July 01, 2014

Trademark Registration Basics: An Overview for General Practitioners

Michael J. Salvatore

Only protectable trademarks are registrable. Trademarks are divided into four categories, with fanciful/arbitrary marks being the strongest (such as Kodak® for cameras or Apple® for computers), followed by suggestive marks (Coppertone® for sunscreen). Descriptive marks are not federally registrable without proof of secondary meaning, or acquired distinctiveness (Sharp® for televisions or surname marks such as McDonald’s®). Generic marks are not protectable due to use as the generic word for certain goods or services (Aspirin).

In the U.S., trademark rights are based on use. Thus, registration with the U.S. Patent and Trademark Office (USPTO) is not necessary, but does provide tangible benefits including nationwide notice to junior users, enhanced damages for infringement, a basis for international registration, and use of the ® symbol.

A fanciful, arbitrary or suggestive mark is theoretically capable of registration once used, assuming the mark is not likely to cause confusion with a previously used or registered mark (the standard for trademark infringement). The best way to ensure there are no confusingly similar marks with prior rights is to order a professional trademark clearance search and hire an attorney familiar with trademark law to review the results. While expensive, a search may prevent investing even more to develop good will in a potentially infringing brand.

Because of the cost of a professional search, it is often economical to first conduct an informal search of the USPTO register and Internet. While the trademark register can be searched by simply entering the mark and wading through the results, it is more useful and efficient to limit the search or to include variations on the mark being evaluated. The USPTO’s Free Form Search lists various search codes that can be used to refine results.

Here is a basic search (for the desired mark “CHEVROLET” for automobiles):

(CHEV*)[COMB] and (012)[IC] and (live)[LD]

This search ensures that all marks beginning with CHEV* in IC 012 are captured, and not just those that contain the entire word CHEVROLET. Different variations on this search can yield productive results. The IC field limits the International Class (the appropriate IC for a given good or service can be found in the USPTO’s ID Manual) and the code LD limits the search to live records.

Once a preliminary search has come up clean, and the results of a professional search have been analyzed, it is time to file a USPTO application. An application can be filed for a word or design mark, or for a specialized trademark such as a sound or color, by using the USPTO’s online form. A TEAS Plus application is $50 cheaper but places some limitations on the applicant. For an extra $50, the use of customized descriptions of goods and services is allowed. Drafting this specification of goods/services is an essential element in imparting a trademark with the broadest protection, and it is often prudent to consult a trademark attorney at this stage.

If you do elect to go it alone, you will need to enter the mark owner, entity type, goods/services, relevant IC and whether the mark is being applied for on an actual use or intent to use basis. For applications based on an intent to use, the USPTO will evaluate the application, and if approved, issue a Notice of Allowance. The applicant then has six months to submit proof of use or to file the first of five allowed six-month extensions. Once the five extensions expire, the application will become abandoned if proof of use has not been filed.

If the application is based on actual use, the date of first use and a specimen of use must be provided. Use-based applications proceed directly to registration once approved by the USPTO, assuming no oppositions are filed during the 30-day opposition period that all applications (whether based on actual use or intent to use) must undergo.

During the application process, the USPTO may issue one or more “office actions,” which range from simple requests, such as disclaiming the descriptive word “Airlines” in the mark GYPSY AIRLINES, or claiming ownership of a prior registration, to more complicated matters such as registration refusals based on descriptiveness or likelihood of confusion. Conducting a thorough search of the USPTO register before filing an application can minimize such refusals, which are difficult to overcome.

If an Opposition to registration is filed, the matter is decided by the Trademark Trial and Appeal Board (TTAB), the USPTO’s administrative court. While discovery in a TTAB proceeding is governed by the FRCP, trial is less involved, with testimony taken by deposition, and oral hearings only available upon request. However, these proceedings can be expensive and unpredictable to litigate, another reason to thoroughly vet a mark before applying for registration.

For marks that attain registration, periodic maintenance filings are required. Between the fifth and sixth year from the date of registration, a Declaration of Continued Use must be filed to prevent cancellation. If the mark has been used for five consecutive years, a Declaration of Incontestability removes several grounds on which a registered mark may be attacked in a cancellation proceeding (like an opposition, but pertaining to registered marks). Finally, 10 years from registration, and every 10 years thereafter, a Declaration of Continued Use and Application for Renewal must be filed to prevent cancellation.

Michael J. Salvatore

Michael J. Salvatore practices intellectual property and entertainment law at Holmes Weinberg, PC in Malibu, California.