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Building a brand requires diligence and strategic thinking. What are your goals? Where do you want to take your brand? How do you want to expand? How do you want to present your brand to your customers? We help you build your brand in all these areas.

Can you afford NOT to own a trademark?

f you start using a trademark or a domain name - but there is someone out there with a similar trademark registration, they may sue and stop your use.

What's a Brand Worth?

Fortune magazine ran an article on the value of brands a couple of years ago. The article quoted Coca-Cola's late Chairman in their Annual Report saying, 'if all our buildings were destroyed world-wide, we could borrow $100 Billion and rebuild everything on the strength of the Coke brand'.

How does that get us to trademarks? Simple, a trademark is a large part of 'brand'. We have had the opportunity to work with some of the greatest brand creators in the world. Joe Dreitler also had the opportunity to work at both Procter & Gamble and Anheuser-Busch, two of the world's great advertising and marketing firms. We got to see brands created from scratch.

How Do You Register a Trademark in the US?

The Lanham Act of 1946 (l5 U.S.C. 1051-1128), named after Congressman Fritz Lanham, is the federal law governing federal registration of trademarks, service marks, certification marks, and collective marks. The U.S. Patent and Trademark Office (PTO) administers the Act insofar as it relates to registration, and makes all preliminary decisions concerning the registrability of marks. (Only courts have the right to enjoin someone from actually using a trademark in an infringement suit.)

Why Do A Trademark Search?

The Lanham Act of 1946 (l5 U.S.C. 1051-1128), named after Congressman Fritz Lanham, is the federal law governing federal registration of trademarks, service marks, certification marks, and collective marks. The U.S. Patent and Trademark Office (PTO) administers the Act insofar as it relates to registration, and makes all preliminary decisions concerning the registrability of marks. (Only courts have the right to enjoin someone from actually using a trademark in an infringement suit.)

Trademark Searching

With all respects to the Nike® mark, - Just DO It!

The first thing you want to do is a trademark search. Some people file Federal trademark applications without doing a search, but you risk simply having your application rejected in a year or so by the PTO. The other problem is that if you start using your trademark and there is already someone out there with a similar trademark or service mark, you risk them suing you and making you stop use of your trademark or service mark. That can be very expensive.

So, there are all sorts of searches available, from those on-line, to full Federal, state and common law searches of anyone using a similar term in the US, whether or not they have tried to register it. If you can afford it, do a full search. It could save a lot of money in the long run.

OK, you do your search, it looks clear, and then file your application. What can you expect?

The Lanham Act has two separate registers for marks: the Principal Register (1), and the Supplemental Register.

Principal Register - marks that function as trademark or service mark now; it provides for the maximum protection and provides many legal benefits for registrations; and

Supplemental Register - marks that are capable of functioning as trademark - some point in the future. A relic to permit U.S. entities to file applications in countries which require 'home' registration.

Principal Register - there are many legal reasons for Principal federal registration:

Registration gives constructive notice throughout U.S. of ownership and exclusive right to use mark on goods in registration.

Registration creates legal presumption of Registrant's ownership and exclusive right to use; and after 5 years continuous use, registration is conclusive evidence of registrant's exclusive right to use (limited exceptions).

Registration provides jurisdictional basis to bring infringement suit in Federal court.

U.S. Customs will record registration and prevent importation of goods with confusingly similar mark.

II. Supplemental Register. Registration on Supplemental Register does not provide any legal presumptions that the owner has exclusive right to use trademark. If your mark is not immediately eligible for registration on the Principal Register, such as merely descriptive, geographically descriptive, or surnames, it is often registrable on the Supplemental Register. The mark need only be capable of distinguishing the applicant's goods. A Supplemental registration does tend to deter others from adopting the same mark.

The good news is that once your mark has been on the Supplemental Register for 5 years, or if it has acquired a 'secondary meaning' whereby consumers recognize it as a trademark, you can then file a new application to register it on the Principal Register and get all the legal benefits of a Principal registration.

After conducting your trademark search, file the trademark application. The PTO examines the application to determine if mark is eligible for registration. An application comprises:

  1. a written application
  2. a drawing of the mark
  3. three specimens showing how the mark is used
  4. the $325 filing fee
  5. complying with other PTO regulations

This is for a trademark application where the mark is already in commercial use in the U.S. It's called a 'use-based' application.

It is also possible to file a trademark application in the US based upon a bona fide 'intent to use' the mark in the US. There are some differences in the ultimate fees, and it is necessary to ultimately begin commercial use in the US (within 36 months after PTO approval), then file specimens in order to obtain registration.

Many people now file applications in the US through the WIPO as part of the Madrid Protocol. Maybe a few of them go through without problems, but we have certainly never seen one. The only advantage is that you can obtain a registration without use. The disadvantage is that the USPTO realizes that many of these applications have a long laundry list of goods that will never be used. The goods identification is usually refused by the US PTO and you have to hire a US lawyer to amend the goods identification at a minimum.

Any registration issued for a long list of goods is subject to challenge on lack of bona fide intent to use it. And in 5 years it is required to file a sworn Affidavit of Use, with a specimen of all the goods that are covered by the registration. The US PTO is going to demand such specimens because they believe too many owners are falsely claiming use on long lists of goods in the US without making use.

B. Procedure if mark approved by PTO Examiner and sent to publication.

l. Publication and opposition. If PTO examiner considers mark registrable, it is published in the Official Gazette of the PTO. Any person who believes they would be legally 'injured' by registration of that mark has 30 days to file opposition to registration.

a. Such persons include those who own a similar mark or whose application to register a similar mark is pending. Also, persons who have use in U.S. prior to date of first use of applicant also may bring Opposition. These are called 'common law' users and such persons have rights in the areas in which they do business. (This is another reason to consider a good trademark search.)

b. 'Injured' persons may file an Opposition proceeding in the PTO. This is an administrative mini-trial, conducted only with written testimony, before the Trademark Trial and Appeal Board (TTAB). TTAB determine rights of applicant to registration.

2. Registration. If no opposition filed, registration certificate issued that is valid for 10 years, provided that owner files an Affidavit of Use prior to end of sixth year after registration, attesting mark is still in commercial use in US on all or some of the goods in the registration. Registration may be renewed for unlimited additional 10 year terms by filing a Renewal application within six months of expiration date indicating mark is still in use.

3. Cancellation. Persons who may be legally injured by registration may seek cancellation of registration after it has issued, but only during first five years - with exceptions.

a. Petition to cancel a registration may be brought within five years from the date of registration.

b. However, a Petition to Cancel may be filed at any time if mark becomes generic, if mark has been abandoned, if the registration was obtained fraudulently or otherwise in violation of statute, or if mark is being used with knowledge of owner to misrepresent source of goods. Failure to use the trademark for 3 consecutive years is prima facie evidence of abandonment and grounds for cancellation.

4. Incontestability. Rights to a Principal registration become incontestable after five years of continuous use provided that you file an affidavit attesting that the mark is still used. Major exceptions are:

a) Mark may be challenged for reasons set out above, most often abandonment.

b) No incontestable rights in a registration of generic term.

C. What if registration is denied?

l. Applicant notified of denial of registration and reasons therefor. Applicant has six months to respond and seek reconsideration with PTO Examiner. If you do not respond within this period, application is abandoned.

2. If after reconsideration application for registration is denied, applicant may appeal to TTAB. They review the case and permit you to file a brief and present an oral argument as to why the PTO Examiner was wrong.

D. Appeals from the TTAB

l. Party who loses at the TTAB may appeal to United States Court of Appeals for the Federal Circuit (CAFC), or within 60 days file a civil action in Federal district court.