What is a Trademark or Service Mark

What Can Be Registered

Kinds of Trademarks and Service Marks

            Descriptive Marks

            Suggestive Marks

            Arbitrary Marks

            Fanciful Marks

Choosing A Mark

Do You Need Protection?

How to Get Started      

Trademark Searching

            Why a Qualified Trademark Attorney Should
            Review Your Search Results

            Searches Offered by American Trademark Company

U.S. Application Process

            International Class Guide

            Important Notes About the Trademark Application Process

            Trademark Review and Prosecution Phase

            Foreign Trademark Application Filing

                        European Community Trademark Application

                        Madrid Protocol International Application

                        Factors to Consider

General Guide To Proper Trademark and Service Mark Usage

            What Constitutes Trademark Use

            What Constitutes Service Mark Use

            Use of Marks in Advertising, Text, Brochures, Articles, etc.

            Trademark Registration Maintenance

What is a Trademark or Service Mark

A trademark or service mark is a word, slogan, symbol or design (or combination of these) used by a business to identify its goods or services and distinguish it from other businesses. The names and logo designs that a company is using or is planning to use are extremely valuable assets that need to be protected. In the business world, the name of a successful product or service contributes greatly to its real worth. Who among us cannot instantly identify with legendary marks such as McDonald's® for burgers, FedEx® for overnight shipping services or Microsoft® for computer software. Ultimately, a successful product or service is synonymous with a strong, memorable identity.

What Can Be Registered

Things you should know about the kinds of marks, what their relative value is, and their advantages and disadvantages in marketing.

When creating names or logos for companies, products and services, it's important to consider the strength and long-term value of a mark. Once a search has been performed and it has been determined that no one is using or has registered the same or a confusingly similar mark, the next step is to officially register it as a trademark or service   mark.

In general, marks that are "inherently distinctive" (strong), or have acquired distinctiveness over a period of time, are registrable. The strength of a mark has an enormous impact on whether the mark will be registered. The U.S. Patent and Trademark Office ("USPTO") recognizes two types of registered marks, "distinctive" and "non-distinctive", which go into either the Principal Register or the Supplemental Register, respectively. The Principal Register is where you want to be.  That means you have trademark protection and are reasonably safe from having anyone else challenge your mark. If properly maintained, a registration lasts for ten years and can be renewed for periods of ten years.

The Supplemental Register is a kind of "trademark purgatory." It does not offer the owner any of the protections that accompany marks on the Principal Register. Rather, it only provides notice to would-be users of the mark that it is already in use. A Supplemental Register registration, if properly maintained, also lasts for ten years and can be renewed for periods of ten years. After a mark remains on the Supplemental Register for five years, the owner can petition to move it to the highly-desirable Principal Register. However, if the mark has become distinctive of the goods or services any time during the period of registration, the owner can petition to have it moved to the Principal Register.

Trademarks come in four varieties: 1. Descriptive, 2. Suggestive, 3. Arbitrary and 4. Fanciful. Each has its particular advantages and disadvantages with regard to trademark protection and ease of marketing.

Descriptive Marks

Descriptive marks are the easiest to market but the hardest to register. A descriptive mark is one that says exactly what the product is. In general, any mark that describes a quality, characteristic, ingredient, purpose, function, etc. of the product or service is descriptive. Other descriptive marks can be geographic, laudatory or personal surname words. All of these are considered weak marks. The USPTO feels that a product description is not a mark because it describes all other competing products too.

Please note, however, a descriptive mark can be registered if the mark through continuous and substantial use has acquired distinctiveness through consumer recognition or "secondary meaning."

Suggestive Marks

Suggestive marks are a bit easier to register and a bit harder to market. If information about the product or service given by the mark is indirect or vague, then this indicates that the mark being used is "suggestive." An example would be "Bravo®." While this mark does not explicitly describe what the underlying goods or services are, it hints at it. You may suspect that it has something to do with the performing arts, but you don't know if the mark is for a channel, a theater or a magazine. A name like this requires a leap of imagination and necessitates a little education to explain to consumers what it is. Sometimes a sub-title helps, as in "Bravo-the culture channel." Since the word is suggestive you have a better chance of getting it on the Principal Register than if it was an exact description. Other examples of suggestive marks are Greyhound® for buses and Sunkist® for oranges.

Arbitrary marks are common English words that are used in a way that their normal meaning has nothing at all to do with the product or service. They are relatively easy to register and relatively hard to market. (See how there is an inverse relationship
between trademarks and marketing? The easier it is to register the trademark, the harder it is to tell consumers what the product is. And the easier it is to market it, the harder it is to prove the trademark is unique.) "Nickelodeon®" is an example of an Arbitrary mark. It's a fun, silly-sounding word but the actual meaning is "a five-cent movie theater," which doesn't have anything to do with children or cable television or green slime. But, it has been so well-marketed that now "Nickelodeon" means "kids." This required much effort and many dollars in advertising to establish. But once established, the mark became
very valuable property. In other words, the more money invested in giving meaning to an Arbitrary mark, the more value it has in the long run.

Arbitrary marks are easy to register because the words have no connection to the product. A five-cent movie theater might have a hard time registering "Nickelodeon," but not a TV network. "Apple® Computers" is another good example. Since apples and computers have no connection, it is a strong, defensible mark that has gained recognition value with consumers over the years. A fruit company named "Apple" would have a very tough time.

Fanciful Marks

The final category is Fanciful, which is the easiest to register and the hardest to market. Fanciful marks are coined words that never existed before. They do not exist in any dictionary and are completely made up. A classic example is "Oreo®." This name has nothing to do with chocolate sandwich cookies, or anything else for that matter, because somebody simply invented the word. (It exists in the dictionary only as a slang word derived from the Nabisco trademark.) The Oreo trademark is so strong it has almost become an icon. Everyone knows what an Oreo is, thanks to decades of advertising and marketing. And, the mark is un-challengeable.

Choosing A Mark

Depending on how important it is to a company to have a strong mark, or how much time and money they are willing to invest in educating the public in their marketing efforts, they can decide whether their new name should be Descriptive, Suggestive, Arbitrary or Fanciful. In the short term, Descriptive is better because it starts selling right away. But remember, it cannot be registered absent a showing of secondary meaning. If the product has longevity, and the company wants it to be around a long time, and can wait a while until the public catches on, then Fanciful is the best bet. But, Fanciful marks have the disadvantage of being expensive to establish and require lots of start-up advertising. The choice is up to the owner of the company, product or service.

Do You Need Protection?

Your product, service name or logo could be your most valuable asset as well as your most vulnerable one, if you do not take the proper steps to insure its protection. If you have developed a distinctive mark for use in interstate commerce (this includes the World Wide Web), it may be eligible for registration.

Trademark Searching

Recent cases in the federal courts have emphasized the obligation to conduct a trademark search, investigation and clearance check. The American Trademark Company, Inc. can conduct a thorough search of state and federal registers as well asommon law sources such as, trade journals, business directories, yellow pages directories, Internet domain name registrations including several other sources (foreign databases can also be searched if you wish to register a mark outside the U.S. ). Based on the results obtained, The American Trademark Company, Inc. can provide you with an opinion rendered by a qualified trademark attorney which will explain the availability of your proposed mark.

Why a Qualified Trademark Attorney Should Review Your Search Results

After a search has been conducted, it must be emphasized that it is impossible to establish your right to use and register a mark based solely on the fact that there is no "exact match" for your mark. Determining whether a trademark or service mark is available for you to use is substantially different from determining whether a corporate name is available for you to use and incorporate with the Secretary of the State's office in a particular state. There are no similarities between the two evaluations.

It is strongly recommended that a licensed trademark attorney review your search results before you begin to use and apply to register a mark. There are many nuances in U.S. Trademark law that an untrained eye would not be aware of, things that could impede your use and registration of a trademark.

The following are a few examples of just some of the many things that are considered by trademark attorneys when reviewing a search report in order to determine whether a proposed mark is available for use and registration.

EXAMPLES:

1. Is the proposed mark phonetically similar to another, i.e., does it sound the same to the ear, even though it is different in visual appearance? The following are real examples of marks that were held to be confusingly similar to pre-existing registered marks based on phonetic similarities (citations have been omitted):

CUP-O'-COLA was held to be confusingly similar to COCA COLA

BONAMINE was held to be confusingly similar to DRAMAMINE

SARNOFF was held to be confusingly similar to SMIRNOFF

COCA TAN was held to be confusingly similar to COPPER TAN

2. Is the proposed mark similar in meaning to another mark even though the two marks are visually different? Once again, the following are real examples of marks that were held to be confusingly similar to pre-existing registered marks based on similarity in meaning (citations have been omitted):

SMOG for raincoats was held to be confusingly similar to LONDON FOG for raincoats

BRUTUS for men's wearing apparel was held to be confusingly similar to BRUT for men's after-shave and toiletries

TUNA O' THE FARM for canned chicken was held to be confusingly similar to CHICKEN OF THE SEA for canned tuna

PROMISE for furniture polish was held to be confusingly similar to PLEDGE for furniture polish

3. Is the proposed mark in a such a form that it could be mistaken as being part of a larger family of marks? Sometimes a trademark owner may use the same prefix, suffix or syllable so much so that it becomes prominent in the minds of consumers who associate all marks with the same prefix, suffix or syllable with that particular trademark owner. A good example of this is the McDonald's® family of marks which incorporate the prefix's MC or MAC on its products, such as, EGG MCMUFFIN, CHICKEN MCNUGGETS, MCLEAN DELUXE, etc. Therefore, if someone were to propose the mark MCPASTRY for a line of baked goods, chances are they would be prevented from using such a mark.

Please note there are many other factors that must be addressed when reviewing a trademark search report. Please consult a qualified trademark attorney when evaluating the availability of your mark or call The American Trademark Company, Inc. for more information on this subject.

We believe that search results are useful only if they are interpreted by trained individual. Therefore, all of our search packages come complete with full attorney-review and a corresponding legal opinion. We will fax the opinion to you first and the following day you can expect overnight delivery of your full search report. Search and review times vary per package, please contact us for more information.

Basic Search Package:

A reliable and inexpensive search of a mark and variations thereof (including phonetic and truncated equivalents) from active, expired or canceled state and federal trademark registrations and pending, published or abandoned registrations. Good for marks used in narrow competitive fields where the likelihood of common law use is small or non-existent.  With full attorney-review and written legal opinion.

Comprehensive Search Package:

A reliable, detailed search of a mark and variations thereof (including phonetic and truncated equivalents) from active, expired or canceled state and federal trademark applications, PLUS a detailed search of Internet domain names and Common Law references from Dun & Bradstreet reports, national business directories, yellow pages directories, periodicals, and other sources. Please note that Common law references can be important. These would be references of trademark usage by individuals or companies across the U.S. of a mark (the same or similar to yours) that is not registered on either a state or federal level. It is important to check these references because the U.S. does recognize a system of common law trademark rights for a mark that has been used substantially and continuously for a period of time. In such cases, common law users may acquire limited territorial rights to their mark. While the U.S. Patent & Trademark Office does not check common law marks in evaluating a mark for registration, it is important for you to do so. Failure to do so could bring you surprises down the road or a U.S. registration with a "swiss cheese effect." This type of search is particularly recommended for marks that are used or planned to be used in connection with computer, software, Internet, and telecommunications related goods and services since so many new trademarks have evolved in this area in recent years, many of which could only be found in a Comprehensive common law search. This type of search comes with investigative background checks on relevant common law resources, full attorney legal review and written opinion.

U.S. Application Process

If your proposed mark is available for registration, The American Trademark Company, Inc. can assist you in the registration of the mark in the U.S. Patent & Trademark Office and in any foreign country you are using or planning to use your mark. Even if you have not yet begun to use the mark at all, we can nonetheless validly file an "intent-to-use" application with the U.S. Patent & Trademark Office. Your application will enjoy priority of the filing date if there is an existing good-faith intention to use the mark in interstate commerce in connection with the specified goods or services. To find out more information about our application filing services please click here.

The U.S. government charges a filing fee of $325 per class of goods and services that a proposed mark is used or is planning to be used in.   While most marks usually fall within one class, some marks encompass several. Please see the following text box for all the International Classes and a short description of some of the goods and services that fall into each class. 

Once an application is filed with the U.S. government, an applicant will be assigned an application serial number and official filing date. An applicant can expect to receive a first official action by a U.S. Examining Attorney at the U.S. Patent and Trademark Office in about 4 to 8 months. At that time, an applicant may be required to comply with adjustments to its application or respond to certain requirements issued by the U.S. Patent and Trademark Office in order to receive approval for publication and registration. If the mark is approved, it will be published in the Trademark Official Gazette. Once it is published, anyone who feels that the subject mark infringes upon their mark has 30 days in which to file a Notice of Opposition. If no one opposes the mark it will be approved for registration.

The time frame for receiving federal registration may take as little as one year to as long as several years, depending on a strength and availability determination made by an Examining Attorney in the U.S. Patent and Trademark Office. Once a mark is registered and properly maintained, it is valid for 10 years and renewable thereafter for periods of 10 years.

The U.S. Application process is not as simple as it seems and it usually takes a year or more to complete. We have heard many individuals ask "where can I get the forms to apply." Please note that while the U.S.P.T.O. does have pre-printed application forms, most experienced trademark practitioners find them inadequate and prepare their own detailed formal applications. The U.S.P.T.O. forms are nice templates but they do not account for the many applicant-specific issues that need to be addressed in the application at the time of filing. Hence, some applicants using these forms have encountered problems resulting in the delay of receiving a serial number and filing date, an application that cannot be amended to reflect missing information, or worse, the unintentional abandonment of the application and eventual loss of filing fees.

Trademark Review and Prosecution Phase

Many applicants are unaware that filing the application is only the beginning of the process which is commonly known as "trademark prosecution." This process involves the examination of the application by an Examining Attorney at the U.S.P.T.O., written communication between the U.S.P.T.O. and applicant (or applicant's attorney), possible negotiations, and the filing of legal documents or written arguments in order to advance the application to registration. Failure to file a proper and timely response could result in the unintentional abandonment of an application. An experienced trademark practitioner is experienced in the proper preparation and filing of an application and is qualified to prepare the correct written responses during trademark prosecution. The American Trademark Company has qualified trademark attorneys to help you through this process.

Foreign Trademark Application Filing

When applying for a U.S. registration, consideration should be given to international marketing plans and whether the trademark will be used in foreign countries.

International trademark rights are country specific. In some countries, rights to a trademark are obtained by "using" the trademark in that country. In other countries, rights are obtained by just being the first to file an application for a particular mark in that country. Thus, the countries to be most concerned with are the "first to file" countries which would allow anyone to come in and file a trademark application and get rights to your mark. Some of these countries are:

Afghanistan, African Union, Algeria, Argentina, Austria, Bahrain, Barbados, Benelux (Belgium, Netherlands & Luxembourg), Bolivia, Brazil, Bulgaria, Chile, China (PRC), Colombia, Costa Rica, Cuba, Czech, Denmark, Djibouti, Dominican Republic, Ecuador, Egypt, El Salvador, Finland, France, Germany, Greece, Guatemala, Guinea, Honduras, Hungary, Iceland, Iran, Italy, Japan, Korea (North & South), Kuwait, Latvia, Lebanon, Lesotho, Liberia, Libya, Lithuania, Mexico, Mongolia, Morocco Tangier Zone, Nepal, Nicaragua, Norway, Oman, Paraguay, Peru, Poland, Portugal, Qatar, Romania, Saudi Arabia, Somalia, Spain, Sri Lanka, Sudan, Sweden, Syria, Taiwan, Togo, Turkey, United Arab Emirates, Uruguay, Venezuela, Vietnam, Yemen and Zaire.

Please note that there are certain treaties to which the United States is a member. These treaties allow members to file a trademark application in member countries and obtain certain priority benefits. For instance, under the European Community Trademark (CTM), and the International Registration (IR) filing system.

European Community Trademark Application

While getting a registration in a foreign country generally requires that a separate application be made in the individual country, this one blanket application can save you time and money and covers all the countries of the European Community, namely, Austria, Bulgaria, Belgium, Czech Republic, Cyprus, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and United Kingdom.

Madrid Protocol International Trademark Application

Since the US joined the Madrid Protocol in 2003, one application can be made to the US Patent & Trademark Office for individuals or legal entities that are nationals of, are domiciled in, or have a real commercial establishment in a country that is a Member of the Madrid Protocol.  Prior to the US joining the Madrid Protocol getting a registration in a foreign country required a separate application in the individual country.  Under a Madrid Protocol Application, only one blanket application needs to be filed.  However, unlike the European Community Trademark Application, this application filing will only cover those countries that the applicant chooses. 

As of November of 2007, the following countries are members of the Madrid Protocol:  Albania , Algeria , Antigua and Barbuda , Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana , Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People's Republic of Korea, Denmark, Egypt, Estonia, European Community, Finland, France, Georgia, Germany, Greece, Hungary, Iceland, Iran (Islamic Republic of), Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, Norway, Oman, Poland, Portugal, Republic of Korea, Romania, Russian Federation, San Marino, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Viet Nam, and, Zambia.

Factors to Consider Before Filing a Foreign Application

1. Is the mark currently in use or intended to be used in a "first to register" country whereby another party could simply register and obtain exclusive rights to the mark;

2. Where are sales most likely to occur initially in substantial volume, including export territories of licensees;

3. Where would you most likely want to prevent competition from using the mark;

4. Is the trademark a type that might be appropriated by a pirate in a high risk piracy country such as Korea , Taiwan , Singapore , China , Panama or Japan ?

5. Will sales warrant the filing expenses if only limited amounts of exports are involved?

General Guide to Proper Trademark and Service Mark Usage

The following sets out some fundamentals concerning trademark and service marks and a list of "do's" and "don'ts" for proper trademark and service mark usage. In general, the rules are the same for both trademarks and service marks. Incorrect usage can be a significant factor in causing a mark to lose its protected status and become freely available for use by all.

What Constitutes Trademark Use

"Use" of a trademark means selling or offering for sale goods on which, or in close physical proximity to which, the trademark is disposed; for example, use of the trademark imprinted or embossed on the goods themselves or on packages or labels for the goods. Use of the mark in advertising, letterhead, shipping documents, or the like, is not a trademark use for tangible goods. Generally, the trademark must be on the goods themselves, or on containers, packages or labels for the goods.

What Constitutes Trademark "Use in Commerce"

Any shipment of goods bearing the trademark across a state line in the normal course of business satisfies the "use in commerce" requirement. Token sales made solely to establish trademark use do not constitute legally sufficient "use." Invoices or other documents showing the initial shipment of the trademarked goods to out-of-state customers (first "use in commerce") should be preserved.

What Constitutes Service Mark Use

"Use" of a service mark means directly associating the mark with the underlying services, for example, in print, radio, television or electronic advertising on the World Wide Web. Merely including the mark in printed materials concerning the services without specifically using the mark as an identifier of the source of the services is insufficient to engender rights in the mark.

What Constitutes Service Mark "Use in Commerce"

It is not necessary to have branch offices in different states in order to supply services in interstate commerce. Thus, a single location within a state which caters to persons who come to it from another state qualifies as interstate commerce. Clearly, hotels, retail department stores, restaurants and the like, fall into such a category, but so do many other businesses, if it can be shown that at least part of their clientele is from out-of-state. Utilization of the service mark in print, radio, TV or World Wide Web advertisements which reach out-of-state audiences is helpful in establishing the existence of an interstate clientele. In particular, print advertisements in out-of-state publications may conveniently be submitted to the U.S. Patent and Trademark Office as evidence of solicitation of interstate business. In addition, it is useful to retain copies of representative out-of-state purchase orders as evidence of servicing interstate commerce.

Always use the mark as a proper adjective to modify a noun which is a generic word for the goods or services with which the mark is associated.

Never use the mark as a noun in a sentence:

EXAMPLE:

Correct:

"ACME white bread tastes great and can be used as a bonding agent."

Incorrect:

"ACME tastes great and can be used as a bonding agent."

Use a superscript TM for unregistered trademarks and a superscript "SM" for unregistered service marks. Use the symbol "®" only for trademarks or service marks for which federal registrations have been granted, not merely applied for.

It is not necessary to use the trademark or service mark symbols TM, "SM", or "®" for each repeated use of the mark on a given page, article or advertisement, but the symbol should be used on the first or most prominent use of the mark. If it is desired to not use the symbols at all, they may be replaced by a short statement, e.g., in the form of a footnote, declaring the trademark or service mark status.

EXAMPLE:

Correct use for an unregistered trademark:

"ACME is a trademark of the Flour Power Company for its line of breads and baked goods."

Correct use for a registered trademark:

"ACME is a registered trademark of the Flour Power Company for its line of breads and baked goods."

Always print the trademark or service mark in a type style (all caps, underlined, italics, etc.) which is different from that of the surrounding text or, at the very least, capitalize the trademark.

Never punctuate or pluralize the trademark.

EXAMPLE

Correct:

The outstanding feature of ACME white bread is that it sticks to most surfaces.

Incorrect:

ACME's outstanding feature is that it sticks to most surfaces.

Do not employ variations of the same mark, be absolutely consistent in rendering the mark.

Avoid phraseology which implies that the trademark is other than a unique indicator of the source of the goods or services. The difficulty with the following incorrect example is that it may be construed to imply that there is one ACME line owned by the Flour Power Company and another ACME line owned by someone else.

EXAMPLE

Correct: ACME breads and baked goods which are supplied exclusively by the Flour Power Company, have been enthusiastically received by plumbers.

Incorrect: The Flour Power Company's ACME breads and baked goods have been enthusiastically received by plumbers.

A licensed trademark attorney should review your advertising copy before it is submitted for publication or printing.

Trademark Registration Maintenance

Once a trademark is registered not only is it important to use it properly, but there are also important deadlines that come at various intervals during the life of a registration.  Between the 5^th and 6^th year of registration, a registrant must file a Declaration of Use to keep the registration alive for the remainder of its 10-year registration period.  Failure to do so will result in the cancellation of the registration.  At this time, a registrant can also file a combined Declaration of Incontestability provided that the mark has not been challenged since the time of registration.  This filing will make the registration unchallengeable.  Finally, in the 10^th year of registration, an application for 10 year renewal will need to be filed. 

We thank you for considering The American Trademark Company for quality and affordable service for all your trademark/service mark clearance and registration needs.

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