Overview of Trademark Law
Trademark law features a wide array of terms, such as trademark application, registration, prosecution and infringement, common law trademark and trademark examiner. Each of these terms holds a distinct meaning in the practice of trademark law and should be used appropriately to avoid unnecessary confusion.
A trademark application is filed to obtain a trademark registration. The process of obtaining trademark registration is referred to as trademark prosecution. Trademark infringement occurs when a third party uses a trademark without permission. A common law trademark is obtained through use of a mark in commerce without or prior to registration. A trademark examiner, sometimes referred to as the examining attorney, is the attorney that works at the United States Patent and Trademark Office reviewing trademark applications.
Although statutory benefits can be obtained through registration of a mark, as well as potential risks exposed, registration is not a requirement or prerequisite to ownership of a valid trademark.[1] Moreover, a trademark can be registered with either the federal government or a state.
The United States Patent and Trademark Office is the government agency within the Department of Commerce responsible for overseeing trademark registrations. The authority for registration of trademarks comes from the U.S. Constitution, specifically Article I, Section 8, Clause 3. The Trademark Act of 1946 established statutory guidance for trademarks, service marks and unfair competition, and is most commonly known as the Lanham Act, named after Representative Fritz Lanham of Texas.[2] The Lanham Act has faced several significant changes since its enactment. The Trademark Counterfeiting Act of 1984 [3] introduced federal offenses for violations of the Lanham Act, and the Anti-cybersquatting Consumer Protection Act[4] brought modern protections against actions such as domain name cybersquatting.
The USPTO releases data insights through the “Data Visualization Center”[5] on its website. As of 2018, the USPTO tracks about 600,000 trademark applications annually and this number is expected to increase. Most applications are filed under the Intent to Use application status, and the number of filings each quarter increases throughout the year, with most filings happening during the fourth quarter of each year.
The Lanham Act took effect in 1947 and is divided into four parts. The first is called “The Principal Register,”[6] the second is called “The Supplemental Register,”[7] the third is referred to as “General Provisions,”[8] and the fourth is “The Madrid Protocol.”[9] The Principal Register is the primary focus for most trademark practitioners because it serves as the location for registered trademarks.
Filing for USPTO Registration
Filing an application to register a trademark begins a legal process that requires adherence to deadlines, requirements and payment of fees. The USPTO publishes the Trademark Manual of Examining Procedure, abbreviated as “TMEP” or simply referred to as the Manual, serving as a single resource for the practices and procedures during the trademark prosecution process. The Manual is available on the USPTO’s website.[10]
The USPTO provides two ways to file a trademark application: by way of the Trademark Electronic Application System, referred to as “TEAS,” or by paper application.
Trademark applications are public record, and any information that is included in a trademark application filed with the USPTO will be publicly available on the UPSTO’s website. A benefit of working with a legal professional in this area is having assistance with the protection information that is included with a trademark filing. Often, an attorney’s information is used in connection with an application in addition to the use of business names, addresses, phone numbers and email addresses that are already publicly available, or they may be specifically set up for use in connection with intellectual property filings. If private information has already been included within documents sent to the USPTO, fees to have the information removed can cost up to $200.
The USPTO’s trademark database can be searched for free through its website, using the Trademark Electronic Search System, which allows a user to search in a variety of methods, including basic word mark search, searching a specific registered mark and searching by a registration number.[11]
A more advanced search tool is the Trademark Status and Document Retrieval[12], which can be used to search for trademark applications and registrations. This search is performed by using a serial number, so it may be necessary to utilize a Trademark Electronic Search System search to get the relevant serial number prior to performing this search.
Electronically filing a trademark application is the most cost-effective method of obtaining a trademark registration. Fees[13] are calculated based on three factors: 1) the number of marks, 2) the number of classes and 3) the filing option selected.
The USPTO system divides the trademark system into 45 “classes” within the International trademark classification system, which stems from the U.S.’s participation in the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The classification system is commonly referred to as “Nice Classification.”[14] Classes 1 through 34 are for goods, and classes 35-45 are for services.
For example, a popular YouTube star may seek to register a digital video series name under one class of services that covers entertainment services. She may also seek to protect the use of the video series name on merchandise she wishes to sell, such as t-shirts, which would require the inclusion of another class of goods for the application. This example can be seen in practical use by taking a closer look at YouTube comedians Rhett and Link[15] and their ongoing web series “Good Mythical Morning.” Rhett and Link have registered the name of their show “Good Mythical Morning”[16] under class 41 for education and entertainment services. Additionally, they obtained registrations[17] under classes 16 (for calendars and posters) and 25 (for clothing) to further cover their merchandise business.
Timing and Costs
The time it takes between the filing of an application and the registration of a trademark with the USPTO can range between seven months, if there are no major problems during prosecution, to two years or longer if an appeal to the Trademark Trial and Appeal Board must be filed.[18] Typically, it takes up to three months for the USPTO to assign a trademark examiner to an application. Review can then take up to another month. Then, the application may be approved, and the trademark published for opposition, or an office action may be issued by the examining attorney requiring a response to any issues with the trademark or application.
Filing an application is just the first step in what can be a long road to obtaining a trademark registration. Even before an application is filed, it’s advisable to perform extensive trademark searches to ensure that a mark is not already in use in commerce. After an application is filed, trademark applicants may have oppositions from third parties, which can increase legal fees and expenses. Once a trademark is obtained, there are additional fees associated with maintenance, renewals, protection and enforcement of the mark.
Practitioner fees for trademark application preparation can be structured as hourly rates or flat fees. Most trademark preparation services are provided to clients on flat fee bases that include the cost of the registration, payment for the attorney’s time preparing the forms and any additional fees to cover consultation or informational sessions with the client to discuss the overall trademark strategy.
Legal technologies that prepare trademark applications without the need for attorneys include guided forms or question-based surveys, chatbots and artificial intelligence programs. Despite the rise in technology-assisted methods of filing, the USPTO’s rules are clear that foreign attorneys working for companies that specialize in trademark filings are prohibited from providing legal guidance or advice, filling out forms or acting on behalf of another person or entity in the trademark prosecution process.
Intent to Use
Intent to Use, or ITU [19], is a type of trademark application filing that allows an applicant to file for registration of a trademark before use of the mark has begun, though there must be a good faith intention to use it in the future. An ITU can serve as a strategy for obtaining an earlier application filing than that of a competitor, which would provide an advantage if there is a dispute. A sworn statement as to the applicant’s bona fide intention to use a mark must accompany the application filing, along with examples of the product, such as samples or product images, to verify the intention.
Once an ITU application is submitted, there are three periods during which an applicant can provide evidence of commerce for the mark. The first period is prior to the application being approved. The second period is within six months after the USPTO issues a Notice of Allowance, which is typically issued about 12 weeks after publication of the mark and indicates that the mark can be registered. The third period is an extended time option available by filing a request for extension and paying a fee to the USPTO. This option gives up to an additional year for the applicant to begin using a mark in commerce. Four additional extension requests can be filed, with each providing an additional six-months for the applicant, building up to a potential total of 36 months after receiving the Notice of Allowance before the applicant must use the mark in commerce.
After an ITU application is accepted, the applicant must follow up with either an “Amendment to Alleged Use” or a “Statement of Use.” The amendment can be filed before the application has been approved for publication. The Statement of Use is filed once a Notice of Allowance has been issued. Failure to file a Statement of Use before the deadline will cause the trademark application to be abandoned, after which the only options would be to revive the application through more filings and fees or by starting over with a new filing.
If Intent to Use filing is not an option for an applicant, he can file with a preliminary or “beta” version of the product. For example, if a company is working on a new mobile application that is currently in beta testing, it may be eligible to file an application under the Intent to Use filing type. The beta application could be rejected by an examiner if the mobile app is not made available in commerce. Therefore, filing the registration with the beta version might be the better option.
Denial of Registration and Appeal
The USPTO can also refuse registration. Section 1200 of the Trademark Manual of Examining Procedure[20] provides guidance on how marks are examined and includes potential reasons for refusal. Additionally, 15 USC §1052 provides guidance for understanding which marks are not eligible for federal registration. Marks may be denied registration if they consist of:
– Immoral, deceptive, or scandalous matter;
– Matter which may falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols;
– False geographic descriptions on wine or spirits;
– The flag or related national insignia of the United States, individual State or municipality, or any foreign nation;
– The name, portrait, or signature identifying a living individual (without consent), or the name, portrait, or signature of a U.S. President during the life of his widow (without consent); or
– Currently registered marks that haven’t been abandoned.
There are some instances where non-eligible marks may be registered by providing evidence and support as to why a refusal should not bar registration. One such instance in which a registration refusal was overturned is seen in the 2017 Supreme Court case of Matal v. Tam[21], most commonly known as the “Slants” case. The Slants is the name used by an Asian-American rock band founded by Simon Tam. The band’s name served as a nod to the ethnic identity of the band’s members. However, in their attempt to federally register the name, they were refused based on the band’s name being a “disparaging” mark. Ultimately, the Supreme Court held that the disparagement provision of 15 U.S.C §1052(a) violates the free speech clause of the First Amendment. Therefore, a disparaging mark may not be refused registration on those grounds alone.
The Trademark Trial and Appeal Board, or TTAB[22], is a panel of judges within the USPTO that decide issues in connection with the federal registration of trademarks. Issues that clients may encounter, such as challenges to the decisions of trademark examiners, can also be appealed to the TTAB. A TTAB proceeding falls into one of two categories: 1) an ex parte appeal, stemming from an examining attorney’s denial of a trademark application; and 2) an inter partes (“between the parties”) opposition, cancellation, concurrent use or interference proceeding. The first category occurs when a filing party brings a proceeding before the TTAB and the second category occurs when two parties dispute a trademark application.
The TTAB maintains the Trademark Trial and Appeal Board Manual of Procedure, which is a valuable resource for finding practice and procedure information for litigating cases before the TTAB. Additionally, the TTAB follows the Federal Rules of Civil Procedure. Appeals from the TTAB are taken to a United States District Court if a civil action is filed, or directly to the United States Court of Appeals for the Federal Circuit. All such appeals use the evidentiary record from the TTAB proceeding.
State or Common Law Trademarks
State-level protections and registration of marks offer another set of tools which can be used when seeking to protect use of a mark in commerce. All states provide registration options, but registration is not required to obtain common law trademark protection. The District of Columbia does not have any trademark laws. Rather, use of a mark within D.C. qualifies for federal registration. The USPTO maintains a state-by-state listing with links to information about registration requirements in each jurisdiction.[23]
Common law trademark protections are based on a “first use” determination for ownership. The first individual or business to begin using a mark within a specific geographic area obtains a stronger ownership claim than subsequent businesses. For example, a custom frame shop in Tucson, Arizona, using the name “Frames by Design” that was established in 1970 could prevent someone else from opening a custom frame shop near Tucson, Arizona, under the same name. However, the Tucson-based shop would have few options against a custom frame shop opened in 2010 with the name “Frames by Design” in Springfield, Illinois.
All state-level jurisdictions currently offer some form of state trademark legislation under which claims of infringement can be brought against competitors that use confusingly similar marks in the marketplace. The capitalized TM trademark symbol is used in common law trademarks that haven’t been federally registered. Owners of a common law trademark should keep accurate records that detail usage of the mark over time. Evidence of use of a mark in commerce, coupled with the TM symbol, provides support for a claim of ownership.
State-level registration of a trademark is often used as a strategic option outside of federal registration. State registrations typically cost less in filing fees and require little administrative upkeep. State registration of a mark offers inexperienced practitioners a low-risk option to explore registration of a mark.
Registering a mark with the state government can also help predict the success that can be had with federal registration. Most owners of federally registered trademarks have active monitoring and enforcement tools that track both federal and state registrations of similar marks. Therefore, trademark practitioners may strategically file state applications to see if existing owners trying to enforce their own similar mark will object.
[1] https://info.legalzoom.com/registered-vs-unregistered-trademark-21089.html
[2] https://www.uspto.gov/sites/default/files/trademarks/law/Trademark_Statutes.pdf
[3] https://www.justice.gov/jm/criminal-resource-manual-1701-trademark-counterfeiting-introduction
[4] https://www.govinfo.gov/content/pkg/BILLS-106s1255es/pdf/BILLS-106s1255es.pdf
[5] The USPTO’s Data Visualization Center is available at: https://www.uspto.gov/dashboards/trademarks/
[6] https://www.law.cornell.edu/uscode/text/15/chapter-22/subchapter-I
[7] https://www.law.cornell.edu/uscode/text/15/1091
[8] https://www.law.cornell.edu/uscode/text/15/chapter-22
[9] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1900d1e1.html
[10] The Trademark Manual of Examining Procedure is available at: http://tmep.uspto.com; https://tmep.uspto.gov/RDMS/TMEP/current (more direct)
[11] https://www.uspto.gov/trademarks-application-process/search-trademark-database
[12] https://www.uspto.gov/trademarks-application-process/check-status-view-documents
[13] The complete fee chart for the USPTO is accessible by visiting: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#TM%20Process%20Fee
[14] A complete overview of the Nice Agreement, including the Nice Classification classes and descriptions, is accessible by visiting: https://www.uspto.gov/trademark/trademark-updates-and-announcements/nice-agreement-current-edition-version-general-remarks; https://www.wipo.int/classifications/nice/nclpub/en/fr/
[15] https://www.youtube.com/channel/UCbochVIwBCzJb9I2lLGXGjQ
[16] A screen capture of this filing can be a nice visual to highlight: Good Mythical Morning, Registration No. 4647954, Accessible at: http://tsdr.uspto.gov/#caseNumber=86123506&caseType=SERIAL_NO&searchType=statusSearch
[17] Good Mythical Morning, Registration No. 4649372, Accessible at: http://tsdr.uspto.gov/#caseNumber=86975428&caseType=SERIAL_NO&searchType=statusSearch
[18] The USPTO provides a flowchart on their website showing the registration timeline, and is available at: https://www.uspto.gov/trademark/trademark-timelines/section-1b-timeline-application-based-intent-use
[19] https://www.uspto.gov/trademarks-application-process/filing-online/intent-use-itu-applications
[20] “Substantive Examination of Applications,” Trademark Manual of Examining Procedure, Chapter 1200, Available at: https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e1.html
[21] Matal v. Tam, 137 S. Ct. 1744 (2017)
[22] https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board