Our law firm assists clients with trademark registration. If you have an infringement or litigation issue‚ please see our trademark infringement or trademark litigation pages. If you are interested in a consultation with a trademark attorney, please contact us.
What is a Trademark?
A trademark is a word, phrase, symbol, design, or some combination of these, that identifies and distinguishes the source of goods or services of one party from those of others. Trademark rights are acquired either by filing a trademark application or by using a trademark in commerce.
Unlike copyright or patent protection, which can only be protected for certain periods, trademark protection can last indefinitely so long as the owner of the trademark continues to use the trademark and maintain the registration with the U.S. Trademark Office.
Examples of different types of trademarks include:
- Single words such as Apple, Google, and Lexus
- Catch phrases or slogans, such as “I’m lovin’ it” and “Eat mor chicken”
- Sounds or tunes, such as the three NBC xylophone tones
- Colors, such as the bright pink of fiberglass insulation
In order to be trademarkable, the word, logo, or phrase must be distinctive. There are five different categories of distinctiveness that are used to describe the strength of a trademark.
- Fanciful: Fanciful trademarks are the strongest kind of trademarks. They are words, phrases, or logos invented for the sole purpose of functioning as a trademark. Fanciful trademarks include “Pepsi,” “Kodak,” “Xerox,” and “Exxon.”
- Arbitrary: Arbitrary trademarks are commonly used in day to day life, but do not have a relationship to the goods or services being sold. Perhaps the most famous arbitrary trademark is Apple, which is both a fruit and the trademark for the internationally famous technology company.
- Suggestive: Suggestive trademarks, when applied to the goods or services they sell, require imagination, thought, or perception to reach a conclusion regarding the nature of those goods or services. AIRBUS for airplanes is an example of a suggestive trademark. Suggestive trademarks are often the best types of trademarks because they can be very good from both a marketing and legal perspective.
- Descriptive: Trademarks that are merely descriptive do not make great trademarks and often cannot be registered because they tend to describe the products or services at issue rather than function as a source identifier.
- Generic: Generic terms cannot be protected as a trademark because they are immediately understood by the purchasing public as the class name for the goods or services in question. While the word “Apple” can be trademarked in relation to computers, it cannot be trademarked in relation to the sale of apples.
Trademarks that are fanciful, arbitrary, or suggestive are usually considered inherently distinctive and thus can be registered with the U.S. Patent and Trademark Office. The benefits of federal trademark registration include:
- Presumption of ownership of the trademark and nationwide rights
- Constructive notice of the registrant’s claim of ownership over the trademark
- Ability to use the registered ® symbol to indicate that the trademark is a registered trademark
- The ability to have Customs and Border Protection prevent importation of infringing foreign goods, and
- An exclusive right to use the trademark in commerce in connection with the goods or services which can become “incontestable” after five years
Descriptive trademarks can be registered as trademarks provided that there is something special in the combination of words such that the trademark has acquired distinctiveness or secondary meaning in the eyes of the public. When determining if a descriptive trademark can be registered, the Trademark Office will generally consider the length of time the trademark has been used in commerce among other factors.
Trademarks that are primarily surnames, such as “Jones Bakery” or “Lee Books” are considered to be merely descriptive unless they obtain secondary meaning in the eyes of the public. Surnames that have achieved this include “McDonalds,” “Hilton,” and “Hyatt,” which are now internationally known brands.
At times descriptive trademarks will be allowed registration to the Supplemental Register. While the Supplemental Register does not give a registrant the full rights granted to a trademark on the Principal Register, it does provide the following benefits:
- The U.S. Trademark Office will refuse registration of trademarks confusingly similar to yours
- The ability to use the ® symbol on the trademark, and
- The ability to exclude others from using a similar trademark.
On the other hand, generic marks can never receive trademark protection on either the Principal or the Supplemental Register.
When preparing to launch a new product or service under a new brand, as a first step it is recommended that you have a trademark attorney perform a trademark search.
Your trademark attorney can help steer you away from future trademark infringement lawsuits by verifying that your chosen trademark is available. While your marketing team is still at the drawing board, and again before it proceeds full-steam ahead with their favorite trademark, it is a good idea to be consulting with a trademark attorney.
Trademark Application Process and Timeline
Most countries are “first to file” jurisdictions and therefore a trademark should be registered with the United States Patent and Trademark Office and in all foreign countries where use exists or is planned. In general, a U.S. trademark application must contain the following elements:
- Information regarding the owner of the trademark
- The trademark itself, including the words or design and a written description of the design, if applicable
- The meaning or significance of any words, letters, or numbers in the industry in question
- Specification of the goods or services that will be provided under the trademark
After a trademark application is filed, it generally takes about 4 months for the application to be reviewed. It is then reviewed by an examining attorney who will either approve and publish the trademark for opposition, or issue an office action. If the trademark is published, and no opposition is filed by a third party, the trademark will register.
An office action may be issued if there is a technical error in your trademark application or if there is a substantive legal issue preventing the trademark from being granted. The most common substantive refusal is based on a likelihood of confusion with another preexisting trademark. Another common substantive refusal is based on the trademark being merely descriptive or generic. If the trademark receives an office action, the applicant has six months to file a response in an attempt to overcome the refusal.
“Use in Commerce” Basis for Filing
If the trademark is already being used in commerce, the trademark application must provide a specimen of use documenting proof of the trademark being used in relation to the goods or services.
Generally‚ the prior user of a trademark owns the trademark in the geographic region in which it is in use. However‚ in the U.S. a Trademark Application may be filed on an “intent to use” basis. The filing date of such an Application can become the constructive date of first use for the trademark even if the applicant has not yet begun actual use.
For intent to use applications, the applicant must declare a bonafide intent to use the trademark in commerce. Once an intent-to-use trademark application has been approved, the applicant must use the trademark in commerce and provide the specimen of use as proof before the trademark can register.
Ongoing Filing Requirements and Trademark Incontestability
After your trademark has been granted, it must be renewed between the 5th and 6th years after registration and at every 10th year after registration. At the 5th year after registration the trademark can become incontestable by filing a Declaration of Incontestability. Incontestability is a valuable right because it allows a trademark owner to prevent a defendant from claiming certain defenses in the event of infringement. It also limits a third party’s ability to cancel your Registration.
A failure to file timely renewals will result in the cancellation of the trademark registration. If this occurs, the trademark will be available for registration by another business.
International Trademark Protection
International registration of trademarks has become easier due to the Madrid Protocol which allows us to file trademark applications in most foreign jurisdictions in about the same amount of time it takes to file an application in the U.S. We also have relationships with law firms throughout the world should local expertise be required during prosecution of the application.
Mandour & Associates – Trademark Attorneys
The attorneys at Mandour & Associates are highly experienced in the area of trademark registration, and we look forward to assisting you. We have offices throughout southern California in Los Angeles, Orange County and San Diego.
If you are interested in having us assist you with registering a trademark application‚ please contact us.