Your Guide to Trademark Registration

Federal Trademark and Service Mark Registration
By Peter E. Morgan, Ph.D.

The following provides a brief overview of the procedure for filing a trademark or service mark and describes the services BRISKIN, CROSS & SANFORD, LLC can offer in relation to your trademark or service mark application and continuing rights. This overview, of course, should not be taken as an exhaustive or authoritative explanation of the law in this field or the requirements for filing a federal trademark or service mark application. Please feel free to discuss with us your individual needs for trademark or service mark registration or protection and to let us know how we can help you.

What is a Trademark?

A trademark is a word, phrase, symbol or design, or a combination thereof, used to distinguish your goods from someone else's. Examples of trademarks: EXXON, NIKE,tick, or the distinctive stitching on a pair of Levi's jeans. Trademarks may also comprise alphanumeric marks, domain names, color marks, fragrance marks, sound marks, ingredient brand marks, and trade dress.

What is a Service Mark?

A service mark like a trademark except that it identifies the provider of a service rather than the seller of a product. If you have an item to sell, think "trademark"; if you sell/provide a service, think "service mark." Examples of service marks: UPS, WHAT CAN BROWN DO FOR YOU?, UNIVERSOUL CIRCUS, CHIEF HAPPINESS OFFICER (owned by McDonald's).

Is this the same as a patent or a copyright?

No. A copyright protects an original artistic or literary work; a patent protects an invention.

Are there things I cannot register as a trademark?

Yes. Some of the things you cannot register include the following:

  • A living person's name;
  • Marks that are likely to cause confusion with currently registered marks;
  • Marks that are deceptively misdescriptive;
  • Marks that appear to create a false sponsorship; and
  • Marks that are merely descriptive or geographic.

Is there a difference between federal and state trademark registration?

Yes. Federal registration is a little more expensive, takes a little more time, and has somewhat stricter requirements; on the other hand, it provides vastly greater protection. State trademark registration may be desirable when a company or organization never intends to do business or provide services in any other state and would not be harmed in any way if someone in another state conducted business under the same mark (e.g. "Hickory Bend Chamber of Commerce"). State trademark registration may also be desirable as an initial step when a company wishes to gain protection for a mark quickly (in addition to common law rights it may already have) and fears that the federal process will take up to a year or more.

Do I have to register my mark?

No. You have certain rights simply because you came up with the mark and used it first in commerce. However, registration provides a number of protections and advantages:

  • It puts the public on notice that the mark is yours, potentially avoiding the situation where someone else later comes up with a similar mark, invests time and money in promoting it, and then challenges your right to use the mark;
  • It creates a legal presumption that you have exclusive rights to use the mark in connection with the goods and services you listed when you registered it (although someone else may nonetheless register it for a different use, for example, American Express could not stop AMEX FRESH from using the name in its fruit and vegetable business);
  • It allows you to defend your mark in federal court, register it in foreign countries, and register it with the US. Customs Service to prevent importation of imitations from abroad.
  • It allows you to use the term ® to announce your trademark rights and enhance the value of your brand (if you do not register, you can still use the terms "TM" (trademark) or "SM" (service mark).

How do I apply for a trademark?

A trademark application is typically a fairly lengthy process (from about four months up to more than a year) that may involve a number of communications with the attorneys at the United States Patent and Trademark Office (USPTO). It can be relatively simple or extremely complicated, depending on the items or services to be registered and the potential the USPTO believes exists for confusion of your mark with other similar marks already registered. An attorney accustomed to filing trademarks will know the best strategies to use in order to give you the greatest chance of having your mark accepted. In addition, law firms that do trademark work have invested time and knowledge in streamlining the process and may be able to save you time and money in getting your application accepted.

What do I need to prepare in order to register a trademark or service mark?

There are a number of things you will need:

  • The name, contact information, etc. for the applicant (the person or entity who controls the nature and quality of the goods identified by the mark and/or the services rendered in connection with the mark which may be an individual, corporation, partnership, or other type of legal entity), and the name and contact information for the applicant's attorney (if an attorney files the mark for you).
  • A clear drawing of the trademark no larger than 3.5 inches high by 3.5 inches wide and delivered to the USPTO either electronically or in a form acceptable for printing in the Official Gazette and on the registration certificate. This usually means using a standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing, and submitted either electronically or on white, non-shiny paper that meets standard size requirements. A service mark is usually simply a typed name or phrase.
  • A precise description of the mark you want to register described in the specific terms and format acceptable to the USPTO.
  • A precise listing of the goods or services presented in a form that is acceptable to the USPTO. There are many thousands of acceptable descriptions and many more unacceptable descriptions that may be rejected for vagueness, because they span a number of classes, or for other reasons. You should note that the terms listed in the International Schedule of Classes of Goods and Services are generally too broad and cannot be used alone for identification.
  • The filing fee for at least one class of goods or services (filing fees are determined by the number of classes in which you wish to register and begin at $275 or $325 per class, depending on the type of registration form filed). The International Schedule of Classes of Goods and Services is appended to this explanation.
  • The date you began using the mark in commerce. You may also file a registration for "Intent to Use" if you have not yet started using the mark but have a bona fide intent to do so.
  • A "specimen" (photograph or scanned image) showing how the goods or services are actually in use; for example, the container for the goods, packaging labels, displays associated with the goods, brochures advertising the services, etc. Obviously, this is not required for an "Intent to Use" registration until you convert it to an "In Use" registration.

How should I check to see if my proposed mark is already in use?

This is an important step.

When you file your application, the USPTO will conduct a trademark search of their records looking for a reason to reject your application. Since the USPTO does not refund application fees, you should be fairly confident before you file that there is no conflict. Your or your attorney can search the USPTO database online to find pending applications and registered marks. You can also conduct a trademark search in person at any Patent and Trademark Depository Library (there is one at the Georgia Institute of Technology in Atlanta). You may search for word marks and graphic designs (though for designs you will need to be familiar with the design codes in the USPTO Design Search Code Manual). It is also advisable to perform a "common law search" in phone directories, yellow pages, industrial directories, state trademark registers, on the Internet, etc. to determine if a mark is being used legally but by others who have note filed for federal trademark protection.

What happens after I have filed for my mark?

After you have met minimum filing requirements, a USPTO Examining Attorney will review your application in its entirety to ascertain whether or not it complies with all applicable rules and confirm that it does not conflict with currently registered marks and that it is not likely to cause confusion with a currently registered product or service. Among other reasons, a mark may also be rejected if it is, in the Examining Attorney's opinion, primarily merely descriptive or deceptively misdescriptive of the goods/services, primarily geographically descriptive or primarily geographically deceptively misdescriptive of the goods/services, primarily merely a surname, or merely ornamental.

Within four to six months, the Examining Attorney will issue either an approval for publication or an "Office Action" letter explaining any reasons for refusal. If only minor corrections are required, the examining attorney may contact the applicant or applicant's attorney by telephone or e-mail. The applicant may respond to an Office Action, citing reasons and authority (case law) demonstrating that the Examining Attorney was wrong to reject the application. If the applicant's response fails to overcome all objections, the examining attorney will issue a final refusal. You own attorney will then discuss with you what your chances of success might be if you choose to appeal the decision to the Trademark Trial and Appeal Board and beyond.

If the mark is approved for publication, it will be published in the Official Gazette, a weekly publication of the USPTO. Parties who believe they may be damaged if the mark is registered then have thirty (30) days to file either an opposition to registration or a request to extend the time to oppose. An opposition is held before the Trademark Trial and Appeal Board and resembles a federal court trial.

If no opposition is filed or if the opposition is unsuccessful, the applicant will be issued a Certificate of Registration (or a Notice of Allowance for intent-to-use applications) within about three months.

Once it is registered, can I lose my trademark or service mark?

Your trademark can last indefinitely if you continue to use it in connection with the same goods and services for which you obtained it and file the necessary Affidavits of Continued Use or Excusable Nonuse and Applications for Renewal with the USPTO in a timely fashion.

Your mark can be cancelled if the USPTO establishes that it was obtained fraudulently, if you fail to renew it properly, if you abandon it, or if the mark becomes "generic." A genericized trademark is one where the product has become ubiquitous and known primarily by the trademark. Companies may attempt to avoid this by educating the public (for example, that you "photocopy" a document rather than "xerox" it) and always promoting their brand with a generic descriptor (Kleenex tissues or Velcro fasteners).

What services can BRISKIN, CROSS & SANFORD, LLC provide with regard to trademark or service mark registration?

BRISKIN, CROSS & SANFORD, LLC provides a full range of state and federal trademark registration services. We can advise you with regard to establishing and protecting your trademark interests, and we can represent you in defending your rights and seeking damages if your mark is ever infringed. We typically offer federal trademark or service mark registration for a flat fee, which includes all work related to the initial filing and also includes the filing fee for registration. Additional charges may be incurred if you wish to file your mark in multiple classes. Such cases require additional USPTO filing fees of $275/$325 per class in addition to our customary hourly fees for work in preparing additional class registrations. Hourly charges will also be incurred if it becomes necessary to respond to an Office Action on your behalf or appeal a refusal to register your mark.

Please do not hesitate to call us at any time to discuss your trademark or service mark needs and explore ways in which we may be of service to you.

International Schedule of Classes of Goods and Services

GOODS

1.Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
2.Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
3.Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
4.Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
5.Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
6.Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; nonelectric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
7.Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
8.Hand tools and implements (hand-operated); cutlery; side arms; razors.
9.Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.
10.Surgical, medical, dental, and veterinary apparatus and instruments, artificial limbs, eyes, and teeth; orthopedic articles; suture materials.
11.Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes.
12.Vehicles; apparatus for locomotion by land, air, or water.
13.Firearms; ammunition and projectiles; explosives; fireworks.
14.Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.
15.Musical instruments.
16.Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.
17.Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
18.Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
19.Building materials (non-metallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.
20.Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
21.Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel-wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
22.Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
23.Yarns and threads, for textile use.
24.Textiles and textile goods, not included in other classes; beds and table covers.
25.Clothing, footwear, headgear.
26.Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
27.Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
28.Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
29.Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.
30.Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
31.Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.
32.Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
33.Alcoholic beverages (except beers).
34.Tobacco; smokers' articles; matches.

SERVICES

35.Advertising; business management; business administration; office functions.
36.Insurance; financial affairs; monetary affairs; real estate affairs.
37.Building construction; repair; installation services.
38.Telecommunications.
39.Transport; packaging and storage of goods; travel arrangement
40.Treatment of materials.
41.Education; providing of training; entertainment; sporting and cultural activities.
42.Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
43.Services for providing food and drink; temporary accommodations.
44.Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
45.Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.