Last week, we took a look at patent issues for nonprofit and for-profit start-ups. For our second installment in this series, we will examine another key area of intellectual property for start-up businesses: trademarks.
Trademarks protect distinctive marks, such as brand names, logos, and designs. This protection allows a trademark holder to exclude others from using the mark without permission of the owner. The following includes important, basic information about trademarks, as well as how start-ups can protect their trademarked intellectual property.
What is a Trademark?
The term “trademark” means any name, set of words, design logo or any combinations of logos and words used to identify a particular source of goods and to help distinguish your goods from those of other companies. Although one frequently hears the term “service mark” used in connection with services, , there is no practical difference between a trademark and a service mark and the term “trademark” is generally used to refer to both goods and services.
In order for a word or symbol to function as a trademark for your company, it must:
- Be Distinctive. The mark must not be generic or merely descriptive of the applicable goods and services. Instead, the mark must be unique, fanciful, arbitrary or suggestive.
- Not Conflict with Any Other Prior Trademarks. The mark must not be so similar to any other mark previously adopted and used on similar goods and services as those you are offering. If two companies adopt similar marks that have the potential to deceive the public or create a “likelihood of confusion” as to the source of goods and services, the company that is the first to use the mark in commerce (i.e., provide goods or services under the mark) will be the senior user and have superior rights over any other junior user that adopted the mark later in time. Whether two marks have the potential for likelihood of confusion will depend upon the similarity of the marks at issue; the similarity of the goods or services; and the similarity of the trade channels of the goods or services. The marks are compared in sound, appearance, meaning and connotation. A study of marks already in existence, therefore, is an important part of any trademark selection process.
What is not a Trademark?
U.S. law (and most international laws) does not allow the protection of descriptive or generic marks. A descriptive mark is one which describes qualities or characteristics of the goods or services. Because descriptive marks do nothing more than describe or identify goods or services, they are entitled to registration only upon years (and sometimes decades) of proof that they have acquired “distinctiveness,” that is, that the producer has managed to establish some identification in the mind of the consuming public that the mark refers to a specific brand of goods or services (e.g., American Airlines). In contrast, a “generic” mark is one which has come to identify a type of product rather than a specific brand and can never gain trademark protection. If the mark was once a trademark (e.g., aspirin) it can also become generic for the goods or services and may no longer be enforceable. Because the public commonly associates generic marks with types of products, they are not entitled to any trademark protection under federal law.
Thus, in general, the preferable practice is to choose an imaginative, fanciful or arbitrary mark in order to achieve the broadest permissible protection under the trademark laws (i.e., Nike, Apple, Haagen-Dazs).
How are Rights in a Trademark Established?
A U.S. federal or state registration is not a prerequisite to creation of a trademark in the U.S. A trademark is created simply by virtue of its owner’s use of the mark in connection with a certain set of goods or services which results in “common law” rights in the mark. As a result, at all times prior to the registration of the trademark, the trademark owner may use the familiar superscript “TM” (TM), which is the generally accepted trademark designation for unregistered marks.
Should I File for a Trademark Registration?
Yes. Owning a trademark registration in the United States puts others on notice that you hold a particular mark out as a trademark and also provides presumptive rights in the event you need to enforce your mark(s) against others who may be infringing upon your trademark rights. A federal registration is achieved by filing a trademark application with the United States Patent and Trademark Office (“PTO”) and is available only when the mark is used in connection with goods or services in interstate commerce (i.e., across state lines). If you are using the mark in only a single state, a state trademark registration might be the only option.
What are the Steps in Obtaining a U.S. Trademark Registration?
Step #1: Trademark Search
Only by conducting a thorough trademark search can one gain any assurance that the use of a proposed mark will not infringe on any pre-existing common law rights or trademark registrations of a third party. Most comprehensive searches are performed by trademark search companies utilized by many law firms specializing in intellectual property. While utilizing an attorney to conduct such searching involves an additional up-front expense, an early search can identify issues with any marks selected and, therefore, avoid expensive infringement suits or the cost of having to rebrand your product or service further down the road in the event an earlier trademark owner with senior rights demands that you cease all use of your mark.
Step #2: Meeting the U.S. Patent and Trademark Office Requirements
In general, in order for a trademark to be registrable, the applicant must satisfy the following criteria: (i) the applicant must have been the first to use (or be the first to have an intention to use) the trademark in interstate commerce in connection with the goods or services in question; (ii) the mark must be arbitrary or suggestive, or, if the mark is descriptive, the applicant must demonstrate proof of distinctiveness; and (iii) the mark must not be so similar to another trademark so that, when applied to the goods or services in question, the mark is likely to deceive the public or “create a likelihood of confusion” as to the source of the goods or services.
Step #3: Application and Costs
Assuming the above requirements are met and the results of the trademark search do not indicate any potential bars to registration, an application can be filed with the PTO containing basic information about the mark, including: (i) the name of the applicant; (ii) the principal address of the applicant; (iii) the state of organization of the applicant (if applicant is a corporation); (iv) the trademark (or a description of the mark); (v) a description of the goods or services on which the mark is used; (vi) the international and U.S. classes of the goods or services with which the mark is used; (vii) the date of first use of the mark anywhere; (viii) the date of the first use of the mark in interstate commerce (i.e., across state lines); and (ix) one specimen of the mark for each class of goods or services covered by the application (such as labels, packages, advertisements and the like).
The government application fee for a federal trademark application is on the order of a few hundred dollars for each class of goods or services, exclusive of any law firm fees for preparation and prosecution of the application.
Step #4: Potential Office Actions
Once the application has been submitted to the PTO, it will be assigned to an Examining Attorney, who will review the application to ascertain whether it meets all of the requirements for federal registration. If, in the Examining Attorney’s opinion, any defects exist with the application which would bar registration of the mark, the Examining Attorney may issue an “Office Action” indicating what problems exist with the registration and suggesting possible amendments to cure such problems. Ordinarily, an applicant has six months to respond to any Office Action. The applicant must provide a response sufficient to persuade the Examining Attorney that the mark is entitled to registration. In order to accomplish this, it may be necessary for the applicant to amend or clarify the information in the application. If no response is given, the application will be deemed abandoned. If an unsatisfactory response is given to the Office Action, the Examining Attorney will deny registration and, unless the applicant appeals the decision, the application will then be deemed abandoned.
Step #5: Publication and Registration
Assuming the Examining Attorney has found no defects in the application, or that the applicant has responded satisfactorily to all office actions, the trademark is then “published” in the PTO’s Official Gazette. Publication is used by the PTO to place the public on notice of the PTO’s preliminary approval of the registration of the mark and the PTO’s intent to register the mark, unless the registration is opposed. The date of publication is the “trigger” date for the commencement of the opposition period. During the opposition period, any party who believes he will be injured by the registration of the applicant’s mark has 30 days in which to file a “Notice of Opposition” with the PTO. If the PTO receives a Notice of Opposition from an opponent during the opposition period, the applicant will be sent a copy of the Notice, at which point the applicant has two choices: (i) abandon the application; or (ii) defend the application in formal opposition proceedings before the Trademark Trial and Appeal Board (the “TTAB”).
If no Notice of Opposition is filed within the thirty-day opposition period, the PTO will register the mark on the Principal Trademark Register and give the mark a registration number. Upon federal registration of the trademark, the registrant may then use the familiar “R-in-a-circle” ® superscript in connection with the trademark (in lieu of the “TM” superscript) as a means of placing the public on notice of the mark’s federal registration.
A Note on Intent-to-Use Registration Procedures
While obtaining a U.S. Trademark Registration requires actual use of the trademark in connection with a specific set of goods and services, the PTO allows the filing of an “Intent-to-Use” application in order to preserve your rights in a mark that you plan to use in the near future. The requirements for obtaining a registration for an intent-to-use application are the same as those for any other application except that a specimen of the mark on the goods is not required until later in the process. The examination of an intent-to-use application proceeds in much the same manner as a standard trademark application, including the issuance of Office Actions, if appropriate. Once the Examining Attorney has concluded that an intent-to-use mark appears to be entitled registration, the Examining Attorney will publish the mark for opposition as described above. If a mark clears the publication period without opposition, the PTO will issue a “Notice of Allowance” for the mark. The applicant then has three years from the date of a Notice of Allowance to prove actual use of the mark in commerce. If the applicant cannot show use immediately, extensions of time may be filed at six month intervals during this three-year period (up to five extensions can be requested). By the end of the three years, the application will be abandoned if a Statement of Use has not been filed. If the applicant is still intending to use this mark in commerce, a new application must be filed and will receive a new filing date.
The PTO publishes a general timeline for use based and intent-to-use applications which can be helpful in determining where you are in the application process and how much more time it may take to have your application mature to registration.
What Steps Must I Take to Maintain My Trademark Registration in the U.S.?
In order to maintain a trademark registration, the owner must show continued and exclusive use of the mark in connection with the goods and services identified in the registration and file all necessary maintenance filings with the PTO. U.S. trademark laws require that a Section 8 Declaration of Use be filed between the fifth and sixth year following the date of registration, along with a specimen showing the mark as used in connection with the goods/services. In addition, Section 15 of the Trademark Act provides that if a mark meets certain other statutory criteria, you may also file a Declaration of Incontestability entitling the mark to favorable legal presumptions related to its validity, use and ownership.
Beyond the Section 8 &15 filings, trademark renewal filings are due every ten (10) years from the anniversary of the registration date and require that you prove continued use of the mark in commerce in the form of a specimen showing use of the mark on the goods or services. The renewal fee for a federal trademark application is on the order of a few hundred dollars for each class of goods or services.
Does my U.S. Federal Trademark Registration Provide me Protection in Other Countries?
Unfortunately, no—trademarks are nation-specific. You must file trademark registrations in each country where you want protection and where you intend to sell your goods or services.
The only benefit that a U.S. Registration provides internationally is gaining an early priority date in very limited cases. Within six (6) months of filing a U.S. trademark application filing, a U.S. applicant may file in most foreign countries and secure priority filing based upon their U.S. filing date under the Paris Convention. If the company has the intention of using the mark in countries outside of the U.S. and wishes to seek trademark/service mark protection in these alternate countries, foreign applications filed within this six month period are given the same date of filing as the U.S. application. Foreign filing can be conducted after the six month period has elapsed, however, no claim of priority can be made based upon the U.S. application date in such cases.
The main difference between trademark rights in the U.S. vs. many other countries is the lack of recognition of “common law” rights in un-registered marks except in very limited cases. As a result, any entity or person who is “first to file” a trademark application in certain countries, will be awarded protection, even if such registrant has no immediate intent to use the mark and/or the registrant registered the mark in bad faith to profit from a foreign entity’s goodwill in a brand. In consequence, trademark piracy is well-organized and rampant in many countries, particularly China. If you plan to enter the Chinese market, even if those plans are somewhat distant, early filing is recommended before your company has received extensive press and media recognition in the U.S., and can avoid trademark piracy issues later.
Can I Ever Lose My Rights in My Trademarks?
Yes. It is possible for owners to unintentionally lose rights in their trademarks. Non-Profit and Social Business Start-Ups can be particularly vulnerable to the first of the three issues noted below:
Uncontrolled or “Naked” Licensing.
“Naked Licensing” means failing to exercise actual control over third parties (such as volunteers or other companies/organizations) who use your trademarks, logos, business name and slogans and failing to require third parties to enter into trademark license agreements with you containing quality control provisions. Non-Profits and social impact businesses are particularly vulnerable to losing their trademarks on these grounds due to a common reliance on volunteers and other organizations that offer free help or resources. For example, in one particular case, a non-profit in California established a program it called “Freecycle.” In its early stages the non-profit allowed individual volunteers and volunteer member groups to use the “Freecycle” name on their social media, websites, and other materials in order to establish “Freecycling” centers (where donated items find new homes). Later, as the program became more successful, the original non-profit tried to establish more specific standards and guidelines to be enforced on all its volunteer member groups, including guidelines on what was meant by its original rule: “free, legal and appropriate for all ages.” The non-profit attempted to stop member groups that did not follow the newly reinforced guidelines, but was blocked on the grounds that the term “freecycle” had become unprotectable (or generic) due to: (1) the non-profit’s failure in having any adequate trademark license agreements in place with its member volunteers; and (2) the non-profit’s failure in taking any actual steps to enforce its guidelines on its volunteers until much too late (i.e., it failed to show that it took any steps to conduct early audits of its volunteer’s adherence to its guidelines and terminate those in non-compliance).
Failing to Use the Mark in a Consistent Manner with Goods and Services Listed in the Registration.
In order to maintain a US trademark registration, owners need to be able to show use of the mark in the identical form originally filed with the PTO (especially if the mark is filed in a stylized design or logo format). If the owners cannot show consistent and continuous use of a particular mark for the set of goods or services listed on its registration, the owner may lose rights in that particular registration and the PTO will not allow the mark to renew. Failing to use a mark for three consecutive years constitutes abandonment. Companies can sometimes inadvertently lose rights in a trademark due to inconsistent use of the mark. For example, if an owner files its mark in connection with a particular product, such as downloadable software, but fails to consistently use the mark on the software itself or the labels, packaging or point of sale displays for the software, the owner can potentially lose its rights in the mark, even if there is digital advertising of the product on social media or websites. The PTO consistently does not consider use of the mark on advertising or websites alone as “trademark use.” As a result, it is important to ensure that you have consistent use of your marks in connection with the actual product itself or service you offer.
Failure to Enforce Your Rights in Your Mark Against Third Parties.
Similar to Naked Licensing, failure to enforce your rights in your marks against third parties that use a same or similar mark in connection with similar or identical goods and services as yours can result in loss of your rights. The following section covers methods of enforcing your rights.
How do I Enforce My Rights in My Trademarks?
Enforcement of your mark against third party infringers is important in order to maintain exclusive rights in a particular mark for your relevant goods and services. That said, it is important to consult an attorney and/or conduct investigations prior to making any demands on a potential infringer to confirm that you are in fact the more senior user of the mark in time and to confirm that you have solid grounds of objection. Since trademark rights in the United States are based on who adopted and used the mark in commerce first in connection with a particular set of goods/services, an earlier trademark registration may not be enough to stop a third party who has “common law” usage rights that pre-date both your filing date and date of first use. Further, if the potential infringer’s goods and services are sufficiently different from yours, you may have no grounds to make an objection (e.g., Delta Air Lines peacefully coexists with Delta Faucet without confusion).
Enforcement may include any of the following steps:
- use of a watch service to monitor trademark applications by third parties;
- conducting periodic internet searches of your mark or using “Google Alerts” to alert you of any articles or websites that might mention your trademark;
- filing opposition/cancellation proceedings with the USPTO against pending trademark applications/registrations by third parties;
- sending cease-and-desist letters (after appropriate investigation has been conducted to confirm use dates);
- infringement and dilution litigation.
Next week: We will turn our attention to copyrights and what entrepreneurs need to know about securing and protecting them.
Image Source: Deposit Photos