Trademark FAQs Page 2
Charles Carreon
Can you really do it without a lawyer? Actually, I would suggest having a consultation to learn how the USPTO website operates, to discuss the nature of your product or service, and get some help crafting the description of services. You should be forewarned that the USPTO examining attorneys do not all think the same way, and it is difficult to predict results in any given situation. The challenging part of doing your own trademark application will happen when the USPTO examining attorney sends you an “office action” that asks further questions, or requests that you make some decisions. For example, in the case of “Ice Man Packaged Liquors” the examining attorney would probably ask you to submit a “disclaimer” in specific form about the use of the words of “Packaged Liquors.” The right decision would be to accept this proposal, the sort of decision best made with the skilled assistance of an online Internet attorney.
Is that all there is to it? In many cases, yes. After the examining attorney concludes that the mark is appropriate for trademarking, he will direct it to be published in the “Trademark Gazette,” which will give notice to the rest of the world that the USPTO is about to register this trademark, and anyone with a competing mark will have an opportunity to file an opposition to the trademark. As a practical matter, this rarely happens; however, if it does, that's definitely the time to retain an attorney to represent you directly with the USPTO.
Is there any way I can lose a trademark once it has been registered? Yes, and this helps us focus on the most important topic of all — the requirement of continuing use in commerce, and the risk that a mark can be “abandoned.” Under the Lanham Act, a registered trademark is presumed to have been abandoned if the registrant does not use it in commerce for a continuous period of three or more years. 15 USC Section 1127. The consequence of abandonment could be that someone else could register the trademark as their own, if they could carry the burden of proving that the original registrant had abandoned the mark. As a practical matter, other people generally don't try to register the mark, they just start infringing it, and if you try to sue them for infringement later, they will claim abandonment at that point. Thus, the lesson to be learned is simple — if you want to keep a trademark, you must protect it. If you have a registered trademark, you're entitled to use the R in a circle symbol ® to notify others that the trademark has been registered. You can use this on all kinds of consumer products. If you discover that people are infringing your trademark, you should send them cease and desist letters, and you may need to commence litigation in order to prevent them from continuing the infringement.
How long does a registration last? As noted above, a trademark lasts for ten years, and can be renewed for another ten years so long as you do two things: (1) during the statutory time period between the fifth and sixth year, you must file a statement establishing that the mark is still being used in commerce, or an explanation for why it is temporarily not in use, and (2) you must file another application in the last year before the expiration of the ten year period, or the six-month grace period after its expiration, again establishing that the mark is still in use in commerce.
Suppose I can't register the trademark I want? There are two alternatives. First, the examining attorney will sometimes reject a request for registration in the “Primary Register” but will allow you to record it in the “Supplemental Register,” which is a secondary list maintained by the USPTO for marks that do not qualify for the Principal Register. A mark can only go into the supplemental register if it is being used in commerce and serves in some way to distinguish the registrant's goods and services from those of others. Using the supplemental register, you can record descriptive, surname or geographical term marks, such as “Slick Photography,” “Jones Used Cars,” or “Arizona Auto Parts.” If you get your mark on the supplemental register, you can use the R in a circle ® symbol, and can register the mark in other countries that honor reciprocal trademark rights. However, the fact that a mark is on the supplemental register does not give the registrant the right to exclusively use the mark, or allow the owner of the trademark to request the Bureau of Customs to exclude imports bearing the mark. A mark that is on the supplemental register does not provide constructive notice of ownership or a presumption of ownership in infringement litigation, nor will it support a later claim of incontestability.
What is the meaning of the ® symbol? It means that you have been successful in registering your trademark either on the primary or supplemental register, and are providing notice to the entire world that you are a diligent business person, that you respect the laws of the land, and that you have obtained the right to sue anyone for injunctive relief and damages under the enforcement provisions of the Lanham Act. If you don't use this notice, “no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.” Even though the rights you acquire by getting your mark registered on the supplemental register are not as powerful as those obtained from publication in the principal register, most people don't know that, and you should be able to get quite a bit of mileage out of a supplemental registration, if you are diligent in using the ® symbol.
What is the meaning of the “TM” symbol? You can always put the TM symbol after a mark in order to publicly claim ownership of it. Although the TM has no legal significance, it does look impressive, may deter infringement, and can defeat an infringer's claim that he did not know you had trademark rights in the name.
Can you really do it without a lawyer? Actually, I would suggest having a consultation to learn how the USPTO website operates, to discuss the nature of your product or service, and get some help crafting the description of services. You should be forewarned that the USPTO examining attorneys do not all think the same way, and it is difficult to predict results in any given situation. The challenging part of doing your own trademark application will happen when the USPTO examining attorney sends you an “office action” that asks further questions, or requests that you make some decisions. For example, in the case of “Ice Man Packaged Liquors” the examining attorney would probably ask you to submit a “disclaimer” in specific form about the use of the words of “Packaged Liquors.” The right decision would be to accept this proposal, the sort of decision best made with the skilled assistance of an online Internet attorney.
Is that all there is to it? In many cases, yes. After the examining attorney concludes that the mark is appropriate for trademarking, he will direct it to be published in the “Trademark Gazette,” which will give notice to the rest of the world that the USPTO is about to register this trademark, and anyone with a competing mark will have an opportunity to file an opposition to the trademark. As a practical matter, this rarely happens; however, if it does, that's definitely the time to retain an attorney to represent you directly with the USPTO.
Is there any way I can lose a trademark once it has been registered? Yes, and this helps us focus on the most important topic of all — the requirement of continuing use in commerce, and the risk that a mark can be “abandoned.” Under the Lanham Act, a registered trademark is presumed to have been abandoned if the registrant does not use it in commerce for a continuous period of three or more years. 15 USC Section 1127. The consequence of abandonment could be that someone else could register the trademark as their own, if they could carry the burden of proving that the original registrant had abandoned the mark. As a practical matter, other people generally don't try to register the mark, they just start infringing it, and if you try to sue them for infringement later, they will claim abandonment at that point. Thus, the lesson to be learned is simple — if you want to keep a trademark, you must protect it. If you have a registered trademark, you're entitled to use the R in a circle symbol ® to notify others that the trademark has been registered. You can use this on all kinds of consumer products. If you discover that people are infringing your trademark, you should send them cease and desist letters, and you may need to commence litigation in order to prevent them from continuing the infringement.
How long does a registration last? As noted above, a trademark lasts for ten years, and can be renewed for another ten years so long as you do two things: (1) during the statutory time period between the fifth and sixth year, you must file a statement establishing that the mark is still being used in commerce, or an explanation for why it is temporarily not in use, and (2) you must file another application in the last year before the expiration of the ten year period, or the six-month grace period after its expiration, again establishing that the mark is still in use in commerce.
Suppose I can't register the trademark I want? There are two alternatives. First, the examining attorney will sometimes reject a request for registration in the “Primary Register” but will allow you to record it in the “Supplemental Register,” which is a secondary list maintained by the USPTO for marks that do not qualify for the Principal Register. A mark can only go into the supplemental register if it is being used in commerce and serves in some way to distinguish the registrant's goods and services from those of others. Using the supplemental register, you can record descriptive, surname or geographical term marks, such as “Slick Photography,” “Jones Used Cars,” or “Arizona Auto Parts.” If you get your mark on the supplemental register, you can use the R in a circle ® symbol, and can register the mark in other countries that honor reciprocal trademark rights. However, the fact that a mark is on the supplemental register does not give the registrant the right to exclusively use the mark, or allow the owner of the trademark to request the Bureau of Customs to exclude imports bearing the mark. A mark that is on the supplemental register does not provide constructive notice of ownership or a presumption of ownership in infringement litigation, nor will it support a later claim of incontestability.
What is the meaning of the ® symbol? It means that you have been successful in registering your trademark either on the primary or supplemental register, and are providing notice to the entire world that you are a diligent business person, that you respect the laws of the land, and that you have obtained the right to sue anyone for injunctive relief and damages under the enforcement provisions of the Lanham Act. If you don't use this notice, “no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.” Even though the rights you acquire by getting your mark registered on the supplemental register are not as powerful as those obtained from publication in the principal register, most people don't know that, and you should be able to get quite a bit of mileage out of a supplemental registration, if you are diligent in using the ® symbol.
What is the meaning of the “TM” symbol? You can always put the TM symbol after a mark in order to publicly claim ownership of it. Although the TM has no legal significance, it does look impressive, may deter infringement, and can defeat an infringer's claim that he did not know you had trademark rights in the name.