By Katie Jeremiah
A trademark helps a consumer identify a particular product or service. A trademark can be letters or words (Microsoft), a phrase ("I'm lovin' it"), a symbol (the Nike swoosh), an image (Apple Computer's apple), a shape (the Coca-Cola bottle), a sound (NBC's three-toned chime), or even a color (Owens-Corning's pink insulation or Tiffany & Co's signature blue). A trademark is not an idea. Protecting a trademark is necessary to prevent brand confusion with another source of similar products or services.
Trademark rights originate as common law rights by use in commerce as a trademark. These state-law rights may protect your business from infringement in your local geographic area, but federal registration of the mark provides substantial additional rights that are not available under state law.
If a trademark turf battle erupts over use of the mark, a mark that has been federally registered with the United States Patent & Trademark office ("USPTO") has a distinct advantage with presumptions of validity, ownership, distinctiveness, and exclusive right to use the mark in commerce, among other advantages. In limited instances, a mark that is properly registered may even allow its owner to collect damages, which may include loss of profits, actual damages, punitive damages, attorney fees, and costs of the infringement action.
Trademark registration may take 12 to 18 months from the time the application is submitted with the USPTO until a certificate of registration issues. While the approval process is time-consuming, the application itself is relatively straightforward. Here are a few tips to make the process go smoothly:
- Keep Track of the Date on Which You First Used the Mark. Record the date of your first use anywhere as well as the first time you used the mark in commerce. These dates are required for the application, and they may be the key to obtaining registration of the mark if another similar mark has an application pending or already registered.
- Decide How the Mark Will Be Used in Commerce. Goods and services are sorted into categories called "international classes." The USPTO has published a list of these classes, separating them into 34 classifications of goods and 11 classifications of services. For example, construction companies typically register services under Class 37, and some material suppliers, including asphalt, aggregate, and wood suppliers, register goods under Class 19. Your application fee depends on the number of classifications that are selected in the application.
- Properly Format the Digital Image. If your trademark consists of a design, the electronic application requires a very specific size and resolution format for electronic submission of the design file. Your attorney can help you navigate the trademark regulations to make sure that your electronic submission will be accepted in the USPTO's system.
- Gather Examples of the Mark Used in Commerce. The USPTO will not register a mark without evidence showing actual examples of use of the mark in commerce. This evidence is commonly referred to as a "specimen." Specimens may be photographs of the mark used on container labels or tags for goods, brochures, or advertisements for services, or a CD for a sound mark. If the mark has not yet been used in commerce, ask your attorney to submit the application with a filing basis indicating your intent to use the mark in commerce. When the mark is used in commerce, an amendment can be filed with the USPTO to change the filing basis so that the mark may register.
- Describe the Components of the Mark. The USPTO uses a numeric design code index to categorize verbal explanations of what a mark looks like. The design codes are divided among 29 categories, ranging from celestial bodies to household utensils to crosses, arrows, and symbols. The USPTO has a very helpful guidance document that illustrates examples of each design code. The key is to break down every component of your mark and identify that component with a design code. Once you develop your list of design codes, use them to search the USPTO system for conflicting marks.
- Search for Conflicting Marks. An attorney can assist you in performing a trademark search in order to verify that another identical or similar mark does not exist that is likely to be confused with your mark. If a similar mark exists, it may prevent your mark from registering. Because trademark application fees are not refundable, it is critical that a proper search be performed to identify conflicting marks before submitting the application.
- Discuss Common Pitfalls With Your Attorney Before You Apply. Invest the time to determine the likelihood of success in registering your mark before you submit the nonrefundable application fee. The USPTO commonly refuses registration of marks that are likely to be confused with another mark, marks that are "merely descriptive," or marks that use generic terms. There may be alternative methods of obtaining registration of these types of marks, and your attorney can help you with that process.
- Provide Notice to the World About Your Ownership of the Mark. Until the mark is registered with USPTO, use the (TM) symbol in connection with your mark to protect against innocent infringement. Once your mark is registered, you may use the ® symbol to provide notice of your rights in the mark.