1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in the United States. Federal registration is prima facie evidence of ownership, validity, and the right to use the mark. Registration can help generate royalties through licensing. Registrations can be recorded with U.S. Customs to help prevent the importation of counterfeit products.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, because of the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark may be less expensive.
3. What is registrable?
Word marks, design marks, letters not forming words, slogans, colors (when used in a specific shape or design), configurations, sounds, smells, and trade dress, provided that they are distinctive of the products or services, are registrable.
4. Can a trademark be registered for retail and like services?
Yes. Provided the type of store or field of merchandise sold is clearly identified in the description of services (e.g., 揜etail [indicate type or field, e.g., clothing, camera, department] stores?.
5. How are domain names protected?
Domain names may be registered as trademarks in the United States Patent and Trademark Office provided that they are used as trademarks in commerce. The registration of a domain name with one of the recognized registries (e.g., .com, .biz, .info) does not establish trademark rights. It is advisable to consult a U.S. trademark attorney when registering a domain name as a trademark.
6. Should a trademark be searched before filing?
Yes. Applications are officially searched for prior marks, but this takes several months and covers only federal registrations and pending applications. A prefiling search is recommended because it can save the applicant the cost of filing an application for a mark that is not clear and the cost of investing in a trademark that later must be changed. A prefiling search is therefore recommended to avoid unnecessary costs entailed by adopting, developing, and filing a mark in which someone else has prior rights. A prefiling search can also help the trademark owner with its filing strategy.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a U.S. trademark attorney. A trademark owner also can file an application without an attorney, but this is not advisable.
8. What information must be provided before filing?
An applicant must provide a power of attorney, a signed application, which states that the applicant is the owner of the trademark, a description of the goods or services with which the mark is used, the date of first use of the mark in interstate commerce in the U.S. or foreign commerce with the U.S., or a statement that the applicant has a bona fide intention to use the mark, and that the applicant believes that no one else has the right to use the mark similar enough to cause confusion. Foreign applicants are advised to designate a U.S. representative but are not required to do so. If there are specimens (required for applications based on use), they must show the mark as actually used on the goods or in connection with the services.
9. Is local registration the only option, or are there international alternatives?
A U.S. application only has effect in the U.S. and its territories and possessions. The United States acceded to the Madrid Protocol with effect from November 2, 2003.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. The applicant may file one application for more than one class for an additional official filing fee per class.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a U.S. application, the filing date of the home application can be claimed as the filing date in the U.S. Similarly, if an applicant抯 home country is a member of the World Trade Organization, it should be possible to claim the home filing date. It is advisable to consult a U.S. trademark attorney in this situation.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
Yes. To maintain a trademark registration, a trademark owner must continue with a bona fide use of the mark in commerce in the ordinary course of trade. A declaration stating that the mark is in use must be filed between the fifth and sixth years after the registration issues. Failure to file this declaration will result in the cancellation of the registration. A trademark will be deemed abandoned if use is discontinued with an intent not to resume use. Such intent can be inferred from nonuse of the mark for three consecutive years. Resumption of use may cure unintentional nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not materially alter the mark covered by the registration, use of a variation of the registered mark should not affect the enforceability of the applicant抯 registration. However, if the difference is material, a new application may be necessary. It is not possible to amend a registration if the mark has been materially changed.
14. Is there any advantage to using a trademark before filing an application?
Yes. Although an application can be filed based on the intent to use a mark, trademark rights are established and registrations issued in the U.S. based only upon actual use. Also, marks that are not sufficiently distinctive in themselves to be registrable can acquire the necessary distinctiveness through continuous and substantially exclusive use in the U.S.
15. For an application to be valid, are there any particular requirements that must be met?
Anyone who uses a mark, or has a bona fide intention to use the mark, may apply to register a trademark.
16. What information is first published about an application/ registration and when is it published?
The name and address of the applicant, a graphic depiction of the mark, the filing date of the application and the specific goods and services covered by the approved application (not necessarily in this order).
17. What kind of examination (if any) will a new application undergo?
An application is examined to determine if the mark complies with local trademark law and regulations. An official search is also carried out for prior conflicting marks that can be cited against the application.
18. What response to official objections is required?
An applicant has a non-extendible six-month period in which to reply to official objections. The goods/services of the application might need to be amended, the applicant may have to file evidence of use of the mark, conflicting marks must be distinguished, arguments by need to be made in support of the inherent distinctiveness of the mark, and other formal requirements may need to be met.
19. How long is the registration process?
If it is a use-based application and no official objections are raised, the application should proceed to registration within eight to ten months after filing. However, because official objections usually occur, the average time from filing to registration is approximately 15 to 20 months. Applications based upon an intent-to-use the mark can remain pending for up to about four years, depending on when the applicant begins using the mark and submits a statement of use.
20. What rights does an application confer?
An application can be cited against a subsequent application and confers a nationwide constructive date of first use when the registration issues. It is possible to oppose subsequent or earlier applications if the mark has the earlier date of use. It is also possible to oppose subsequent intent-to-use applications even if the subsequent applicant becomes the first actual user of the mark. U.S. applications can be the basis for foreign applications.
21. What is the legal effect of a registration?
A certificate of registration of a mark upon the Principal Register is prima facie evidence of the validity and ownership of the mark and of the exclusive right to use the mark in commerce with the specified goods or services.
22. Can an application be opposed or cancelled by third parties?
Yes. An application can be opposed up to 30 days after it is published for opposition (or within extensions of that time period). Third parties may petition to cancel registrations that have not become incontestable through five years of continuous use.
23. Can an application or registration be assigned?
Yes. Applications based on use and registrations can be assigned, but applications based upon an intent-to-use cannot be assigned prior to the filing of a Statement of Use, with very limited exceptions.
24. Must an assignment include goodwill?
Yes. Goodwill must be assigned with the mark.
25. Does an assignment have to be recorded?
No. However, the consequences of failing to record an assignment can be very serious, so recordal is strongly advised. A written assignment, duly acknowledged and recorded, is prima facie evidence of the assignment, which enables the assignee to invoke the registration against third parties.
26. Can an application or registration be licensed?
Yes. It is advisable to consult a United States trademark attorney in this situation.
27. Does a license have to be recorded?
No.
28. What is the territorial limit of a registration?
A federal trademark registration provides protection in the entire geographical scope of the U.S., its territories, and possessions.
29. How long does a registration last?
The term of registration is ten years from the date on which the registration issues, and is perpetually renewable for ten-year periods as long as the mark remains in use.
30. What is required to renew a registration?
An affidavit of use, specimens of use in each class, and payment of a fee are required.
31. Is it necessary to indicate a trademark registration on goods or services?
No. Marking is optional. But, ? 揜egistered in the United States Patent and Trademark Office,?or 揜eg. U.S. Pat. and Tm. Off.?for a registered mark, ?for a pending or unregistered trademark, and SM for a pending or unregistered service mark, may be used. Use of a notice of registration is optional, but failure to use such notice precludes recovery of damages, except on proof that the defendant was duly notified of infringement, and continued after notice.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes. See http://www.uspto.gov. |
