Trademarks
Branding plays a critical role in helping businesses distinguish themselves in a competitive marketplace. Trademarks provide legal protection for the distinctive words, names, symbols, designs, slogans, or combinations thereof that identify and distinguish a company’s goods or services from those of others. In this way, a trademark serves as a source identifier, allowing consumers to recognize and associate particular goods or services with a single provider while enabling businesses to protect the goodwill they build in their brands.
44.3%
Current first office action allowance rate for TEAS Plus applications
Branding elements that can be trademarked include:
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Company names
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Product names
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Logos
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Slogans and taglines
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Color schemes
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Sound schemes
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Scents
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Packaging
Elements that can’t be trademarked:
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Generic or descriptive words
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Geographic terms
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Conflicting terms that are likely to cause confusion
What Can Be Trademarked
Strength of a Mark
The strength of a branding element or mark can determine its suitability to function as a trademark.
STRONG
WEAK
Descriptive
These are among the weakest types of trademarks because they directly describe the goods or services and generally receive limited protection. For example, COLD AND CREAMY describes ice cream.
Arbitrary or Fanciful
These are among the strongest types of trademarks because they have no direct connection to the goods or services and require consumers to make an association. For example, KODAK is a fanciful mark, and APPLE is an arbitrary mark for electronics.
Suggestive
These terms are considered strong trademarks because they suggest, rather than directly describe, a characteristic or feature of the goods or services and require some imagination to make the connection. For example, NETFLIX is a suggestive mark for streaming services.
Generic
These terms cannot function as trademarks because they are the common, generic names for the goods or services themselves and therefore do not identify a single commercial source. For example, the term bicycle is generic when used to describe bicycles.
Establishing Trademark Rights in the U.S.
In the United States, trademark rights can be established either through common law or by obtaining a federal registration.
Common Law
Trademark rights can arise automatically through actual commercial use of a mark in connection with goods or services, even without formal registration. These common law rights are generally limited to the geographic areas in which the mark is used and recognized, and enforcing such rights often requires clear evidence of priority, scope of use, and consumer recognition, which can be more challenging to establish than rights based on registration.
Federal Registration
Trademark rights may also be established through registration with the United States Patent and Trademark Office (USPTO). By filing a trademark application and successfully completing the examination process, the applicant may obtain a federal registration covering the identified goods and services. A federal trademark registration provides nationwide rights in the mark, along with enhanced legal presumptions of ownership and validity, and offers additional enforcement benefits under U.S. trademark law.
Enforcing Trademark Rights
Effective trademark enforcement begins with ongoing monitoring of the marketplace to identify unauthorized or infringing uses of a mark. When potential infringement is detected, a trademark owner may send a cease-and-desist letter to the alleged infringer demanding that the infringing activity stop. Such correspondence serves to place the infringer on notice of the trademark rights at issue and may open the door to settlement or licensing discussions.
If the infringing conduct continues or cannot be resolved informally, the trademark owner may pursue legal action. Claims involving federally registered trademarks are typically brought in federal court, while claims based on common law rights may be pursued in state court, depending on the circumstances.
In addition, a federally registered trademark may be recorded with U.S. Customs and Border Protection, enabling customs authorities to help prevent the importation of counterfeit or infringing goods bearing the protected mark.
Madrid Protocol
A Madrid Protocol application provides for extending a home country application (US) or registration to over 120 member countries using a single application.
The Madrid Protocol provides a centralized system for seeking trademark protection in multiple member countries through a single international application. A Madrid Protocol application is based on a home country application or registration and identifies the trademark along with the goods and services as filed in the home jurisdiction. The applicant designates the member countries in which protection is sought, and the application is submitted to the World Intellectual Property Organization (WIPO) through the applicant’s home trademark office, such as the United States Patent and Trademark Office (USPTO).
WIPO conducts a formal examination of the application for compliance with procedural requirements. If the application meets these requirements, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. The international registration is then transmitted to the trademark offices of the designated member countries, where each office independently examines the application under its own national laws and determines whether protection will be granted in that jurisdiction.
The Uniform Domain Name Dispute Resolution Policy (UDRP) can be used to contest the registration of domain names that infringe existing trademarks.
A UDRP complaint needs to meet the three following requirements:
Domain Name Resolution
1.
The domain name in question must be identical or confusingly similar to a trademark to which the complainant has rights.
Once a UDRP complaint is submitted, a dispute resolution service provider assesses its validity, and a panel is appointed to decide whether the complaint is valid. The panel's decision can lead to the transfer or cancellation of the domain name registration.
3.
The domain name must have been registered and is being used in bad faith.
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The domain name registrant must have no rights or legitimate interests in the domain name.
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How TCP Law Can Help
Employing the services of a trademark attorney at TCP Law can significantly help develop your branding strategy and enforce your trademark rights. A trademark filing engagement will typically include (a) providing you with a well-crafted trademark disclosure form to complete, (b) performing a knockout search of the mark and reviewing the result with you, (c) drafting and reviewing with you an identification of the goods and services associated with the mark, and (d) preparing and filing your trademark application with the USPTO.
If you have any questions regarding general trademark issues or want to discuss your specific trademark matter, please contact me at john@tcplawfirm.com or at 917-612-1059.
To establish trademark rights through federal registration, one must prosecute a trademark registration application with the USPTO.
Trademark prosecution involves the following stages:
Trademark Prosecution
1.
Trademark Search
A trademark search is performed to identify potentially conflicting marks.
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A trademark application is filed with the USPTO identifying the mark and the associated goods and services. Use-based applications also include first-use dates and proof of use in commerce.
Filing Registration Application
3.
A USPTO examining attorney reviews the application for legal compliance and potential conflicts with existing marks. If issues are found, an Office Action is issued identifying any objections or refusals.
Examination
4.
If the trademark application is approved by the examining attorney, the mark is published in the USPTO’s Official Gazette for a 30-day opposition period. During this time, third parties who believe they may be harmed by the registration may file an opposition or request an extension of time to oppose the mark’s registration.
Publication
5.
If no opposition is filed or any opposition is resolved in favor of the applicant, the USPTO issues a registration certificate for the trademark. The registration grants the owner nationwide rights to use the mark in connection with the identified goods and services, along with the legal benefits afforded by federal trademark registration.