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Trademark Esquire.com - Trademark Registation and Enforcement

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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.

 

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). It 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 becomedistinctive 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.

 

Areas of Practice

  • Trademarks

  • Copyrights

  • Entertainment Law

  • Domain Names

  • Corporation, Partnership & Business Law

Contact 

Please call or email for a free consultation.

Phone: 877.863.7784 or 516.771.0349  

 

rsb@tmesquire.com

Trademark, copyright, entertainment, domain, corporation law

 

 

 

 

 

Tm esquire.com

Robert S. Broder, P.C. 2903 Preston Lane Merrick, NY 11566
Phone:  516.771.0349   rsb@tmesquire.com

admitted New York and Connecticut

Legal Topics of Interest

 
Trademark registration overview
A trademark is registered by filing an application with US Patent and Trademark Office.

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