|Trade, service, certification, and collective marks and trade dress are all protected by the Lanham Act. Trademarks that are not registered in any jurisdiction but are simply applied to products or services as a brand name are called “common law” trademarks. Common law trademarks and trade dress are also protected under section 43(a) of the Lanham Act.
A. Searching a Trademark
Before applying for a federal or state trademark registration, it is good practice to perform a trademark search. A search helps to discover potential confusingly similar marks already in use which might prevent your client’s trademark registration. The scope of the search should include as many kinds of reference databases, directories, or lists as possible including, but not limited to: United States trademark register, United States pending trademark applications, state registrations and applications, market directories, phone books for major cities, domain names and Internet sites, trade name and business owner listings and reported decisions. In most cases, it makes sense to recommend hiring a trademark search vendor to perform the search for the trademark owner and then review and analyze the search as the PTO will, to evaluate the mark’s chances for registration.
Another alternative is to review the PTO’s electronic trademark database available through the Internet at www.uspto.gov. and the applicable state database in Virginia, the SCC’s database is located at www.State.Va.US/SCC/division/srf/index.htm. However, searching only the PTO’s website will not give the researcher a complete view of state trademarks, marks which are not registered (common law marks) which are being used in the U.S., or Internet or domain name references to marks for competing products or services to name only a few. In the U.S. rights accrue through use of the mark on products or to represent the goods and services in use in commerce; therefore, unregistered mark use may preclude registration. Also, remember no search can ever be complete or foolproof. From time to time, on the eve of registration, common law marks may appear, seemingly out of nowhere, which have been in use by the client’s competition for several years. In some cases, these common law marks will effectively preclude your client’s trademark registration. This is why in the best advice you can give your client is to begin use of the mark in commerce as soon as possible. Clearly, if another person has registered the same mark for the same goods or services, there is no point in pursuing registration. The prudent attorney will advise the client to choose another mark.
B. The Benefits of Trademark Searches
A search will also help the trademark owner assess the distinctiveness of the chosen mark. If there are numerous references to identical or very similar marks for similar goods, the chosen mark may be considered “weak” and the scope of the protection narrow. Also, since the federal register of trademarks is considered “constructive notice” of all registered U.S. marks, conducting a search at the very least will enable the trademark applicant to make a good faith declaration that he or she has no knowledge of any other confusingly similar mark in use for similar goods or services and avoid charges of willfull infringement. As later discussed, no intent is necessary to infringe and no defense of innocent infringement exists.
Some companies take the position that it is more important to launch the product first without pursuing trademark registration. If the product sells, they worry about registration later. This strategy puts the company in the position of having to fight either trademark infringement lawsuits or engage in large scale product recalls if a prior user, registered or not, already uses the same or a confusingly similar mark for a similar product or service. This is a short term, low cost strategy that in the long run can be very expensive.
C. Trademark Search Costs
Design marks are more difficult to search and consequently cost more, around $400 for each class searched per mark.
D. U.S. (Federal) Trademark Registration Procedures
An applicant may file an application for federal trademark registration as a:
- Use-based Application, based on the trademark owner’s actual use of the mark for goods transported or services rendered in interstate or international commerce; or
- ITU Application, based on the trademark owner’s intent to use the mark on goods sold or in conjunction with services rendered in interstate or international commerce. Rights in a trademark accrue upon first use of the mark in commerce regardless of registration. The exception to this rule is that rights to a mark filed in an ITU application begin upon the filing date of such application with the PTO, assuming use is achieved and the mark application matures to registration. Use of a mark in commerce is defined under the Lanham Act as “bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” A mark is “used in commerce” when the mark is placed on goods or associated with services which are sold or transported between entities located in different states (interstate commerce) or between entities located in the United States or a territory controlled by the United States and some foreign country, (international commerce).
- Requirements for a Trademark Application: In order to register one’s mark, the trademark applicant must file the following with the PTO:
- A Written Application. A written application in such form as may be prescribed by the PTO specifying applicant’s domicile and citizenship, the date of applicant’s first use of the mark, the date of applicant’s first use of the mark in commerce (unless the application is filed based upon the intent to use), a description of the goods or services in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods, and including a statement to the effect that the person making the verification believes himself, or the firm, corporation, or association on whose behalf he makes the verification, to be the owner of the mark sought to be registered, that the mark is in use in commerce, and that no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion or mistake, or to deceive;
- A Drawing. A drawing of the mark;
- Specimens of Use. One or more specimens of the mark (examples of use of the mark “in commerce”) on the products or for services; and
- Payment of a Fee. Payment to the PTO of the prescribed fee of $375.00 per mark per class if you submit a paper filing to the PTO; $325.00 per mark per class if submit an electronic filing to the PTO through the Trademark Electronic Application System (TEAS); and $275 for a TEAS Plus Application. NOTE: These fees are valid as of May 15, 2006, but subject to change. Therefore, one should verify filing fees before submission by looking at the PTO website (ßlink to http://www.uspto.gov/go/fees/index.html).
In general, an applicant should craft the description (also called the “identification” or the “recitation”) of the goods and/or services covered by the mark in a very broad fashion to reserve the maximum scope of rights associated with all of the products or services that will now, or could in the future be associated with the trademark. In drafting the description of goods or services, it is a good practice to use as few words as possible, choosing broad general terms to broaden the scope of the mark’s coverage for the client. The USPTO has a list of acceptable identifications to be used within the description of goods and services. This list provides a good starting point for drafting any description. The list can be found in the Acceptable Identification of Goods and Services Manual at http//:www.uspto.gov.
- 1 The law requiring use before trademark rights may be obtained is exactly opposite of the laws which govern most of the rest of the world. In most other countries, rights accrue through registration, not through use. In many cases use is completely irrelevant; the only important fact is registration. If advising a client who does business internationally, the best strategy is to register all of the client’s marks in foreign jurisdictions as soon as possible to prospectively reserve rights.
- 2 An exception to this rule is when a federal Intent to Use (ITU) trademark application is filed prior to a trademark owner beginning to use the mark in commerce; such use will effectively cut off any rights which common law mark owners may have acquired after the filing date of the ITU application assuming that the ITU application matures to registration.
- 3Thomson & Thomson search costs vary based on turnaround time, costing $790 for a two day search; $1065 for a same-day search; and $1310 for a four hour search.
- 4 15 U.S.C. § 1051(a).
- 5 Id. § 1051(b).
- 6 ConAgra, Inc. v. George A. Hormel & Co., 990 F.2d 368, 371 (8th Cir. 1993).
- 7 In general, an applicant should craft the description (also called the “identification” or the “recitation”) of the goods and/or services covered by the mark in a very broad fashion to reserve the maximum scope of rights associated with all of the products or services that will now, or could in the future be associated with the trademark. In drafting the description of goods or services, it is a good practice to use as few words as possible, choosing broad general terms to broaden the scope of the mark’s coverage for the client. The USPTO has a list of acceptable identifications to be used within the description of goods and services. This list provides a good starting point for drafting any description. The list can be found in the Acceptable Identification of Goods and Services Manual at http//:www.uspto.gov.