05 / 10 / 2019

Trademark What to Expect

Trademarks

What is Trademark and Why use it?

A trademark is a mark by which the public identifies a business; it is like a brand of a business. It protects brand names and logos used on goods and services of a business. Trademarks can be logos, business names, phrases, slogans, words, labels, product names, sounds, or combinations thereof, so long as they are used to identify a source of goods or services. Such a mark helps loyal customers recognize that business’s products and services and are likely to try its new line of products or services. So, to prevent other businesses from usurping the fruits of your labor, you would want to register your business’s mark with the United States Patent and Trademark Office (USPTO). You can even take a step further in protecting your mark by recording your registered mark with the U.S. Customs and Border Protection through its e-Recordation application.

Only the owner of a registered mark can use, produce, copy, or profit from its mark. While the TM symbol, the SM symbol, and the ® symbol are all trademark symbols, only a registered mark gets to have the ® symbol appended to indicate to the others that the mark uniquely identifies the business. Having this ® symbol legitimately appended to your mark, you can bring an infringement action in federal court against anyone who tried to steal or misuse your identity. Additionally, if you don’t register your mark, common law trademark only protects your mark within your immediate geographic area, which may not be enough, especially when the internet is the way to expand one’s business nationwide.

Unfortunately, the registering process is hideous and lengthy with lots of waiting time. According to trademark law, when there is conflict, the first commercial user of a trademark owns it. For this reason alone, you would want to use your mark as soon as possible, even if it is not yet registered. So, during the waiting time, you can use the TM or the SM symbol next to your mark. Even though these two symbols have no legal meaning or protection against infringement, using them can indicate to competitors of your intent to claiming your design for your business. But, on the same token, you can be sued by a registered-mark owner if your unregistered mark is too similar to their registered marks. In a trademark infringement suit, damages sought often refer to how much money the company or person lost due to confusion in the marketplace. Before using your unregistered mark, to help avoiding legal trouble, search USPTO for that mark to make sure that no similar mark is already registered by another.

How to get it.

The first step is to design and select a mark that you want to represent your business. Some product or service marks may be difficult or even impossible to protect if keeping others from using them is hard due to the nature or characteristic of that mark. Also, while the application fee is relatively low, between $200 and $375, it is non-refundable if your application is denied. So, before submitting your trademark/service mark application, you should consider (1) whether there is a similar mark that has already been registered by another; (2) whether the mark is registrable, that is, is it too generic in nature or too geographically named; and (3) the strength of the selected mark.

You can view your submitted application as early as 14 days of electronic filing. But remember to check the status of your application every quarter after the initial filing of the application to avoid missing certain deadlines. You can also retrieve any notices and instructions from there.

A complete submitted application will be assigned a serial number and an USPTO examining attorney who determines whether it complies with all applicable rules and statutes. The examiner’s review of the application includes a search for conflicting marks and an examination of any written statements and any attached drawings or specimens. This part of the process alone may take months.

If there is any issue with your application, the examining attorney will send you an Office Action letter explaining any substantive reasons for refusal, as well as any technical or procedural deficiencies in the application. If you fail to rectify the deficiency within six (6) months, your application will be declared abandoned.

If there is no issue with the application, it will get approved; that is, the mark gets to be registered. Registered marks will be published in the USPTO’s weekly publication called “Official Gazette.” Unless the mark is registered under Section 66(a), any party may file an Opposition, objecting to the registration of the mark, within thirty (30) days of publication or file a request for more time to file such an Opposition. If no opposition is timely filed or the opposition was unsuccessful, you will get a letter from USPTO in about 3-4 months notifying you of the next steps of the application.

Section 66(a) rejects all opposition filings from an opposing party if the mark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the United States. If you are a domestic business but want to make use of the Section 66(a) exception when registering your mark, you can claim that you “intend to use” the mark in commerce under Trademark Act Section 1(b). If you do this, the USPTO will issue a Notice of Allowance about two months after the date the mark was published. You then have six (6) months from the date of such notice to either submit a “statement of use” (SOU) or request for a six-month extension to file a SOU. If your SOU meets minimum filing requirements, it will get reviewed by the examining attorney. Note that this exception helps you sail through the publication process more smoothly; it does not mean that the mark is registered. The process and timeframes are similar to the pre-publication stage: if there is any issue or deficiency in your SOU at this stage, you will still get the Office Action letter from the examining attorney. If your SOU is untimely submitted or you are unable to satisfy all objections in the Office Action letter, the examining attorney will issue a final refusal, which may be appealed to the TTAB with an additional fee. If and when the SOU is approved, the USPTO will issue a registration for your mark within approximately two (2) months.

While your mark only needs to be renewed every ten (10) years, you still must file specific maintenance documents every 5-6 years to keep it alive and to prevent cancellation for non-use. You do not want your registration to be cancelled or expired because you will have to start the entire process again with a brand-new application, and approval the second time around is not guaranteed.

Can you trademark a URL?

In this era, trademark protection does apply to the digital world through the Anticybersquatting Consumer Protection Act of 1999. URL stands for Uniform Resource Locator and the Domain name is part of a URL. Technically, a URL is a web address written with a protocol such as “http,” “https,” “ftp,” “telnet,” “mailto,” or “rdp.” It is a way of identifying the location of a file on the internet, such as an image, a web page, or a software program. For example, in this URL, https://vethanlaw.com/dallas/, “vethanlaw.com” is the domain name. While a URL directs a browser to a specific web page, what is familiar and recognizable to the public is the domain name. To the public, a domain name is a web address that identifies a website. Therefore, it is the domain name that you would want to protect.

A domain name can be registered as a trademark if it is used in a way that also identifies a source of particular goods or services. Note that not all domain names can be registered as trademarks with the USPTO. Like a logo or a business name, a domain name also must be unique and distinctive from other already registered trademark. Keep your domain name simple, pronounceable, short, and easily spelled with a suggestion for the nature of the commerce on your website. Avoid using surnames, geographic names, or common words, such as “bestshoes.com,” “cosmetics.com,” or “texascotton.com” because those are too generic. Generic terms often cannot be trademarked because they describe whole categories of products or services. If you can distinguish your generic domain name through substantial sales and advertisement, you may get it approved, but it may be an uphill process. But even if it does not get approved by USPTO as a registered trademark, you can still use it because you have registered it with an accredited domain name registrar where you bought your website address; it's just that you risk having to stop using the name and may be liable for compensation if you are being challenged in an infringement action by an owner of a trademarked name that is similar to your domain name.

In summary, it’s similar to becoming a legal business entity. To be recognized as a legal business entity, you would register your business name with the Secretary of State. To have a web address visited by the public, you would register your domain name with an accredited domain name registrar. But these types of registration by themselves do not make a domain name or business name a trademark. For it to become a trademark, you must also successfully register it with the USPTO, and you must show that it is used to identify a source of goods or services and not just a business name or a web address for a customer to find.

Lastly, the timeframe and procedure are the same in trademarking your domain name as they are in trademarking other things, such as logos. If everything goes smoothly, you should expect to get an approval within a year.

This overview is intended as general information on the subject only. If you would like to know more about the tailored counsel that we at VLF can provide for your specific executive compensation or severance situation, please do not hesitate to contact us directly.

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