Trademarks - A Guide to Filing and Prosecuting a Mark is an easy to understand and practical book on the trademark application filing procedure. The guide provides the reader with concise information for conducting a trademark search, filing a trademark application, responding to an office action and opposing a trademark filing or registration. The book includes actual responses filed in response to office actions where the marks were finally allowed by the U.S. PTO trademark examiners, sample specimens filed with the U.S. PTO, and a sample response to a notice of opposition. This book is a must read for individuals and entrepreneurs who wish to file their own trademarks.
Trademarks
A Guide to Filing and Prosecuting a MarkBy Ash Tankha Lynn BoutAuthorHouse
Copyright © 2009 Ash Tankha and Lynn Bout
All right reserved.ISBN: 978-1-4389-7768-3 Contents
DisclaimerChapter I Introduction To TrademarksWhat Is A Trademark?..................................................................1Benefit Of Federal Registration Of A Trademark........................................3Chapter II Selection Of The Right TrademarkImportant Tips For Choosing The Right Mark............................................8Checklist.............................................................................12Chapter III Conducting A Trademark SearchKinds Of Searches.....................................................................14Registrability Search At U.S. PTO.....................................................15Trademark Search At WIPO..............................................................16Chapter IV Electronic Filing Of A Trademark ApplicationBenefits Of Electronic Filing.........................................................17Step By Step Instructions For Filing A Trademark Application..........................18Chapter V Responding To An Office Action - With Sample ResponsesResponses To Trademark Rejections.....................................................21Sample Responses To An Office Action..................................................23Chapter VI Maintaining Trademark RegistrationDeclaration Of Continued Use (Section 8 Affidavit)....................................32Declaration Of Incontestabilty (Section 15 Affidavit).................................33Renewal Of Registration...............................................................34Chapter VII Trademark OppositionTrademark Opposition Procedure........................................................36Abandonment Of The Mark As A Ground Of Opposition.....................................37Fraud As A Ground Of Opposition.......................................................37Trademark Dilution As A Ground Of Opposition..........................................38Defenses To An Opposition Proceeding..................................................39Notice Of Opposition..................................................................40Chapter VIII International Trademark ApplicationsThe Madrid Protocol...................................................................45Member Countries Of The WIPO..........................................................48Schedule Of Fees......................................................................49Individual Country Fees...............................................................54Chapter IX International Classification Of Marks.....................................62Chapter X Sample Specimens...........................................................67Table Of Authorities..................................................................69
Chapter One
INTRODUCTION TO TRADEMARKS
Trademarks in the form of words, symbols and designs, mark possession over a particular product or service. Trademarks have been used since the very beginning of human civilization. The most distinguished marks were found in the Roman era where manufactured bricks were stamped with seals to identify ownership. Human history is filled with marks found on cave walls, ceramic stamps on pottery, stone seals and many more.
Common law trademark dates back to the year 1266 in England, to the law known as the "bakers marking law" where bakers would mark the bread that they baked for sale. This common law developed into our current trademark law. With a history that dates back to the medieval ages, it is not surprising that trademarks are used today by almost all businesses today to distinguish their product or services from of its competitors.
WHAT IS A TRADEMARK?
Trademark
Amongst the various definitions of a trademark, the definition given by the United States Patent and Trademark Office (U.S. PTO) is probably the most comprehensive. The U.S. PTO defines a trademark as ".. a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others."
To put it simply, a trademark identifies the source or origin of goods or services and distinguishes it from a competitor's product or services. Therefore, a trademark represents the goodwill of a product or service and grants the owner of the trademark the right to prevent others from using the same or a confusingly similar mark for similar goods or services.
More than one trademark may be used by an entity to identify the source or origin of goods or services. For example, Coca-Cola[R], Coke[R]and It's the Real Thing[R] are registered trademarks of the Coca-Cola Company and are used to identify the Coca-Cola beverage.
Service Mark
When a trademark is used in association with services of a product and not goods, the mark is termed a service mark. For example, a service mark would be used by a dry-cleaning service, an accounting service, a restaurant, etc. to identify the service rather than the goods they market.
As used in this book, the terms "trademark" and "mark" refer to both trademarks and services marks.
Logo
A logo is a graphical sign or representation which together with its unique typeset forms a trademark. When a word that is descriptive of goods or services cannot be trademarked, it may be possible to get protection for that word when the word is dressed up as a graphical mark and the word is disclaimed from the mark. The graphical representation of the word may make the word distinctive. Disclaiming a word means that the applicant will not claim protection or right to the disclaimed word apart from the mark. An example of a logo is Apple Inc.'s logo of an apple with a bite.
Trade name
A trade name is a trademark for the name of an entity or business. A trade name cannot be registered as a federal trademark if the trade name identifies the origin or source of goods or services. For example, the tradename Coca-Cola[R] is registrable as a trademark for the Coca-Cola brand of beverage.
Collective Mark
A collective mark is usually owned by an association or organization, the members of which use the mark to distinguish their goods or services from the goods or services of other associations or organizations. For example, the collective mark CA[R] is used by accountants to identify their membership in the Institute of Chartered Accountants, and the collective mark Realtor[R] is used by real estate agents to identify their membership in real estate services provided under this mark.
Certification Mark
Some manufacturers or organizations use a mark called a "certification mark" to certify that goods or services provided under the certification mark comply with the requirements of the manufacturer or organization and are accredited by that organization. A certification mark may be displayed on the product of the manufacturer as a certification of such compliance with the regulations of an organization. A certification mark is typically owned by an organization and licensed to entities that comply with the owner's requirements. The Good Housekeeping Seal Of Approval for home products is an example of a certification mark
Trade Dress
A trade dress refers to the visual appearance of the product - its packaging or image. It does not refer to words, logos, etc. The Law Lexicon, explains that trade dress is "the nonfunctional physical detail and design of a product or its packaging, which indicates or identifies the product's source and distinguishes it from the products of others".
The purpose of trade dress protection is to prevent others from using the same or confusingly similar packaging or design for their products. Like trademarks, trade dress may be registered with the U.S. Patent and Trademark Office. The process for federal registration of a trade dress is similar to that of registration of trademarks and service marks. The application must be filed under the owner's name under either an actual use application, or an intent to use application. If the application is filed under actual use, an appropriate specimen showing the goods in commerce must be submitted along with the application for registration. The trade dress to be protected must be adequately described in the application. If no conflicting trade dress has been previously registered, the application will be published for opposition. The trade dress will be registered after the opposition period, if no opposition was made within the period. The registration will last for 10 years and may be renewed for successive 10 year periods as long as the trade dress is still being used.
BENEFIT OF FEDERAL REGISTRATION OF A TRADEMARK
A trademark provides two primary rights to the owner of the mark - the right to register the mark, and the right of exclusive use and ownership of the mark. The right of ownership of a trademark accrues when the mark is first used in commerce. Thus, under common law there is no requirement for the owner of a trademark to register his mark to claim his right to the ownership of the mark.
However, federal registration of the mark in the U.S. PTO has several benefits. Most companies, businesses and even individuals are aware of this fact and registration of one's trademark has now become a business necessity to protect the brand of the company's product or service. In fiscal year 2007, the U.S. PTO received 394,368 trademark applications.
Some advantages that federal registration of a mark confers on the owner of the mark are:
1. Constructive notice to the public A registered trademark provides constructive notice to the public of registrant's ownership of the mark. This means that a third party which uses the registrants mark, with or without knowledge of the registration of the mark will be found by a court to infringe the registered mark and be liable for money damages.
2. Legal presumption of ownership of the mark in all 50 states in the US A registered trademark provides the registrant a legal presumption of the ownership of the mark, and allows the registrant the exclusive right to use of the trademark throughout the United States on goods or services listed in the allowed registration of the mark. This also means that although the registrant may be using the mark only in a certain state or area of the US, a competitor cannot use the registered mark, or a mark confusingly similar to the registered mark in any area or state of the US.
3. Valuable corporate asset A registered trademark is a valuable corporate asset and may increase the valuation of a company. For example, the Coca-Cola(r) mark is valued in the millions of dollars.
4. Increases the marketability and licensing of the mark Federal registration of a trademark increases the marketability, transferability, sale and licensing of the registered trademark.
5. Identifies the availability of a mark in trademark search A registered trademark is readily identified in a trademark search which decreases the probability of selection of that registered mark or a confusingly similar mark by another entity for use on that entity's goods or services.
6. Provides brand-name recognition of the product or services A federally registered trademark allows the registrant to mark his product with the symbol [R]. Federal registration of the mark increases the brand name recognition and visibility of the product or service.
7. More easily allows registrant to issue a cease and desist letter A registered trademark makes it easier for the registrant to negotiate with, or stop a third party from infringing the registered trademark.
8. Allows the registered mark to become "incontestable" After 5 years of continued use of a registered mark, the trademark becomes "incontestable" which limits an attack on the invalidity of the registered mark by a third party.
9. Ability to bring an action concerning the mark in federal court A registered trademark gives the registrant the right to bring an action concerning the mark in Federal Court, for example, sue an infringer of the registered mark in Federal Court.
10. Ability to bring an action for lost profits and damages in a federal court A registered trademark gives the registrant the right to recover lost profits, damages, court costs and attorney fees under the applicable Federal statute.
11. Prevent importation of infringing goods A registered trademark allows the registrant to file the federal registration of the mark with the US Customs Service and have infringing foreign goods that are marked with the registered mark, seized or stopped from being imported into the US by the US Customs Service.
12. Prima facie evidence of ownership and validity of registered mark A registered trademark provides the registrant prima facie (i.e., on its face) evidence of the validity of the registered mark and ownership of the mark. In an action in court, the court will assume that the registrant has the exclusive right to use of the mark and the registrant will not have to prove that the registered mark is the property of the registrant.
13. Ability to take criminal action against counterfeiters in federal court A registered trademark allows criminal action to be taken under the applicable Federal statute in federal court against persons who counterfeit the registered mark.
14. Depreciation For federal tax purposes, a federally registered trademark is treated as an asset and allows the mark to be depreciated as an intangible property.
15. Allows priority of US registration to be claimed in foreign trademark U.S. registration of a trademark provides a priority date to a later filed foreign trademark application.
16. Extends monopoly created by a patent Since trademark rights remain in effect as long as the mark is used and the maintenance fee on the mark paid, a trademark is a powerful tool to extend the initial monopoly created by patenting the product.
Another rationale for growth in registration may be attributed to the globalization and growth of multinational companies, simply because registration in one country may be used as the basis for registration in other countries. A company that wishes to export internationally may accidentally infringe the rights of other trademark owners in foreign countries unless their mark has been previously registered in that country.
International registration of marks may be obtained under the Madrid System of International Registration of Marks through the World Intellectual Property Organization, Geneva, Switzerland. An international application for a trademark under the Madrid System needs to be based upon a previously filed application or registered trademark in the national patent office through which the international application is filed.
Filing an international application under the Madrid System (also referred to as the Madrid Protocol) allows registration and protection of the mark in several countries by the filing of one international application under the Madrid Protocol, thereby reducing the time consuming procedure of filing national applications for the mark in each country where the applicant wishes to register the mark. An international filing of the mark under the Madrid Protocol allows the owner of the mark to make changes to the application, pay filing and other fees and renew the application through one agency instead of following cumbersome administrative procedures in each country that the applicant selects for registration of the mark.
The increase in registration of marks may also be explained by the fact that unregistered marks are inherently at risk. Apart from the obvious reason that the mark may be used by another person for similar goods and services leading to consumer confusion, there is the likelihood of the same person registering the mark before the original mark is registered.
In addition, a trademark owner now has the responsibility to register his mark in order to protect it from potential infringers.
PROPER USE OF TRADEMARKS
Improper use of trademarks may result in loss of trademark rights granted by federal registration of the mark. Prior to registration of a mark, the owner should use the notation TM after the product, for example Ryan Blankets[TM] or the symbol [SM] after a service, for example Pet Grooming [SM]. After the mark is federally registered, the owner should mark the product with the [R] symbol, for example Coca-Cola[R], or otherwise indicate that the mark is federally registered, for example, insert the following after the name of the goods or service "Fed. Reg. TM, U.S. PTO".
Use of the word trademark as a substitute for the goods or service they identify may result in loss of trademark rights. To preclude such loss, the goods or services that the trademark identifies must be entered, immediately after the trademark. For example, if the trademark Acro identifies a brand of soccer shoes, the phrase "Acro[R] shoes" must be used when the Acro[R] mark is used to avoid the Acro[R] mark from becoming generic and synonymous with soccer shoes. Several registered trademark products, for example "aspirin", "cellophane", etc., have lost their trademark rights as the trademark has become generic and is now associated with the class of the trademarked product, in this case with an analgesic and transparent tape, respectively.
PRINCIPAL AND SUPPLEMENTAL REGISTER
The U.S. PTO maintains two types of registers for trademarks - the Principal Register and the Supplemental Register. The marks registered on the Principal Register are primarily marks that have been allowed by the U.S. PTO examiner as unique, non-descriptive and not likely to be confused with prior registered marks. Such marks enjoy several benefits such as constructive notice of the registrant's claim to the ownership of the mark,the right to incontestability after five years of continued use, the exclusive right of the owner to use the mark in commerce in connection with the goods and services, etc.
Marks considered descriptive of the product by the U.S. PTO examiner are not registered on the Principal Register and may be registered on the Supplemental Register for a period of 5 years to acquire "secondary meaning". The mark may then be filed by the applicant on the Principal Register when it is deemed to have become distinctive. The advantage of registration on the Supplemental Register is that the owner will be able to prevent others from registration of the mark in connection with similar goods and services. The owner is also permitted to use the [R] symbol, file a foreign application based on a registration on the Supplemental Register and file an infringement suit in a Federal Court.
TRADEMARK LAW IN THE UNITED STATES
U.S. trademark law was initially based on common law, more precisely the law of unfair competition. It was not until 1881 that Congress drafted an act under the Commerce Clause that unified the existing law under a federal statute which was further revised in 1905. At present, the law of trademark registration and procedure is codified in the Lanham Act, enacted by Congress in 1946.
The Lanham Act codifies provisions for registration of trademarks on the Principal Register and the Supplemental Register, trademark infringement, false advertising and trademark dilution. The more recent and updated version of the Act also includes a chapter on the Madrid Protocol and international filing of a trademark.
(Continues...)
Excerpted from Trademarksby Ash Tankha Lynn Bout Copyright © 2009 by Ash Tankha and Lynn Bout. Excerpted by permission.
All rights reserved. No part of this excerpt may be reproduced or reprinted without permission in writing from the publisher.
Excerpts are provided by Dial-A-Book Inc. solely for the personal use of visitors to this web site.
