Trademark Questions

Is a trademark registration mandatory

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No. In the United States, a trademark may be protected under the “common law” and by registration. A party may establish common law (unregistered) trademark rights by being the first to actually use the mark in a given trade area or geographical area. The first user can stop others from using confusingly similar marks in the area of its first use of the mark. A common law mark is a trademark that has been used but not registered.

Are there advantages to filing an application and obtaining a United States trademark registration

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Yes. The filing of a federal application will provide the applicant with a constructive use date, contingent upon a registration being issued, which will give the applicant rights relative to later users or applicants. In addition, the filing of an application provides the applicant with a right to the priority for corresponding foreign applications. A federal registration serves as constructive notice of the trademark owners trademark rights and is evidence of ownership of the trademark. It also permits the filing of lawsuit in federal courts. A registration may be filed with the U.S. Customs Service to prevent import of infringing foreign goods. Following five years of continuous use, a federal registration may become incontestable, that is, is may not be invalidated on the basis of prior third party use or descriptiveness.

What are the requirements for filing a trademark application in the United States

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A United States trademark application can be based on:

  1. Use of the trademark in interstate commerce or commerce between the United States and a foreign country.
  2. Bona fide intention to use the mark in interstate commerce or commerce between the United States and a foreign country.
  3. Ownership of an application filed in a foreign country within six months of the foreign filing date.
  4. Ownership of a foreign registration.

In each case, a written application must be filed, along with a drawing of the mark, and a government filing fee paid. If the application is based on use of the mark, it will be necessary to submit a specimen showing how the mark is actually used on the goods or in the offering of the services; the dates of first use anywhere and the date of first use of the mark in interstate commerce or in commerce between the United States and a foreign country will need to be included.

If the application is based on a bona fide intention to use the trademark, use must commence before a registration can be issued. Typically, during the application process, use may be demonstrated by filing an amendment to allege use with a specimen of use or by filing, after a notice of allowance is issued, a statement of use with a specimen of use. If the application is based on a foreign priority application or registration, a United States trademark registration cannot be issued until after a copy of the foreign trademark registration is filed.

What constitutes interstate commerce

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For goods, interstate commerce is the sending of the goods across state lines or from a foreign country to the United States, with the mark displayed on the goods or the packaging for the goods, if such use is bona fide and in the ordinary course of trade. For services, interstate commerce involves offering a service to persons in another state of the United States, or rendering a service in more than one state of the United States or which affects interstate commerce that Congress may lawfully regulate, for example, restaurants, gas stations, hotels, etc. An intrastate sale directly affecting a type of commerce which may lawfully be regulated by Congress may be sufficient “use in commerce” to support an application.

Should a trademark search be made before an application is filed for the registration of a trademark

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Yes. Although a trademark search is not mandatory, a search should be made before a mark is used or before an application for the registration of a mark is filed to determine whether it can be registered or if it will conflict with prior existing rights of others.

What can be registered as a trademark in the United States

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Any word, name, symbol or design, or any combination thereof, used or intended to be use, in commerce to identify and distinguish the goods or services of a party’s goods or services can be registered as a trademark. Registrations have been granted for marks that comprise slogans, the configuration of products, color of a product, sounds, and even smells where such have been shown to act as a trademark.

What is a service mark

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A service mark is a trademark that has been used to indicate the source of services rendered to others.

Does a domain name registration create trademark rights

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No. Merely registering a domain name with a Internet registry does not create trademark rights and has no affect on whether the domain name infringes another’s trademark. However, certain uses of a domain name may create common law rights but such rights will be subject to the rights of a prior user and prior trademark applications or registrations of confusingly similar marks.

Can a domain name or business name be registered as a trademark

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Domain names and business names (including corporate names, assumed names such as “doing business as” names) are not automatically a trademark or service mark. To qualify as a trademark or service mark, the name must function as a mark, that is, it must serve as an indicator of source for goods or services and not merely as an informational part of an Internet address used to access a web site or as referring to the entity. Thus, to be registrable as a trademark or service mark, domain names and business names must be used in a manner that will be perceived by potential purchasers as indicating source of goods or services. If the proposed mark is used in a way that would be perceived as nothing more than an Internet address where the applicant can be contacted, or as a name of a business without reference to its products or services, registration as a trademark or service mark will be refused.

What is a trade name

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A trade name is a name which identifies a business. A trade name may be a corporate name, a partnership name, a limited liability company name or an assumed business name (sometimes referred to as a fictitious business name). Businesses often use their trade name as a trademark (e.g. Coca-Cola, Apple) and, therefore, may acquire both trade name and trademark rights. Some states permit registration of a trade name in the State where the business has been formed or is using the name. The registration of a business name with State authorities does not confer any trademark rights to the name. When registering a trade name, State authorities do not consider whether a chosen name infringes another party’s trademarks. As a result, registration of a trade name in a State does not mean that the trade name will not infringe prior existing trademark rights.

What is an assumed name

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An assumed name is a name other than the real name under which an organization conducts business. As assumed name is sometimes referred to as a fictitious name or as a “dba” which is an abbreviation for “doing business as”. In some States, the term “fictitious name” is used to refer to the name that an organization submits in its application for authority to do business in a State where the real name is not available to be used. An organization must generally obtain authorization to use an assumed name to identify its business in States where it operates under the assumed name. In some States, assumed-name statutes prohibit any person or entity from transacting any business under an assumed name that is not its legal name, unless an assumed-name certificate is filed with the appropriate official agency. The consequences of a failure to file may include misdemeanor liability, the tolling of the statute of limitations in favor of adverse parties, and a prohibition from commencing or maintaining an actionin that name or for any contract or transaction by the entity except, generally, it may defend any civil action.

What is a disclaimer

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When an application for a trademark registration includes a descriptive or generic term, the applicant is required to disclaim the term before the trademark can be registered. A disclaimer is a statement that the trademark applicant or registrant does not claim exclusive rights to the use of a specified word or element of the mark. A disclaimer permits the registration of a mark that is registrable as a whole but contains matter that would not be registrable alone.

Is it possible that the Patent and Trademark Office will refuse to grant a trademark registration

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Yes. There are a number of reasons that could provide the basis for refusing a registration. The most common grounds for refusal of a registration may be summarized as follows:

    1. The mark is generic, i.e., the common name of the product or service.
    2. The mark comprises immoral, deceptive or scandalous matter.
    3. The mark disparages or falsely suggests a connection with persons, living or dead, institutions, beliefs, or national symbols, or brings them into contempt or disrepute.
    4. The mark consists of or comprises the flag or coat of arms, or other insignia of the Untied States, or any State or municipality, or of any foreign nation.
    5. The mark comprises a name, portrait or signature identifying a particular living individual, without that individual’s consent, or the name, signature, or portrait of a deceased President of the Untied States during the life of his widow, without written consent of the widow.
    6. The mark so resembles a mark already registered in the Patent and Trademark Office that use of the mark on applicant’s goods or services is likely to cause confusion, mistake or deception.
    7. The mark is merely descriptive or deceptively misdescriptive of the applicant’s goods or services.
    8. The mark is primarily geographically descriptive or deceptively geographically misdescriptive of the applicant’s goods or services.
    9. The mark is primarily merely a surname.
    10. The subject matter of the mark, as a whole, is functional.

How long does it take for a trademark registration to be issued

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It is impossible to predict how long it will take to obtain a trademark registration as the processing time will depend on the basis for the application and the legal issues that arise during the processing of the application. In general, the total pendency time will be at least a year to several years.

What is the duration of a United States trademark registration

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Registration issued after November 16, 1989 last for ten years from the date that the registration is issued provided that a declaration of use is filed between the fifth and sixth anniversary.

Registrations issued before November 16, 1989 last for twenty years from the date of registration provided that a declaration of use is filed between the fifth and sixth anniversary.

What is a declaration of use

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To avoid cancellation of a registration, the owner of the registration must file a Section 8 declaration, a specimen of use and pay a fee between the fifth and sixth years after the registration and during the year anniversary of the registration.

What is a Section 15 declaration

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A registration may become incontestable if its owner files a Section 15 declaration which certifies that the owner has continuously used the registered mark for five years, that the registered mark is still in commercial use, there is no adverse judgment against its validity, and there is no pending proceeding against it. An incontestable mark is immunized from certain challenges, although it remains subject to others. Section 15 does not apply to marks on the Supplemental Register.

Is it possible to renew a trademark registration

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Yes. Registrations may be renewed, provided that the mark continues to be used, for additional ten year periods. Under current regulations, an application for renewal may be filed within one year before the expiration of the registration. There is a grace period of six months after the expiration or a registration during which a renewal application may be filed with payment of an additional grace period surcharge. If no renewal application is filed before the end of the grace period, the registration will expire. If the ownership to the registration has changed since the registration or prior renewal date, ownership must be established, typically by recording a change of ownership document.

What is an opposition to a trademark

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Any person who believes that he will be damaged by the registration of a mark may oppose the same by filing a written notice of opposition stating the grounds therefor, within thirty days after the publication of the mark in the Trademark Official Gazette.

How can a cancellation of a trademark be secured

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Any person who believes he is being injured by the registration of a trademark in the United States Patent and Trademark Office, at any time, may file a petition to cancel the registration. The petition must state the grounds for cancellation.

What are the grounds for opposing the registration of a trademark and for a petition to cancel a registered trademark

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The registration of a mark can be opposed or cancelled, within five years of the date of registration, upon the following grounds among others:

      1. Likelihood of confusion, that is, prior use of the same or similar mark by another for the same or related goods.
      2. The trademark is merely descriptive or deceptively misdescriptive of the goods or services.
      3. The trademark is primarily geographically descriptive or misdescriptive.
      4. Registration was obtained contrary to prohibitions against the registration of a trademark that consists of or comprises immoral, deceptive, or scandalous matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols; or which consists of the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof; or consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.
      5. Abandonment of the trademark by nonuse or loss of distinctiveness.
      6. Fraud in the trademark application process.
      7. The trademark is the apt descriptive name (generic) for the goods or services.
      8. Registration of the trademark is contrary to the prohibitions of the law which prohibit registration of immoral marks, flags, etc.
      9. The trademark comprises matter that, as a whole, is functional.

A registration can be cancelled at any time upon the basis of the certain specified grounds including the following:

      1. The trademark becomes a common descriptive name (generic).
      2. The trademark has been abandoned.
      3. Registration was obtained fraudulently.
      4. Registration was obtained contrary to prohibitions of registrations of immoral, etc., flag, etc.
      5. It is used by an assignee to misrepresent source.

Is it necessary to use a registered trademark

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A trademark registration can be cancelled if the mark is abandoned. A trademark may be deemed to be abandoned when its use has been discontinued with intent not to resume use. Intent not to resume use may be inferred from the circumstances. Nonuse for a period of three years gives rise to a prima facie abandonment.

What is the difference between “TM” or “SM” and “®” symbols

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The “TM” and “SM” symbols, for trademark and service mark, respectively, are used to inform the public that a party claims trademark rights and are typically used before a federal registration is issued.

The encircled letter “®” is the federal registration symbol and is used to inform others that the trademark has been registered in the United States Patent and Trademark Office. Omission of the registration notice may preclude recovery of damages or an infringer’s profits prior to giving the infringer actual notice of the registration.

Do individual States provide for the registration of trademarks

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Yes. The States have statutes relating to trademark registration. These registrations are often secured where a mark is not used in interstate commerce and, in addition, because of certain advantages that the laws of some states offer in enforcement proceedings against counterfeit trademarks.

Does the creation of a business or a business name reservation create trademark rights

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Most states have procedures which allow the reservation of a corporate name prior to incorporation. The reservation of a corporate name or actual formation of an entity – corporation, limited liability company, etc. – including the name, does not create trademark rights.

Is there any requirement that a trademark license agreement be registered with the United States Patent and Trademark Office

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No. A trademark license agreement is a private contract. There is no legal requirement for recording trademark license agreements in the United States.

What provisions should be included in a trademark license

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A trademark license agreement will name the licensor, ordinarily the trademark owner, unless another party has been authorized to license the mark on behalf of the owner of the trademarks that are the subject of the license. The party or parties who are being granted permission to use the trademarks, namely, the licensee, will also be identified. The grant of the trademark license will specify whether the license is an exclusive or non-exclusive license. The properties being licensed, that is, the trademarks as well as any copyrights and other rights, will be identified as will the products for which the license is being allowed to use the licensed properties. The license agreement will identify the territory and specify whether the license is limited to specific trade channels. In the United States, it is necessary to include quality control provisions for the license to be valid. The license agreement will provide for compensation of the licensor, often in the form of a percent royalty, although other arrangements are also used. It will specify when payments are due, for example, within thirty days following each calendar quarter. It is customary to require the licensee to provide a report with the payment. If the license requires a percentage royalty, the royalty report will generally contain sufficient information to allow the licensor to determine whether the royalty has been correctly calculated. The licensor will usually be entitled to audit the licensee’s records on a periodic basis to verify the accuracy of royalty payments. Interest may be due for under payments or late payments and the cost of the audit may be shifted to the licensee if the audit reveals a discrepancy exceeding an agreed upon amount. The license agreement may also contain indemnification and insurance provisions, representations and warranties by each party, ethics in manufacturing provisions, initial marketing and sales dates and early termination provisions among other things.

What is Trade Dress

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The distinctive image of a product or product packaging is known in trademark law as “trade dress.” Trade dress can refer to a distinctive shape, color, graphics, or any combination of these elements that the public associates with a particular source. Trade dress is protectable under the same legal principles that protect trademarks.