This blog is the third in a series that Finkel Law Group is publishing to provide our readers with a broad overview of trademark law in the United States. In the United States, a trademark may be registered under federal law or state law, and registering your company’s marks with the U.S. Trademark Office brings substantial legal benefits for using, licensing and enforcing your trademark and service mark rights nationwide. It’s important that you retain a qualified trademark attorney with experience prosecuting trademark applications through the Trademark Office to maximize the chances of success when you’re looking at registering your company’s trademarks.
Federal Registration
At the federal level, trademarks are registered under the Lanham Act in the U.S. Trademark Office. The Trademark Office administers two trademark registers. The Principal Register is the primary register of trademarks the Trademark Office maintains, subject to additional registration requirements, and is reserved for marks that are inherently distinctive or that have acquired distinctiveness through use in commerce. The Supplemental Register is the secondary register and is reserved for certain non-distinctive marks that do not inherently qualify for registration on the Principal Register, but are capable of distinguishing goods or services. If a mark on the Supplemental Register acquires distinctiveness through use and promotion in interstate commerce over a period of time, the owner may file a new application to register the mark on the Principal Register.
Term of a Federal Trademark Registration
A federal registration on the Principal Register or Supplemental Register is effective for 10 years, subject to you complying with certain maintenance requirements. Your mark may be renewed for additional 10 year periods if you comply with certain on-going legal requirements, including continuous and consistent use of the mark in commerce, and you comply with certain registration maintenance requirements of the Trademark Office.
Eligibility for Registration on the Principal Register
Not all words, symbols, logos, and devices can be registered as trademarks. The Lanham Act and U.S. Trademark Office’s regulations specify the eligibility of trademarks for federal registration. Certain types of subject matter may not be registered under any circumstances, including: (1) marks likely to cause confusion about the source with a previously used or registered mark; (2) generic terms (Kleenex); (3) deceptive subject matter; (4) functional subject matter; (5) subject matter that falsely suggests a connection with a person or institution; (6) government insignia; and (7) with few exceptions, names, portraits, and signatures identifying particular living individuals without their written consent.
On its face, the Lanham Act prohibits registration of immoral, scandalous, and disparaging marks, but, under certain circumstances the U.S. Supreme Court has invalidated some of these restrictions – immoral, scandalous and disparagement – as unconstitutional under the First Amendment of the U.S. Constitution.
Certain trademark designations may be registered only on a showing that they have acquired distinctiveness, including designations that are merely descriptive of the goods or services, designations that are primarily geographically descriptive of the goods or services, and designations that are primarily merely a surname.
Benefits of Federal Registration
Although not required for the acquisition and protection of trademark rights, federal registration of a mark on the Principal Register confers significant benefits on the trademark owner. These include evidentiary presumptions relating to ownership of the mark, validity of the mark, exclusive right to use the mark nationwide in connection with the goods or services covered by the registration, and the right to use the registered trademark symbol: ®. Registration of a mark on the Supplemental Register confers certain benefits as well, including the right to use the registered trademark symbol, but not the evidentiary benefits of registration on the Principal Register.
State Registration
Most states have statutes for registering trademarks used in the state. Requirements for obtaining state registrations, and their terms, vary by state. California has a trademark registration statute that is substantially consistent with the registration provisions of the Federal Lanham Act. You can find the state statute at Business & Professions Code section 14207.
Under California law, trademarks, service marks and trade names enjoy the legal protections of the statute once registered. Regardless of the distinction between a trademark and a service mark, California law contemplates the use of a trademark in connection with both goods and services. The California registration statute requires a mark be used in commerce in California to be eligible for registration. California law does not allow for intent-to-use applications. California’s registration statute sets out substantially the same statutory bars to registration as those set out in Section 2 of the Federal Lanham Act.
A business name may be protected under California law even if it’s not protectable as a trademark. Filing a domestic corporation’s articles of incorporation or a foreign corporation’s certificate of qualification creates a rebuttable presumption the corporation has the exclusive right to use the trade name filed and any confusingly similar trade name in California. Owners of California registered marks can file a civil action for trademark infringement or a violation of various provisions of the Business & Professions Code. Any certificate of registration issued by the California Secretary of State is admissible in evidence as proof of the registration of the mark in any action or judicial proceeding in any court in California.
Federal Registration Process
If a company decides to seek registration of a mark after the search and clearance process has been completed, the next step is filing an application with the U.S. Trademark Office. A trademark application should be filed online through the Trademark Office’s Trademark Electronic Application System (“TEAS”).
Filing Basis
The most common legal bases for filing a trademark application are sections 1(a) and 1(b). A use in commerce based trademark application under section 1(a) is based on existing use of the mark in interstate commerce. An intent-to-use based trademark application under section 1(b) is based on a bona fide intent to use the mark in commerce in connection with the goods or services listed in the application, even though actual use of the mark has not yet taken place. Applications to register a trademark on the Supplemental Register must be based on use in commerce.
Federal Filing Requirements
A trademark application filed with the U.S. Trademark Office must comply with certain filing requirements and formalities. The main elements of an application to register a trademark in the U.S. include the: (1) applicant’s name, address, and email address; (2) applicant’s citizenship and type of entity; (3) attorney’s information, if applicant is represented by counsel; (4) a clear drawing of the mark; (5) a listing of the goods or services covered; (6) goods’ or services’ classification; (7) applicant’s verified statement of use or intent to use; (8) filing fee for at least one class of goods or services; and (9) additional use in commerce application requirements. This is not a complete list. Certain additional requirements may apply depending on the mark being registered, including if the application is for a certification or collective mark.
State Filing Requirements
A trademark application filed with the California Secretary of State must also comply with certain filing requirements and formalities before it can be approved. An application to register a trademark in California must include the following: (1) a complete application form; (2) a statement as to whether an application to register the mark has been filed with the U.S. Trademark Office by the applicant or a predecessor-in-interest and include the filing date, serial number, and status of each application; (3) a drawing of the mark; (4) a declaration of accuracy; (5) three specimens showing the mark as it is used in commerce; and (6) the application fee of $70. If the mark or any part of the mark is in any language other than English, the application must be accompanied by a certified translation in English. The applicant for the mark must also provide the Secretary of State with whatever additional information is requested during the examination process, including a description of a design mark. The Secretary may require the applicant to disclaim an un-registrable component of an otherwise registerable mark.
Examination by the U.S. Trademark Office
Once an application is filed with the Trademark Office, the Office issues a filing receipt to the applicant via e-mail. The filing receipt includes a summary of the filed information and assigns a serial number to the application. The application is then assigned to a Trademark Office trademark examining attorney. The examining attorney reviews the application to determine the application meets formal examination requirements (i.e., includes all the elements listed in application). The examiner also reviews the application to determine if the proposed mark is eligible for registration in accordance with the Lanham Act and the U.S. Trademark Office’s regulations. The examiner also evaluates whether the proposed mark is likely to cause confusion with any other previously applied for or registered trademark. The Trademark Office advises applicants – or their attorneys – to check the status of pending applications every three to four months. An applicant can check an application’s status online through the Trademark Office’s Trademark Search and Document Retrieval (“TSDR”) database or by calling the Trademark Assistance Center.
Office Actions from the Trademark Examiner
An initial response from the Trademark Office generally takes anywhere from 3 to 6 months, and sometimes longer. If the application meets all the formal requirements and the examining attorney has no further objections, the examining attorney issues a Notice of Publication, which is followed by publication of the mark in the Trademark Office’s Official Gazette, and requesting public comment on the application and proposed mark.
More typically, however, the first response is a letter from the examining attorney stating her objections to the application. The letter is more commonly referred to as an Office Action. The first Office Action is usually issued about 6 months after the application is filed. The applicant typically has 3 months from the date the Office Action is issued to respond to the examining attorney’s concerns. The applicant can request an extension of the response period once for an additional three months, for a fee. Office Actions typically include objections based on some defect in the formal application requirements, ineligibility for registration, descriptiveness, or likelihood of confusion with a previously registered or applied-for mark. The examining attorney may issue additional Office Actions if the applicant does not provide a satisfactory response. In cases where an application is refused based on a finding of likelihood of confusion with a prior registered mark, the applicant may be able to overcome the refusal through a consent agreement with the prior rights owner.
An applicant may appeal a final refusal of its application by filing a timely request for reconsideration by the examining attorney or an appeal with the Trademark Trial and Appeals Board (“TTAB”). An adverse decisions by the TTAB can be appealed to the U.S. Court of Appeals for the Federal Circuit in Washington D.C. or the applicant can instead file a civil action in a federal district court.
Publication of Your Proposed Mark
If an application passes through the examining attorney’s review without being rejected or abandoned, the Trademark Office will publish the mark in its Official Gazette, which is published weekly and available online or in hard copy. Any interested party can file an opposition to the mark’s registration on the Principal Register within 30 days after the date of publication. The Trademark Office will extend the period of time to oppose a mark’s registration on the Principal Register once for an additional 30 days if an interested party files an extension request with the TTAB within the initial 30-day period. The Trademark Office will grant additional or longer extensions for good cause, but the time for filing an opposition cannot be extended beyond 180 days from the date of publication. Applications to register marks on the Supplemental Register are not published.
Opposition to Your Application
Once a mark is published for opposition, a party that is entitled to assert a statutory cause of action may oppose registration of the mark by filing a Notice of Opposition within the opposition period or any applicable extension of the period. An opposition is a proceeding in which an interested party seeks to prevent registration of another party’s mark. Most oppositions are filed by an owner of a prior mark claiming the applied-for mark is likely to cause confusion with the prior mark. There are, however, other claims that can be raised in an opposition, including any basis to deny the application based on a legal deficiency like, by way of example, the proposed mark is descriptive. If an opposition is filed, the trademark applicant is provided with a copy of the notice of opposition, and has 30 days to file an answer. If an answer is not filed the application is deemed abandoned.
The opposition procedure is similar to litigation in civil court, but the TTAB has specific rules governing how an opposition proceeding is conducted. The TTAB usually does not conduct oral hearings. Most matters are resolved by the written record submitted to the TTAB by the parties to the dispute. Adverse TTAB decisions may be appealed to the U.S. Court of Appeals for the Federal Circuit or to any federal district court where jurisdiction and venue are appropriate.
Most oppositions are settled by an agreement reached by the parties to the dispute. In these cases, the parties typically enter into an agreement regarding the use of their respective trademarks. For example, one party may agree to limit the use and registration of its mark to a specific form – like in combination with a logo – or to specific goods and services. If the parties settle, the opposition can be dismissed and, depending on the terms of the settlement, the mark for which the application was filed may be registered on the Principal Register.
Registration
If no opposition is filed against a use-based application for a mark on the Principal Register, the Trademark Office will register the mark.
If no opposition is filed against an intent-to-use application (“ITU”), the Trademark Office will not register the mark until the applicant files a statement of use and an acceptable specimen showing use of the mark in interstate commerce in the claimed class of goods or services with the Office. Thus if no opposition is filed against an ITU application, the Office will issue a notice of allowance. The applicant then has 6 months to file a statement of use and an acceptable specimen of the mark being used in interstate commerce, and pay the required fees. An applicant can receive up to 5 6-month extensions of time to file a statement of use, including an acceptable specimen of use for the claimed class of goods or services. For each extension, the applicant must properly file a request within the immediately preceding 6-month period and pay the required fee. An extension request is often filed along with the statement of use and the specimen evidencing use. This ensures that if the applicant’s statement of use or specimen is defective the application is not deemed abandoned. The Trademark Office deems an ITU application abandoned if the applicant fails to timely file either the statement of use with an acceptable specimen of use, and any individual extension request.
Certificate of Registration
If a mark proceeds to registration, the Trademark Office issues an electronic Certificate of Registration, which is today the official document issued by the Trademark Office evidencing the mark’s registration. Because of the volume of trademark applications the Trademark Office receives it typically takes 12 to 15 months to successfully process a trademark application from submission to receipt of a certificate of registration. Make sure to retain a qualified trademark attorney with experience prosecuting trademark applications through the Trademark Office to maximize the chances of success of your application when you’re looking at registering your company’s trademarks.
About Finkel Law Group
Finkel Law Group, with offices in San Francisco and Oakland, has more than 25 years of experience helping our clients navigate registration of their trademarks through the U.S. Trademark Office, licensing those trademarks for commercial gain, and enforcing trademark rights in administrative proceedings before the TTAB and in federal court. When you need intelligent, insightful, conscientious and cost-effective legal counsel to assist you in understanding new laws that may affect your company’s intellectual property rights, please contact us at (415) 252-9600, (510) 344-6601, or info@finkellawgroup.com to speak with one of our attorneys about your matter.