MARYLAND DC
TRADEMARK LAWYERS

Registering a Trade or Service Mark

  

The process of registering a trademark involves several steps and requirements that are administered by the USPTO, which also provides a register of all registered marks as well as those still in process.

 

-           Step 1: Determine Whether A Trademark Application Right For You

 

-           Step 2: Prepare And Submit Your Application

 

-           Step 3: Work With The Assigned USPTO Examining Attorney

 

-           Step 4: Resolve Any Requests From The USPTO

 

-           Step 5: Receive Approval/Denial Of Your Application

 

-           Step 6: Maintain Your Registration

 

 

Getting Started With Your Trademark Application

 

The first step in the trademark registration process is to determine whether a trademark application is the right course of action for a business. This involves considering the benefits and costs associated with trademark registration, as well as eligibility for trademark protection.

 

The application process includes preparing specimens, documents, and information required to prove eligibility, including a clear description of the trademark and its intended use. All trademark applications and related filings become public record once submitted to the USPTO. It is wise to hire an experienced trademark attorney to help you determine how to get the most out of trademark protection.

 

Conducting A Trademark Search

 

Before submitting a trademark application, it is crucial to conduct a thorough search for any existing trademarks that may be confusingly similar to yours. This helps avoid potential conflicts and rejections during the registration process.

 

Searches may be conducted through the USPTO as well as publications, search engines, stores, ads, and other brand identity outlets. Once it is determined that a trademark application is appropriate, the next step is to prepare and submit the application to the USPTO. 

 

Conducting a trademark search is an important step for trademark applicants. Failing to do so could be costly, whereas conducting a comprehensive trademark search may help trademark applicants save thousands of dollars in other brand development costs, such as logos, websites, marketing, and other brand identity and equity investments. It is a business best practice to work with a competent trademark lawyer to conduct a diligence check in addition to a trademark search through the USPTO prior to submitting any trademark application or investing into a brand.

 

Submitting Your Trademark Application

 

The preferred method for filing trademark applications is the Trademark Electronic Application System (TEAS), which allows for online submission at the lowest cost.

 

It is important to note that once a trademark application is filed, it becomes a public record, accessible to anyone who wishes to review the details. Therefore, it is essential to ensure that all the information provided in the application is accurate and up to date and to ensure that you are comfortable sharing the information. For example, it may be inadvisable to use your personal address and or phone number for your filing if you want to maintain your privacy. It is wise to hire an experienced trademark attorney to process your trademark application.

 

USPTO Office Actions

 

It is important to respond promptly to any office actions received from the USPTO post submission of your application. Office actions are official letters issued by the examining attorney at the USPTO assigned to your application. Office actions may require clarification or additional information regarding the mark and generally require a response within 3 to 6 months. Alternatively, office actions may notify applicants of conflicting marks and or suspension of an application pending the registration or cancellation of another application. Responding in a timely manner is crucial to ensure the smooth progress of the application. It is critical to retain a competent trademark lawyer to help you properly respond to USPTO office actions.

 

Distinctiveness

 

Trademarks must be distinctive in order to gain registration with the USPTO. Distinctiveness is evidenced by a trademark’s ability to identify and distinguish goods or services from those of others. Distinctiveness is a crucial trademark concept as it determines the strength and protectability of a trademark. The more distinctive a mark is, the stronger its chances for protection under trademark law.

 

There are four primary categories of distinctiveness recognized under US trademark law. These include are marks that are:

 

-           Generic
 

-           Descriptive
 

-           Suggestive
 

-           Arbitrary or Fanciful

 

 

Generic marks are common words or terms that cannot receive trademark protection. These marks are the weakest in terms of distinctiveness as they refer to the common name of a product or service. Generic marks cannot be registered as trademarks as they do not indicate a unique source. They refer only to how a product or service is categorized. For example, "bicycle" cannot be trademarked for selling bicycles.

 

Similarity, descriptive marks directly describe a characteristic, quality, or ingredient of the goods or services, and are generally not protective if the mark is merely descriptive. For example, “bicycle” would simply describe that the product is a bicycle and would not be eligible for trademark registration with the USPTO. 

 

In contrast to generic marks, descriptive marks may acquire distinctiveness over time through extensive use and consumer recognition. This is referred to as having achieved secondary meaning.

 

Secondary meaning refers to the association consumers develop between a descriptive mark and a specific source over time. When secondary meaning has been achieved, the mark has now become a brand in consumers’ minds. Sales, consumer surveys, followers, and other metrics are valid proof of secondary meaning. 

 

“American Airlines” is a well-known example of a mark that has acquired secondary meaning. "Sharp" (television) is another example of a mark that also acquired secondary meaning due to its long-standing use and consumer recognition.

 

A competent Maryland or DC trademark lawyer can help you determine whether your mark has achieved secondary meaning sufficient for trademark registration and help you compile relevant evidence for a successful application.

 

Suggestive trademarks hold a significant position in trademark law for their distinctiveness. These marks subtly hint or suggest a quality, characteristic, or feature of the goods or services, requiring consumers to use their imagination or perception to understand the connection. Suggestive marks strike a balance between being descriptive and being arbitrary or fanciful. They are inherently distinctive and can be immediately eligible for trademark protection without the need to establish secondary meaning.

 

Examples of suggestive trademarks include "Netflix" for online streaming services, “Stride Rite” for shoes, or "Coppertone" for sunscreens. Their ability to evoke a concept or image while still leaving room for interpretation contributes to their strength and protectability in the marketplace.

 

Arbitrary or fanciful trademarks are the strongest in terms of distinctiveness as they bear no relation to the goods or services they identify. For example, "Apple" for computers, “Nike” for clothings, “Amazon” for e-commerce, and “Shell” for gas.

 

A mark may be arbitrary or fanciful for one type of use while also being generic or descriptive for another type of use. This is illustrated by the mark, “Apple”, which is generic or descriptive for fruits, and arbitrary or fanciful for computers.

 

Distinctiveness is a crucial requirement of trademark registration. Experienced Maryland trademark lawyers can help you determine whether your mark is sufficiently distinctive for protection by the USPTO or help you build distinctiveness.

 

Classes of Protection

 

The USPTO uses the Nice Classification (NCL) system, as established by the Nice Agreement of 1957. Trademark classes, also known as International Classes, are categories used to classify goods and services for trademark registration purposes. There are 45 classes, with classes 1-34 covering goods and classes 35-45 covering services.

 

Each class represents a distinct category of products or services. For example, Class 9 includes computer software, Class 25 covers clothing, Class 35 includes services related to advertising, retail, and business management, and Class 42 encompasses software development, scientific, and technological services.

 

Trademark classes are crucial for ensuring that trademarks are registered in the appropriate categories and that there is no confusion between similar marks within the same class or between similar marks in related classes. This classification system helps streamline the trademark registration process and provides clarity for both trademark owners and consumers. Our Maryland trademark attorneys can advise you on using trademark classes in order to accurately identify and protect your trademarks in the US market.

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Likelihood of Confusion

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Trademark registration plays a crucial role in protecting brands against confusing similarity and ensuring fair competition in the marketplace. A trademark may not be registered with the USPTO if it is confusingly similar to a registered trademark and or service mark. It is important to consult a competent Maryland trademark lawyer if you are submitting a trademark application or if you have received an office action from the USPTO claiming that your trademark is confusingly similar to a registered mark.

 

Confusing similarity in trademarks and service marks refers to the likelihood of confusion between two marks that could lead consumers to believe that the goods or services offered under those marks originate from the same source. This confusion can arise due to similarities in brand names, logos, or even the goods and services themselves.

 

When evaluating confusing similarity, one important aspect to consider is the comparison of brand names. If two brand names are visually, phonetically, or conceptually identical or similar, confusion among consumers may arise. For example, if two companies use similar names like, "Red Cloud" and "Red Cloud", consumers may mistakenly assume a connection between the two, leading to confusion and potential harm to the original brand's reputation. Similarly, two companies using names like, “Red Cloud” and “Red Cloud Tech” might cause confusion. Part of the USPTO’s function is to protect consumers as this confusion may be related to attempts to purposely mislead consumers in order to effectuate the sale of counterfeit goods.

 

Various criteria can be considered to determine the similarity between brand names:

 

Visual similarity involves analyzing the appearance of the names, including their spelling, letter combinations, and overall visual impression. This is of particular importance when evaluating visual trademarks and service marks in the form of logos.

 

Phonetical similarity focuses on the pronunciation of the names and whether they sound similar when spoken aloud. Phonetical similarity is also important when evaluating sound trademarks and service marks, such as Netflix’s “ta-da” startup sound.

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Conceptual similarity considers the meaning or association evoked by the names and whether they convey a similar idea or message. An experienced Maryland trademark attorney is crucial in ensuring your mark does not conflict with any registered trademarks or service marks.

 

Apart from brand names, confusing similarity can also occur between trademarks within the same or different trademark classes. Trademark classes categorize goods and services based on their nature or purpose. Two trademarks that are similar within the same class or across different classes can cause confusion among consumers, even if the brand names are different.

 

For instance, if two marks are used for similar goods or services in the same class, consumers may believe that they originate from the same source or are somehow affiliated. Similarly, if two marks are used for different goods or services but are highly similar, consumers may mistakenly assume a connection between them. This confusion can be detrimental to both the original brand's reputation and the consumer's ability to make informed purchasing decisions.

 

Trademarks covering products such as perfume in Class 3 may be related to clothing in covered in Class 25. The USPTO will use market research to establish the connection between classes based upon business activity. Louis Vuitton is well-known example of the connection between Class 3 and Class 25, as the company sells both products.

 

It is important to consider the overall impression created by the marks, as well as the likelihood of confusion among consumers who encounter them. Factors such as the similarity of the marks, the relatedness of the goods or services, the channels of trade, and the degree of consumer sophistication are taken into account when evaluating confusing similarity. An experienced trademark lawyer can help you collect relevant evidence to argue to distinguish your trademark from a registered trademark.

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Basis For Filing

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United States trademark is governed by the Lanham Act. The federal government has the power to regulate trademarks through the commerce clause of the United States Constitution. Federal registration is administered through the United States Patent and Trademark Office (USPTO), which protects trademarks currently in use in commerce or intending to be used in commerce. A competent trademark attorney can help you determine which trademark registration basis is best for your mark.

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Trademarks are specifically classified by the USPTO on the bases of “intent to use” and “use-based” applications or registrations. The choice of either basis depends on the stage of commercial usage of the mark at the time of application.

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Use In Commerce

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Use of a mark is considered "use in commerce" when it is placed on goods, containers, displays, or used in the sale or advertising of services (such as in websites or social media). The key aspect is that the mark must be used in a way that directly associates it with the source of the business activities and the goods or services being offered.

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Use-based registration requires actual use of the mark in commerce at the time of filing the application. This means that the mark must already be in use in connection with the goods or services specified in the application. Use in commerce does not include test sales or one offs. Sales must indicate that the trademark is actually being used in commerce by the mark owner. The applicant must submit a specimen or sample of the mark as evidence of its use in commerce. The applicant must also specify the date of first use in commerce as well as first use anywhere. Use-based registration provides immediate protection and rights to the mark upon registration.

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The dates of use in commerce are extremely critical in the event of attempts to cancel your trademark by other mark owners. An earlier first use in commerce date provides priority over other applications from would-be registrants. The United States follows a first to file rule, meaning that the first person to file a trademark has priority of ownership and can therefore stop the registration of conflicting marks. However, in the event of a conflict, the rule shifts to first-to-use. A registered trademark may be cancelled, or an application for registration of a trademark may be opposed, in the event of an attempt to cancel a trademark by a mark owner who claims prior use in commerce. It is important to consult a Maryland trademark lawyer to properly identify your use in commerce dates in order to fully protect your trademark.

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Intent To Use (ITU)

 

Intent to use (ITU) is a basis for trademark registration when the applicant has not yet used the mark in commerce but has a genuine intention to do so in the future. This allows applicants to secure their rights to a mark before actually using it in commerce. To file an ITU application, the applicant must provide a sworn statement of their bona fide intent to use the mark in commerce, along with a description of the goods or services in connection with which the mark will be used.

 

The main difference between intent to use and use-based registration bases lies in the timing of the use requirement. Intent to use allows applicants to reserve their rights to a mark before actual use in commerce, while use-based registration requires proof of current use at the time of filing. The date of filing an intent to use application will act as a first use date to bar other applications or to defeat efforts to cancel a registered trademark.

 

Upon acceptance, intent to use applications grant a limited period, typically six months, for the applicant to submit evidence of actual use in commerce. This period can be extended up to five times, each time for an additional six months, through the filing of extension requests. Once the mark is used in commerce, the applicant must file a Statement of Use (SOU) to convert the intent to use application into a use-based registration.

 

Use In Commerce

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The choice of registration basis depends on the stage of commercial usage of the mark at the time of application. Working with a competent trademark attorney during the registration process is highly recommended due to the complexity of trademark applications, as well as the required processing time.

 

Processing times for new applications vary but routinely range between 11 to 13 months if there are no issues with the application. This is in addition to the processing of office actions, extension requests, and statement of use filings. A trademark attorney can provide valuable guidance and expertise to ensure that the application is properly prepared and submitted and can also assist in responding to any letters or inquiries from the USPTO, in addition to helping maintain the registration.