questions about the application, the mark or request additional information. This portion of the process can take a number of months, depending upon the type of issues raised and how simple they are to resolve. Once the approved mark has been published in the Official Gazette, anyone can object to the registration within 30 days of publication. After clearing this hurdle, a registration is issued. The entire process can take anywhere from 9 months to several years, depending upon whether substantive issues are raised by the examiner or an opposition is filed.
There is also the Intent to Use application process for marks associated with products that are being developed but are not quite ready for distribution or sale. The process is similar to the "in use" registration process described above, except that after publication is complete and no objections are filed, a Notice of Allowance is issued in lieu of a registration. Once this is issued the applicant has six months in which to file a Statement of Use, or a declaration showing the mark is now in use in commerce. If use cannot yet be shown, extensions to file the Statement of Use may be filed, in six-month intervals, for up to three years. A Statement of Use may be filed at any time during any extension period and, once accepted, a registration will be issued.
Even after a mark has been registered, there are a number of filings that are mandatory and monitoring activities that are strongly recommended. Between the fifth and sixth anniversary from the date of registration, a Statement of Continued Use must be filed with the trademark office. A statement of incontestability, often recommended, may be filed at the same time. Between the ninth and tenth anniversary, a renewal must be filed as well as every ten years thereafter for as long as one owns and uses a mark. These filings are mandatory and failure to file results in the abandonment of the registration. The trademark office does not send reminders. In addition, it is recommended that new trademark filings be monitored to insure that a similar mark of a competitor does not make it through the registration process.
An experienced trademark attorney can help you anticipate USPTO concerns and help you handle any questions or objections that may arise in this process.
Article Alert: The topic of trademarks registration is explored in "The Value of Trademark Registration."
International Trademark Protection under the Madrid Protocol
International protection under the Madrid Protocol is a treaty that affords a mark the same protection as a mark registered in each of the signatory countries. The trademark is easier to manage because only one application is required and changes can be recorded in one step. Any trademark owner who resides in, has a commercial establishment in, or is a national of, the U.S., and who has filed an application or received a registration from the USPTO, can file for international trademark protection. If you qualify, you must fill out an application and file it with the USPTO, which then takes administrative steps and forwards it to the International Bureau, which manages the process, for further analysis and approval. This is process can be complex and expensive, but it is much easier than having to file in each individual country, as was required before the effective date of this treaty.
Consult Experienced Legal Counsel
The process of choosing, clearing, and registering a trademark or service mark is complex, and mistakes often result in expensive legal costs and could result in you being ineligible to obtain registration for the mark. To find out how Ted can help you, contact Gerdes Law today.