||What is a Trade-Mark?
Success in business may depend, to a large extent, on message conveyed and image projected. A good or service may be excellent, but if the supplier of the good or service does not stand out, it may be overlooked in favour of a company with a stronger market presence. Trademarks can provide that distinctive identity which differentiates a business' goods or services with that of a competitor.
A trademark is a word, phrase a symbol, a design or any combination thereof used in association with goods (products) or services. It is a useful tool for distinguishing the goods or services of one entity from those of others in the marketplace. A trademark may come to represent not only goods and services, but also the reputation of the provider of such goods and services. As such, a trademark may constitute valuable intellectual property.
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||What are the Criteria for determining a "Good" Trade-Mark?
The nature of the terms used as a trademark is extremely important from the standpoint of:
- initial registrability; and
- lasting viability as a trademark, since the trademark must be capable of distinguishing the goods or services in relation to which it is used.
In evaluating a trademark, there are four general categories of terms:
- distinctive terms;
- suggestive terms;
- descriptive terms; and
- generic terms.
Generally, the terms that are easiest to register and to protect as trademarks are "distinctive" terms. Distinctive terms are often arbitrary or fanciful terms. They are unmistakably capable of identifying an owner's goods or services without any likelihood of confusion, for the average consumer, with the goods or services of another party.
At the other end of the spectrum, "generic" terms will never be capable of registration. The meaning of a generic term is synonymous with the goods or services themselves (e.g., zipper, escalator, etc...). Generic terms are incapable of distinguishing the goods or services of one party from those of another.
Between these two extremes lie "suggestive" and "descriptive" terms.
A "suggestive" term is one that merely suggests the nature, quality or characteristic of the goods or services in relation to which it is used as a trademark. It is possible for suggestive terms to be registered as trademarks but they make for "weak" trademarks because they often do not provide their owner with the ability to prevent others from using marks which are very similar and used in relation to similar goods or services, or that are identical marks used in relation to different goods or services.
A "descriptive" term describes the nature, quality or characteristic, the intended purpose or function, or the end effect upon the user of the wares or services in relation to which it is used as a trademark. Descriptive terms are not registrable unless, over a period of years, the terms have acquired, in the minds of the public, a special, identifiable meaning (a "secondary meaning") which links the goods or services to the owner of the trademark.
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||How do I Select a "Good" Trade-Mark?
When choosing a trademark, you should make every effort to use arbitrary and fanciful terms. Suggestive terms make for very weak trademarks and should be avoided whenever possible. Descriptive and generic terms should never be used as trademarks. Furthermore, terms which have a specific meaning within a particular industry should be avoided in relation to goods or services pertaining to that industry as they tend to make the trademark suggestive or descriptive and therefore more difficult to register and to protect.
Generally, unless the trademark of a party has become clearly distinctive of a given party's goods or services, a trademark will not be registrable in the U.S. if it is:
- the name or surname of a person (e.g., "Jane Smith");
- clearly descriptive of the goods or services in relation to which it is used (e.g., "Perfectly Clean" in relation to dry-cleaning services);
- a word in another language which describes the wares or services (e.g., "Gelato" - the Italian term for "ice cream" - in relation to ice cream products);
- deceptively mis-descriptive (e.g., "Air Courier" in relation to ground transportation services); or
- a National Symbol, flag, coat of arms, or other insigniaof United States, State or Municipality, or Foreign Nation (e.g., the bald eagle, Statue of Liberty, American flag, Presidential symbol, designation “Uncle Sam”).
To maximize the likelihood of registration, a trademark should therefore be
either an invented mark or one that makes only oblique reference to the nature of the goods or services
in relation to which it is to be used.
It should be noted that, even where a chosen trademark is not registrable
for being clearly descriptive or deceptively mis-descriptive, it is possible to continue using that
trademark but its owner must understand that it will not be able to enforce the exclusivity that
would result from registration of the trademark.
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||Should I register my Design as a Trade-Mark?
Where a chosen trademark is a "design mark" (i.e., consists of words in
combination with a design), the owner may wish to consider registering the words and the design
separately. Separate registrations of the various components of the trademark give maximum
protection to the trademark owner and allow for greater versatility of use of the mark in
association with the trademark owner's goods and services.
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||What Protection is Awarded by Registering a Trade-Mark?
Registration is a public claim of ownership and therefore a key way of protecting
a trademark from misuse and imitation. Registration is not obligatory but is highly recommended
because it is a way of verifying the exclusive right that is established through using the trademark
in relation to specific goods or services. In a dispute, a registered owner does not have to prove
ownership; the onus is on the challenger. The risk in using an unregistered trademark is the greater
likelihood of time-consuming and expensive legal proceedings in the case of a dispute, as well as the
lack of national, exclusive protection of your trademark.
It is important to realize that, while registration affords the greatest
possible legal protection against infringement or misuse of a trademark, it is, and can never be,
a failsafe guarantee against all problems relating to trademark usage. For example, specific circumstances
make it possible for a trademark to be expunged (removed) from the register on the basis of prior use of
a confusing mark by another party.
Furthermore, registering a trademark with the United States Patent and Trademark Office (USPTO)
protects rights in that trademark in U.S. only. Where an entity is providing wares or services
in association with a given trademark in other countries, registration in each of such other countries
should be considered.
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||How Does the Trade-Mark Registration Process Work?
U.S. trademark applications can take anywhere from 12-18 months from time of initial filing to approval for registration. However, this timeline make take additional time depending on the specifics of each application, the timeliness of responses by the applicant and whether opposition proceedings are commenced and litigated. Below is a summary of the general steps of a filing of a U.S. trademark application with the USPTO.
Application filed: The trademark application is filed with the USPTO and is assigned a serial number.
USPTO reviews application: If the minimum filing requirements are met, the application is assigned to an examining attorney. The examining attorney conducts a review of the application to determine whether federal trademark law permits registration of this mark.
USPTO publishes mark: If no refusals or additional requirements are identified, the examining attorney approves the mark for publication in the Official Gazette (OG). Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. Within 6 months of the issuance date of the Office action, the applicant must submit a response that addresses each refusal and requirement.
USPTO publishes mark: If the applicant's response overcomes the refusals and/or satisfies all requirements, the examining attorney approves the mark for publication in the Official Gazette (OG).
Mark registers: Within approximately 3 months after the mark published in the Official Gazette, if no opposition was filed, then the USPTO issues a registration. If an opposition was filed but it was unsuccessful, the registration issues when the Trademark Trial and Appeal Board dismisses the opposition. After a registration issues, to keep the registration “alive” the registrant must file specific maintenance documents.
Notice of Allowance (NOA) is issued: A NOA is issued to the applicant within 3 months after the mark is published in the Official Gazette. Where the application was made on intended use and not already used in commerce. The NOA is not a registration, but indicates that the mark will be allowed to register after an acceptable Statement of Use (SOU) is filed. The deadline for filing an SOU or request for extension of time (extension request) to file an SOU is calculated from the date the NOA issued. If the applicant does not file an SOU or extension request within 6 months of the date the NOA issued, the application will abandon.
Applicant timely files Statement of Use (SOU): Where an applicant is using the mark in commerce on all of the goods/services, the applicant must submit an SOU and the required fee(s) within 6 months from the date the NOA issued to avoid abandonment. Applicant cannot withdraw the SOU; however, the applicant may file one extension request with the SOU to provide more time to overcome deficiencies in the SOU. No further extension requests may be filed.
USPTO reviews SOU: If the minimum filing requirements are met, the SOU is forwarded to the examining attorney. The examining attorney conducts a review of the SOU to determine whether federal law permits registration. The applicant cannot withdraw the SOU and the filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds.
SOU is approved and mark registers: If no refusals or additional requirements are identified, the examining attorney approves the SOU. Within approximately 2 months after the SOU is approved, the USPTO issues a registration. To keep the registration "live," the registrant must file specific maintenance documents.
Registration owner files declaration: Before the end of the 6-year period after the registration date, or within the six-month grace period after the expiration of the sixth year, the registration owner must file a Declaration of Use, failure of which will result in the cancellation of the registration.
Registration owner files Declaration/Renewal: Within one year before the end of every 10-year period after the registration date, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal, failure which will make these required filings will result in cancellation and/or expiration of the registration.
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||Do I Need to use the "TM" or "®" for my Trade-Mark?
Although not required by law to do so, trademark owners often indicate
ownership or registration of their trademark through certain symbols, namely "TM" (trademark)
or "®" (registered trademark). The "TM" symbol can be used with a trademark regardless of
whether a trademark application has been filed, as long as it is being used in association with goods or services.
The "®" symbol, however, may only be used once the trademark is registered.
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||How Long is my Registration Good For?
In the U.S., registration of a trademark is valid for ten (10) years.
A trademark registration is renewable every ten (10) years upon payment of a renewal fee.
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||What are the Government Fees for a Trade-Mark Application and Registration?
Government fees currently consist of a $275.00 non-refundable application
fee per class for each trademark applied for and, if the application is successful, a $100.00 Statement of Use fee per class is required.
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