Trademark overview

The process that a typical U.S. trademark and/or service mark application follows on its way to registration begins with the client’s selection of a potential mark, whether a company name, a new product name or a logo. Then call on Shapiro Law to:

  • Advise as to risks and benefits related to use and registration
  • Prepare and file an application to register a mark
  • Prosecute the application in the U.S. Trademark Office
  • Maintain rights in the mark and registration.

Selecting a mark

All trademarks are NOT created equal. Trademarks can be strong or weak. Made-up (fanciful) marks like Exxon® and Kodak®, and arbitrary marks, such as Apple® and Sun® are the strongest (arbitrary means that the term is an actual word but is used as a mark in connection with a service or product unrelated to the meaning of the term).  Suggestive marks, e.g., Microsoft®, Chicken of the Sea®, and Coppertone®, that don’t actually tell anything about the product are the next strongest. Merely descriptive marks, e.g., Little Tavern™ for a restaurant/bar or MultiAccount™ for debit cards, that communicates something immediate about a feature or attribute of a product are considered weak, and can be either unregistrable or more costly to register, and can be difficult to enforce and protect.

If you seek exclusive ownership of a mark to control the mark in the marketplace and to prevent others from using that mark, choose a strong mark. That said, bear in mind that a strong mark can require a sizable marketing budget, since the only connection with the relevant consumers for the mark, the product, and the source is created through advertising and promotion. Alternatively, one can seek merely to use a selected mark without a challenge and a weak mark may be acceptable.

Clearing a mark

After selecting a strong mark, clearance is essential in avoiding a claim of infringement. Trademark litigation is inevitably costly to both parties and, if successful, can result in a forced name change and the consequent loss of goodwill associated with the mark, along with the costs of selecting, clearing and adopting a new mark and the costs of re-launching the product with a new name.

One complication in determining whether a mark may be available is that courts recognize that consumers have imperfect memories, so variations between marks that may seem significant may be considered insignificant under U.S. trademark law. For example, DYNATECH and DYNATEK are considered confusingly similar for auto parts; CORVUS and CORVO are considered confusingly similar for wine; MYSMILEKIDS and MYSMILE are considered confusingly similar for dental information and health information, respectively.

Another complication is that a trademark owner in the U.S. can acquire trademark rights through simply using the mark, without ever registering it. These common law rights can trump someone else’s applied-for or even registered mark, if their first use in commerce occurred first. However common law rights are restricted to the geographic area in which the product/service is sold under a given mark, whereas federal trademark rights offer nationwide protection based on interstate use. That said, with the Internet as a common primary means of marketing, the geographic area for a common law mark can be nationwide.

To have a reasonable degree of certainty, Shapiro Law recommends these clearance activities before adopting a given mark:

 1. Conduct a Preliminary Scan

We start by learning whether an identical mark may already have been adopted for the same, similar or related products. We review the U.S. Patent and Trademark Office (USPTO) database for federally registered and applied-for marks, conduct a Google® search and assess whether the corresponding domain name and popular social media usernames are available.

If the preliminary scan indicates that the mark may be available, the next step is conducting a Comprehensive U.S. Availability Search.

2. Conduct a Comprehensive U.S. Availability Search

As discussed above, variations between marks may not be considered significant under trademark law.  A comprehensive search enables you to look more thoroughly at identical and variant marks that are disclosed from a range of sources, particularly common law references such as databases, directories and periodicals. While a Google search may identify an obvious common law reference, it is insufficient for the purposes of confirming a given mark is available for adoption.

Shapiro Law issues a written report assessing the availability, strength, and enforceability of the proposed mark. Inevitably there is some risk associated with the adoption of a given mark, even a made-up (fanciful) mark. Each client will need to assess its risk tolerance before adopting a proposed mark.

3. Consider an International Review

If you plan to do business outside of the United States, Shapiro Law will assess potential international conflicts and recommend an initial foreign filing strategy (both when to file and where to file first). The firm’s well-established network of intellectual property attorneys in world cities extends Shapiro Law’s reach around the globe.

Registering a mark in the U.S.

1. Prepare and file application. Describing the goods and services is key to obtaining comprehensive protection. This description is a balance between the specificity required by the Trademark Office and attempting to use broad language. The national priority date is effective as of the filing date, contingent upon ultimate issuance of registration. Priority is one of the most important factors in trademark disputes.

2. Receive first office action (if any) from the Examining Attorney (approximately six months after filing the application). There may be mere technical issues to resolve or substantive issues.

3. Respond to office action six months after its mailing date–this is a non-extendable deadline.

4. Receive further office action issued where the initial response to an office action does not persuade the Examining Attorney to withdraw his/her refusal (usually three to four months after filing a response to the previous office action).

5. Respond to a subsequent office action within six months after its mailing date–this, too, is a non-extendable deadline.  If a “Final” office action issues, a response may be (1) compliance with the requirements stated in the office action [if possible], (2) a Request for Reconsideration [which, to be effective, must contain additional information, evidence, or arguments]; and/or (3) a Notice of Appeal.

6. Publication for Opposition. Once the Examining Attorney is satisfied that the application complies with all requirements, the Examining Attorney will pass the mark to publication. The application is often published about three months after compliance with the last office action. The mark is published for a one month period, during which an opposition or an extension to file an opposition may be filed by parties who feel they may be damaged should registration issue.

7. Registration or Notice of Allowance issued.  Approximately three months after the publication period, if use has already been alleged, the registration certificate will issue. If use has not been alleged, a Notice of Allowance will issue.

8. Statement of Use.  If a Notice of Allowance issues, an applicant has six months to submit a Statement of Use or a Request for Extension of time to submit a Statement of Use.  Acceptable specimens of use described below. The deadline for proving use of the mark may be extended in six-month increments for a total of 36 months after the Notice of Allowance has been issued.  Once the Statement of Use has been approved by the Trademark Office, the registration certificate should issue approximately three months later.

Maintaining a registration in the U.S.

9. Affidavit of use.  Between the fifth and sixth year after registration, an affidavit of use must be filed or the registration will be canceled.  In addition, an affidavit of use must be filed in the year prior to the end of each registration term (every 10 years).

10. Application for Renewal.  The registration must be renewed by the tenth year following registration.

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