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BASIC FACTS ABOUT TRADEMARKS
 

A TRADEMARK may be a word, symbol, design or combination word and design, a slogan or even a distinctive sound which identifies and distinguishes the goods or services of one party from those of another. Used to identify a service, it can be called a service mark. 

 

Normally, a trademark for goods appears on the product or on its packaging, while a service mark is usually used in advertising to identify the owner's services. A trademark is different from a copyright or a patent. A copyright gives protection for an artistic or literary work and a patent gives protection for an invention.

 

Unlike a copyright or patent, trademark rights can last indefinitely if the mark continues to perform a source-indicating function. The term of the Federal trademark registration is 10 years, with 10 year renewal terms. However, between the fifth and sixth year after the date of the registration, the registrant must file an affidavit stating the mark is currently in use in commerce. If no affidavit is filed, the registration will be cancelled.

 

Trademark fights arise from either (1) use of the mark, or (2) a bona fide intention to use a mark, along with the filing of an application to Federally register that mark on the Principal Register. A Federal trademark registration is not required in order for a trademark to be protected, and a trademark may be used without obtaining a registration. Before a trademark owner may file an application for a

Federal registration, the owner must either (1) use the mark on goods which are shipped or sold, or services which are rendered, in commerce regulated by Congress (e.g., interstate commerce or commerce between the U.S. and a foreign country), or (2) have a.bona fide intention to use the mark in such commerce in relation to specific goods or services.

 

BENEFITS OF REGISTRATION

 Advantages of Federal trademark registration :

1). The filing date of the application is a constructive date of first use of the mark in commerce (this gives registrant nationwide priority as of that date, except as

to certain prior users or prior applicants);

2). The right to sue in Federal court for trademark infringement;

3). Recovery of profits, damages and costs in a Federal court infringement action and the possibility of treble damages and attorneys' fees;

4). Constructive notice of a claim of ownership (which eliminates a good faith defense for a party adopting the trademark subsequent to the registrant's date of

registration);

5). The right to deposit the registration with Customs in order to stop the importation of goods bearing an infringing mark;

6). Prima facie evidence of the validity of the registration, registrant's ownership of the mark and of registrant's exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate;

7). The possibility of incontestability, in which case the registration constitutes conclusive evidence of the registrant's exclusive right, with certain limited exceptions, to use the registered mark in commerce;

8). Limited grounds for attacking a registration once it is five years old;

9). Availability of criminal penalties and treble damages in an action for counterfeiting a registered trademark; and

10). A basis for filing trademark applications in foreign countries.

 

NOTICE

Once a Federal registration is issued, the registrant may give notice of registration by using the "" symbol, or the phrase "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." Although registration symbols may not be lawfully used prior to registration, many trademark owners use a TM or SM (if the mark identifies a service) symbol to indicate a claim of ownership, even if no Federal trademark application is pending.

 

THE REGISTRATION PROCESS

The Patent and Trademark Office ("PTO") is responsible for the Federal registration of trademarks. When an application is filed, it is reviewed to determine if it meets the requirements for receiving a filing date. If the filing

requirements are not met, the entire mailing, including the fee, is returned to the applicant. If the application meets the filing requirements, it is assigned a serial number, and the applicant is sent a filing receipt.

The first part of the registration process is a determination by the Trademark Examining Attorney as to whether the mark may be registered. An initial determination of registrability, listing any statutory grounds for refusal as well as any procedural informalities in the application, is issued about four-five months after filing. The applicant must respond to any objections raised within six months, or the application will be considered abandoned. If, after reviewing

the applicant's response, the Examining Attorney makes a final refusal of registration, the applicant may appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.

Once the Examining Attorney approves the mark, the mark

will be published in the Trademark Official Gazette, a weekly publication of the PTO. Any other party then has 30 days to oppose the registration of the mark, or request an extension of time to oppose. An opposition is similar to a proceeding in the Federal district courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.

If the mark published based upon its actual use in commerce, a registration will issue approximately 12 weeks from the date the mark was published.

If, instead, the mark published based upon applicant's statement of a bona fide intention to use the mark in commerce, a notice of allowance will issue approximately 12 weeks from the date the mark was published. The applicant then has six months from the date of the notice of allowance to either (1)

use the mark in commerce and submit a statement of use, or (2) a request a six-month extension of time to file a statement of use. 

 

STATUTORY GROUNDS FOR REFUSAL

The Examining Attorney will refuse registration if the mark or term applied for:

1). Does not function as a trademark to identify the goods or services as coming from a particular source; for example, the matter applied for is merely ornamental;

2). Is immoral, deceptive or scandalous;

3). May disparage or falsely suggest a connection with persons, institutions, beliefs or national symbols, or bring them into contempt or disrepute;

4). Consists of or simulates the flag or coat of arms or other insignia of the United States , or a State or municipality, or any foreign nation;

5). Is the name, portrait or signature of a particular living individual, unless he has given written consent; or is the name, signature or portrait of a deceased President of the United States during the life of his widow, unless she has given her consent;

6). So resembles a mark already registered in the PTO as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive;

7). Is merely descriptive or deceptively misdescriptive of the goods or services;

8). Is primarily geographically descriptive or deceptively misdescriptive of the goods or services of the applicant;

9). Is primarily merely a surname,

 

A mark will not be refused registration on the grounds listed in numbers 7, 8 and 9 if the applicant can show that, through use of the mark in commerce, the mark has become distinctive so that it now identifies to the public the applicant's goods or services. Marks which are refused registration on the grounds listed in numbers 1, 7, 8 and 9 may be registrable on the Supplemental Register, which contains terms or designs considered capable of distinguishing the owner's goods or services, but that do not yet do so. A term or design cannot be considered for registration on the Supplemental Register unless it is in use in commerce in relation to all the goods or services identified in the application, and an acceptable allegation of use has been submitted. If a mark is registered on the Supplemental Register, the registrant may bring suit for trademark infringement in the Federal courts, or may use the registration as a basis for filing in some foreign countries. However, none of the other benefits of Federal registration listed above apply.

 

 

Robert S. Broder, PLLC. 2903 Preston Lane Merrick, NY 11566
Phone: 516.771.0349 email

admitted New York and Connecticut

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