Trademark Registration:
Long & Chybik
assists clients in all facets of the trademark registration process
for both State and Federal registrations.
Application Process
Depending upon the commercial use, a trademark may be
registered with the Federal government (most extensive protection), State
government or it may be protected by common law. In general the
preferred Federal registration process takes just over one year.
The application process begins with creation of "registerable" mark.
It is strongly recommended that a trademark
search be performed. This search examines the federal, state, common law and private databases for
pre-existing and/or conflicting marks that might be confused
with the subject mark and therefore act as a barrier to trademark
registration.
Continuing the process, a trademark application is drafted identifying the
appropriate trademark Class or Classes for the mark and its supporting
goods and services. The filing fee for the mark is imposed by the Federal
Patent and Trademark Office ("PTO"), and is set per application, per
Class. The PTO allows only one mark to be filed
for per application but the mark may be filed in multiple classes. If the
mark is to be registered into more than one Class, an additional fee must
be paid for each additional Class listed pursuant to the fee schedule.
Examination by the Trademark Office
After receipt of the application, if the application does not
meet the minimum requirements, then it is returned along with the fees to
the applicant. If the application is acceptable, it is assigned a
serial number and a filing date. A copy of the receipt of the
application is then mailed to the applicant.
Months after receiving the application, a TO attorney examines the
application to determine if the mark may be registered. If the mark
is determined to be unregisterable, the examiner will issue a letter of
explanation stating the reasons for rejection and a listing of any
corrections required for the application. The applicant then has six
months from the date of the mailing to respond to the examiners objections
or the application will be abandoned.
If the applicant's response to the examiner are insufficient to overcome
the objections, the applicant may then appeal to the Trademark Trial and
Appeal Board. This begins a lengthy process akin to a trial but in
the form of an administrative, transactional hearing.
Publication of the Mark
Provided that the mark is acceptable for registration, it will be
accepted for publication in the Official Gazette. A weekly
publication, the Gazette lists all of the marks seeking registration.
The function of the Gazette is to permit third parties, as owners of other
trademarks, the opportunity to review all of the marks that are applying
for federal registration. This allows other trademark owners to
notify the Trademark Office of their Opposition to any of the pending
marks.
Opposition Proceedings
If another party files a Notice of Opposition to the subject mark, then an
Opposition Proceeding will commence.
An Opposition proceeding is an opportunity for someone to challenge the
registration of the proposed mark based upon the premise that its
registration will in some manner cause damage to a pre-existing mark.
Opposition proceedings are managed by the Trademark Trial and Appeals
Board. If an opposition is successfully overcome the mark may be
registered.
Registration of the Mark
If no Opposition is filed then the mark will register
and a certificate of registration will issue in about 12 weeks after the
date that the mark was first published.
Notice: Intent to Use applications will follow a
different procedure.
Trademark Renewal
Unlike patents and copyrights (except for
pre January 1, 1978), trademarks must be renewed. Trademarks
must be renewed by the filing of a renewal application.
Trademark Maintenance
In order to preserve a trademark, a registrant must file
with the Trademark Office a timely affidavit or declaration of continual
use.
Trademark Protection
Watching is the primary defense to protecting trademark
integrity. Watching is done by monitoring the Official Gazette,
trademark journals and various industry publications for trademarks which
are being used or which are being applied for which cause damage to the
trademark(s) being protected. Employees are also very useful in
helping to guard trademarks.
While watching may be conducted in house, the job is frequently assigned
to a professional watching company that has been contracted to perform
these services.
Trademark protection can also include guidelines which
dictate how the subject mark is to be used by its owners, the public and
any marketing, promotional, franchise or other similar actions. The
purpose behind the guidelines is to retain the strength of the trademark
and prevent its dilution into a generic term.
Ultimately, defense can take the form of filing an Opposition, serving
cease and desist letters and filing suit in federal court.
Licensing
Once a trademark is established it may be utilized as a valuable revenue
generating source.
Licensing programs are designed to play upon the popularity of the
trademark to sell goods other than the ones originally associated with the
trademark. Franchising is another way to utilize the powerful marks
to make money. Licensing agreements embody the essential protection
and maintenance terms for the marks while establishing the respective
duties of the licensee and the licensor.
International Trademark Protection
Trademarks can be protected internationally. The
European Community Trademark, or CTM, was introduced in 1996. The
CTM offers one stop registration for all of the 15 member states.
The 15 countries of the European Union are Austria, Belgium, Denmark,
Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands,
Portugal, Spain, Sweden, and the United Kingdom.
We can provide additional information and assist you
in obtaining CTM registration.
Registerable Types of Marks: In
order to be registerable, words considered for the purpose of trademarking
must be fanciful, arbitrary or suggestive.
Fanciful
Fanciful words are words that do not have any meaning associated
with them. Typically, they are freshly invented solely for the purpose of
being a trademark for something new. These newly created words are
generally outstanding words for trademark purposes as they are considered
inherently "distinctive". One famous example of a fanciful
trademark is XEROX . What the heck is a XEROX? It's a
made up word that has grown in consumer awareness to be immediately
associated with a corporation that produces, among other things,
photocopiers.
When a fanciful mark is so successful that it is transformed into a
generic name for an entire category of products, it loses all of its
value. Aspirin really is, or was, a trademark. However, the
drug that it represented did was virtually unknown before Aspirin hit the
shelves. Consequently, consumers began to call any product that
contained this drug "Aspirin" regardless of who produced it.
As a result, Bayer, the original owner of the mark Aspiring, lost all
claim to this name. This is another reason why trademarks must
be carefully protected.
Arbitrary
Arbitrary words may also be an excellent source for trademarks.
Arbitrary words, similar to fanciful words, are good trademark material
since they too are inherently "distinctive". An arbitrary
word has an ordinary meaning (unlike the invented fanciful word), however,
this meaning is entirely unconnected to its use as a trademark. One
added benefit to arbitrary words over fanciful words is that they are
unlikely to be transformed into generic use ("Aspirin") and
thereby lose its value.
The use of the common word "apple", as in the
fruit, is a good example of an arbitrary marks when it is used as the name
for a computer company or "MacIntosh" for a line of computers or
"Yahoo!" for an Internet database/search engine.
Suggestive
Suggestive marks indirectly describe or refer to the product. Imagination
must be used to draw the inference of connection to some element of the
product. Suggestive marks are also considered inherently distinctive and
therefore make good trademarks.
Unregisterable Types of Marks: Unregisterable types
of marks could include those marks which may be identified as Descriptive,
Descriptively Misdescriptive, Generic, Geographicallly Descriptive or
Deceptively Misdescriptive, Surnames, Scandalous or Immoral, Deceptive.
