Understanding the USPTO’s Trademark Application Options

October 1, 2015 — 1 Comment

When applying for a use-based federal trademark online with the United States Patent and Trademark Office, or USPTO for short, you basically have three options: the TEAS Regular application, the TEAS Reduced Fee application, and the TEAS Plus application. (TEAS stands for Trademark Electronic Application System.) Understanding which to file is an important decision.

TEAS Regular

A TEAS Regular application is the standard application. The filing fee is $325. Generally speaking, this is just a paper application process that starts online. When applying under this application, you don’t have to agree to use the internet for subsequent filings, you don’t have to supply an email address, and you can use custom information. For example, you can create your own unique goods/services description when applying.

TEAS Reduced Fee

As the name suggests, the TEAS Reduced Fee application is cheaper. It is only $275. Sometimes referred to as the TEAS RF, this application has additional requirements. Specifically, you must include an email address and you must agree to receive official application notices from the USPTO via email. Further, you must agree to file follow up filings using the TEAS platform also. However, like the TEAS Regular application, you don’t have to use a pre-approved goods/services description when submitting your application.

TEAS Plus

The TEAS Plus application is the cheapest option. It costs just $225. However, you must comply with additional requirements. Much like the TEAS RF application described above, you have to include an email address, agree to receive communications via email, and agree to use the TEAS system for subsequent filings. Additionally, you must use one of the USPTO’s pre-approved goods/services description when applying.

Of note, this application is somewhat new, appearing for the first time in early 2015.

$50 Processing Fee

You should note that if you elect to apply under one of the cheaper applications described above, you need to make sure you comply with that application’s rules. For example, if you apply under TEAS Plus but try to use a non-pre-approved goods/services description, or if you try to use a paper form, then you may be assessed additional fees. In particular, the USPTO will charge you $50 per class of goods/services for such a violation.

How do you pick?

If you are trying to decide how to apply for a federal trademark registration with the USPTO, your best bet is to speak to an attorney that has experience filing trademark applications. He or she can advise you on your ability to register your mark and if you decide to move forward, your trademark attorney can advise you on the best application to use.

In most situations the new TEAS Plus application is a great option to help you save money and to speed up the process. But sometimes you are better off using one of the other options.

Need help?

If you want help, Mighty Marks® can help you. We apply for trademarks all the time. Learn more at www.mightymarks.com.

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Image: Adobe/alexskopje
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Trademark Application Timelines – What to expect when you file a trademark application

September 17, 2015 — 2 Comments

Clients often ask how long it takes to get a trademark. Unfortunately, there are a bunch of answers to that question and it is hard to pin down. At a minimum, you will likely spend at least six months going through the USPTO trademark application process, but it is not uncommon to spend more than 12 going through various stages.

In this post, we will look at what the process and timeline looks like for applications based on actual use and also applications based on intent to use.

1(a) – Trademark Application Timeline Based on Actual Use

If you are already using your trademark in commerce, then you can file an application based on actual use.

The first step is to draft the application (most likely online using the USPTO’s online application system). Once the application is filed, the USPTO will take three months checking to make sure all of the basic requirements in the application have been filed and they may take other actions like assigning pseudo marks. The USPTO will then assign the application to an examining attorney who might take up to one month to review your application to see if it should be approved.

If the application is denied, the USPTO will send you an Office Action detailing the reasons for the denial and you will have six months to respond to the Office Action. If you don’t respond, the application is abandoned. If you do respond, then the USPTO will have another couple months to review your objections to its denials. If the USPTO decides not to reverse its original decision, then you have the option to enter into a lengthy formal appeals process that can easily take more than a year.

If the USPTO approves the application, or accepts your appeal to an Office Action, then your mark will be published for opposition. Third parties will be given 30 days to object to your application on various grounds. Assuming there are no objections, you will then receive a registration certificate in the mail about two or three months later.

Click here to view the USPTO’s visual timeline.

1(b) – Trademark Application Timeline Based on Intent to Use

If you are not using your mark in commerce but intend to do so within six months, you can file an Intent to Use Application.

Everything in this process and timeline is identical to the above with one exception. If the application is approved then, prior to publishing the mark for opposition, you must file a Statement of Use. In particular, once the USPTO approves the application, you will receive a Notice of Allowance and be given six months (which may be extended) in which to file your Statement of Use. The USPTO can take up to one month to approve or deny the Statement of Use.

Assuming your Statement of Use meets the USPTO’s requirements, your mark will register and you will receive a registration certificate in the mail about two to three months later.

The USPTO’s visual timeline for this process is similar to the chart referenced above and can be viewed here.

What to do After Registration

If you receive a federal trademark registration from the USPTO, you must file additional documents later. We wrote about those requirements in our post, How to Keep Your Trademark Registration Alive.

Need Help?

OK, so this process and all the various forms and requirements can be confusing.

But we’ve made it easy. For one low fee you can get your application filed and we can even help you with appeals and renewal documents when the time comes. Learn more over at www.mightymarks.com!

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Image: Adobe/Silkstock
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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What is a Descriptive Trademark?

September 4, 2015 — 1 Comment

We’ve mentioned before on this blog that you can’t protect a descriptive term. In it’s simplest form, that means if you operate a coffee shop called Mighty Coffee Shop, the USPTO might allow you to protect “Mighty” with respect to the sale of coffee, but you couldn’t protect “Coffee Shop” because it is descriptive of the product you sell: coffee.

In this post we will look a bit more at the framework behind descriptive marks and what you can and cannot protect.

In General

The USPTO makes it clear that an examining attorney will “refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” As a result, these phrases shouldn’t even be called a trademark because they are not capable of serving as a source identifier. That is, the consuming public is unlikely to associate the phrase itself with a particular provider of the good or service because the phrase merely describes the good or service. Examples include “Holiday Inn” for a hotel/inn and “Vision Center” for eye and optical services.

Similarly, the USPTO says that “a  mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.”

Secondary Meaning

One exception to the above rule is the doctrine of “secondary meaning.” Under this doctrine, a descriptive term can obtain trademark protection if, after some period of time, consumers begin to recognize your mark as a source identifier. That means that when the public sees that term, they think of your company. That’s fairly hard to achieve.

However, as we described in our post “Can a Fashion Designer Trademark its Apparel?,” it can be done. For example, the famous shoe designer Christian Louboutin obtained protection for his use of bright red soles on the bottom of shoes.

The Supplemental Register

Even though you can’t register a descriptive term on the principal register, you might be able to make use of the supplemental register. Obtaining a registration on the supplemental register simply provides notice to the world that you are using the term in commerce, but it is also an acknowledgement that your mark is weak. We covered this more in this post.

What You Should Do

First, when selecting your business name, don’t use a descriptive term. At a minimum, you should pick a term that is suggestive and, even better, you should pick a name that is arbitrary. Further, you should perform a trademark search to make sure no one else is using your preferred name.

And if you have any questions, feel free to contact us to discuss your ability to protect your name.

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Image: Adobe/RTimages
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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The Nine Factors a Court Considers When Deciding “Likelihood of Confusion”

August 18, 2015 — 1 Comment

Trademark infringement occurs when one party uses another party’s trademark in commerce in such a way that consumers are likely to be confused as to the first party’s goods or services. Whether consumers are likely to be confused is a question of fact that must be decided during a trial (or by the parties in settlement negotiations, when possible).

The nine factors below are helpful in making this decision and are used by courts and lawyers in most trademark litigation lawsuits. As a result, they are good factors for you to think about if you find yourself being accused of infringement or if you think someone is infringing on your mark.

1. Strength of the Plaintiff’s Mark

Assuming the plaintiff has a valid trademark, they will look to the strength of the mark to decide how much protection it deserves. As you can learn in this post, arbitrary/fanciful marks receive the most protection, suggestive marks the second most, and descriptive marks the least. (And generic marks never receive protection.)

2. Similarity of the Marks

Courts will look at three items when comparing the two marks. First is sight, do the marks look alike when written next to each other. Second, do the marks sound the same when spoken. And third, do they have the same or similar meanings when looked up in a dictionary. The more similar the marks are from those viewpoints, the more likely trademark infringement is to be found.

3. Similarity of the Goods or Services

Related to the last point, the court will review how similar the goods or services are to one another. If one mark is used to sell enterprise computer software and the other used to sell iPhone games, those might be considered similar enough as to cause confusion. On the other hand, if the other were used to sell grass seed, then they would probably be sufficiently different to avoid a finding of trademark infringement.

4. The Likelihood the Plaintiff will Expand into the Defendant’s Market

For common law trademarks (which only receive protection in their geographical areas and natural zones of expansion) courts will look to whether the plaintiff is likely to enter the defendant’s market. For example, a food truck operator in Miami might be able to prevent a similarly named food truck from operating in Orlando, but probably not in Portland (which is why the Miami operator should get a federal registration – for nationwide rights).

5. Actual Confusion

A court can find trademark infringement even if actual consumer confusion is not present – all that is needed is likely confusion. Of course, if you have evidence of actual confusion such as your customers going to a competitor’s location due to their infringement that goes a long way towards proving an infringement case.

6. Sophistication of Buyers

Courts will also consider how much effort a consumer is likely to put into the purchasing decision. The more effort (such as buying a plane) the less likely they are to be confused because they should learn of the different source during their research. The less likely (such as buying clothes), the more likely they are to be confused as to the source because they likely will not do a ton of research into the source.

7. The Defendant’s Intent

While not a technical requirement, courts often look at this consideration because if bad faith can be shown, it is clear evidence of infringement.

8. Quality of Defendant’s Goods

When determining damages, a court is likely to look to whether the defendant’s goods were shotty. If so, that could harm the goodwill of the plaintiff and entitle the plaintiff to greater damages.

9. Consent Agreements

If the plaintiffs have an agreement under which the defendant was granted permission to use the mark, then that will obviously lessen the likelihood that confusion exists and therefore negate an infringement claim.

Stay Current

We hope our blog is helpful to you in terms of teaching you what you need to know about trademark law. To stay up to date, be sure to connect with us on Twitter & Facebook!

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*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

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Domain Law 101: The Anticybersquatting Consumer Protection Act

August 4, 2015 — Leave a comment

Startups and businesses of all sizes often struggle to obtain the right domain name for their companies. Many third parties own domain names you may want to use and they often have a legal right to do so. However, when they don’t have such a legal right, and when you have a valid trademark claim to the domain, the Anticybersquatting Consumer Protection Act (ACPA) may allow you to force them to transfer the domain to you.

Let’s take a look at the law and what it means to you and your business.

What is Cybersquatting

The ACPA can be used to resolve a lot of different types of abuses. For example, if someone registers a domain using your trademark and offers to sell the domain to you for a large sum of money, that may be a violation of the ACPA. It can also be used to prohibit someone from improperly profiting from the commercial use of your trademark. Further, you can use the ACPA to prevent someone from tarnishing your mark, for example using your trademark in a phonographic website name.

How to Win a ACPA Claim

To win such an argument, you must show certain things, some of which can be hard. Below is a summary of things to consider when deciding if you have a good claim.

1. Valid trademark rights

You must show that you have valid trademark rights. But not just any trademark rights – rather, you must have a trademark that is distinctive or famous. This can sometimes be hard to prove.

2. Where and how your mark is used

To win a ACPA claim you will have to show that the other party registered or trafficked in or otherwise used a domain name that improperly uses your trademark.

Further, you often cannot win a ACPA claim if your mark is used after the top level domain. For example, if someone used “MightyMarks” in a path (like domain.com/mightymarks) it would be hard for us to win a claim. But if they used it in the second level domain (like WeAreMightyMarks.com) we would have a good chance of winning our claim.

3. Time of registration

To prevail under an ACPA claim, you must also be able to show that the registration of the domain in question was made after your trademark became distinctive or famous. This obviously makes it hard for new companies to win under a ACPA claim.

4. Typo domains are also covered

Often times you will find misspelling and typo domains that create problems. For example, if someone created MightyMarksBl0g.com (note the zero in place of the “o”), that would be considered a typo domain. In such a circumstance, even though the domain is not identical to our domain, a court would still likely find in our favor because it would still be confusingly similar to our domain.

5. Bad faith

You must also prove that the other party acted in mad faith. This is probably the hardest element of winning an ACPA claim. Specifically, you must show that the other party acted with “a bad faith intent to profit from” your trademark.

As a result, if another party is using your trademark in a different geographic region, or for a different type of goods or services, even if the use is only minimal, you may have an uphill battle in front of you. Another example is when someone registers their name or nickname. In those situations, even if they are similar to your trademark, they may have a legitimate use and therefore it may be hard to win a claim against that person.

On the other hand, if someone registers a domain incorporating your trademark and immediately tries to sell you the domain for a high price, that is usually pretty good evidence of a bad faith intent. In these situations, you can often win a claim against that person.

What should you do?

If you find yourself with a possible ACPA claim, you should definitely speak to an attorney about your case. he or she can advise you of your rights and talk about what damages and equitable remedies are available to you (we will cover those in a future post).

Find this helpful?

If you enjoyed this post, you should subscribe to our quarterly newsletter, Mighty Updates, to stay on top of trademark news and legal issues.

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Image: Thinkstock/TheaDesign
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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From Arbitrary to Generic – The Trademark Protection Spectrum

July 21, 2015 — 3 Comments

The ability to protect a trademark depends greatly on the ability of the mark to serve as a source identifier. Courts will usually classify a mark in one of four categories in order to determine if protection should be allowed: (1) Arbitrary; (2) Suggestive; (3) Descriptive; (4) Generic. Marks falling in the arbitrary and sometimes in the suggestive categories can usually obtain protection. Marks falling in the descriptive category can obtain protection only in limited situations. And marks falling in the generic category can never receive protection.

Let’d dive deeper into each.

Arbitrary

The best marks from a trademark perspective are arbitrary marks. These marks, sometimes called fanciful marks, bear no logical relationship to the good or service being sold. Good examples of arbitrary marks are Apple for computers and Kodak for cameras. Design marks can also serve as good examples of an arbitrary mark, such as the Nike swoosh.

Arbitrary and fanciful marks are inherently distinctive and can almost always be protected, assuming there are no conflicting marks already registered.

Suggestive

A mark is “suggestive” if is suggests a characteristic of the good or service being sold. A good example of a suggestive mark is Coppertone, for sun tan lotion because it doesn’t describe the product but it does suggest a benefit of the product (a copper toned skin color). Suggestive marks differ from descriptive marks (below) in that consumers need to use some imagination to associate the mark with the good or service, yet the mark is somehow related to the good or service itself.

Suggestive marks are usually distinctive and can also almost always be protected, assuming there are no conflicting marks already registered.

Descriptive

Descriptive marks are just that; they describe the good or service being sold. Good examples are Holiday Inn for a hotel/inn and Vision Center for eye and optical services. Descriptive marks do not deserve immediate protection because if someone can own a descriptive term, it makes it nearly impossible for other companies to sell goods or services because they cannot use the descriptive term to sell their good or services.

However, descriptive marks can receive trademark protection if they acquire a “secondary meaning.” This means that the consuming public has come to associate the descriptive mark with a particular source selling that good or service rather than the good or service itself.

Descriptive marks can only be distinctive, and thus receive protection, if they acquire a secondary meaning as stated above, again assuming there are no conflicting marks already registered.

Generic

Lastly, generic marks are marks that are simply that: generic.

Good examples of generic marks would be BBQ or Computer. You will never be able to trademark those words because it would then make it impossible for other companies to sell those goods or services using those words.

Need Help?

MightyMarks.com is ready to help businesses across the country with their trademark needs. Visit us online to learn more about how we can help your company.

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Image: Thinkstock/vlastas
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Best Practices for Choosing a Business Name

July 7, 2015 — Leave a comment

One of the earliest decisions a new business owner must make is what to call the new venture. There are many considerations including marketing, branding, and others but in this post we want to cover some of the legal considerations.

First, check the name availability with your state.

In order to form a LLC or Corporation, you must file formation documents with your state’s Secretary of State. As a result, the Secretary of State maintains records on all active and inactive businesses registered in the state.

This is often the first place you should search for name conflicts because a Secretary of State will not allow two active businesses to have identical legal names.

For example, if you want your legal name to be Hot Spot Technology and someone already registered a business with that name your application will be denied. But you can change your name to Hot Spot Technologies and get it approved (at least as the company’s legal name with the state).

But you have to look further!

Second, check the USPTO records.

While state business registries are concerned with identical names, trademark law is concerned with “confusingly similar” names.

The first trademark database to search is the United States Patent and Trademark Records. You should read our post on how to search the USPTO database, but in short, what you are looking for is any registration that is confusingly similar to your intended name that is also in a similar market. For example, if Hot Spot Technology sold grass seed, and your company with the same name wanted to sell computer chips, you can still probably get it approved.  However, if you also wanted to sell grass seed, you couldn’t get a registration on your favorite name or even the Technologies version mentioned above because the marks would be confusingly similar and in the same goods/services area.

So, while you can have a legal name of Hot Spot Technologies, you’d have to have a different name under which you do business (a DBA or Fictitious Name).

But that’s not all!

Third, check the common law.

As you may have read on this blog before, trademark law is comprised of both statute and common law. As a result, you need to run a common law trademark search. The post mentioned above covers this too, but the short version is you need to run internet searches, look in trade magazines, newspapers, and more, all to make sure there are not any unregistered marks out there that might cause you problems.

Ready to File?

If you are ready to file for a federal trademark, you should check out MightyMarks.com; our online digital trademarking service.

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*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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How to Assign Ownership of a Trademark Registration

June 25, 2015 — Leave a comment

Trademark rights stem from use of a mark in commerce, meaning you cannot own a trademark registration unless you are actually using the mark in commerce (but be sure to check out our post on intent to use applications).

As a result, you cannot simply assign ownership of a trademark unless you are also assigning the goodwill associated with that mark and the new owner continues selling the same or similar goods and services.

This post will explain how to assign a registration to a new owner and how to change your name with the USPTO if your business name changes.

Timing

The ability to assign your trademark rights depends on where your mark is in the application process.

If you have a registration, or an application based on actual use, you can request an assignment through the USPTO. However, if your application is not yet registered and is based on intent to use, then you cannot request an assignment.

Process

The first step to recording an assignment is to file a Recordation Form Cover Sheet, along with supporting documentation. That supporting documentation is most often some form of trademark assignment contract or certification (more on this below).

You file the form and supporting document through the Electronic Trademark Assignment System (ETAS) along with the corresponding fee, currently $25.

Supporting Documentation

Depending on the circumstances of the assignment, your supporting documentation may take several different forms. The most common is a simple trademark assignment agreement between the two parties. The agreement should state that the assigning party is giving up its rights in and to the mark and that all trademark rights are being assigned to the receiving party. Further, the document should state that the associated goodwill is being assigned in addition to the trademark itself. This is because a trademark cannot be assigned without the corresponding goodwill.

Name Change

You may be wondering what to do if you are not actually assigning your mark, but just changing the name of the owner. In such a case, you actually follow the same procedure as outlined above. However, rather than using supporting documents showing the assignment, you just file documents supporting the name change (such as a filing with your state’s secretary of state).

Your Options

While you can file the Recordation Form Cover Sheet on your own, the supporting document is usually more complicated. To make sure you draft the proper supporting document, it is usually best to involve an attorney with making these changes to your pending application or existing registration.

If you would like help with your assignment or name change, feel free to contact us anytime to learn how we can help.

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Image: Thinkstock/moodboard
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Learn About Competitors Using the Trademark Status and Document Retrieval Service

June 10, 2015 — Leave a comment

A little known fact about the USPTO trademark database is that you can use it to dig up information about your competitors.

Here’s how.

First, run a search.

Using the USPTO’s search tool, you can search for trademarks similar to yours, names of applicants/competitors, and other search terms. Then, skim through the results to see if anything looks relevant. However, unlike when you search for potential trademark conflicts, in this case you want to look for “live” and “dead” marks. This is because we are trying to learn about your competitors, not so much about the marks themselves.

Second, enter the TSDR.

Once you have pulled up an application or registration, click on “TSDR” in the upper right corner.

The initial page will give you a summary of the registration or application. This can be helpful, but the next step is better. Click on the “Documents” tab at the top of the page to reveal all of the records relevant to that registration/application.

Third, dig!

The documents in this tab contain all kinds of information that might be useful to you.

You can learn about whether your competitors are using an attorney to handle their application by looking at the correspondence information. You can learn whether your competitor was denied in the application process and how they responded to the same. You can also review the specimens and evidence of use which they provided the USPTO to obtain a registration, which may provide useful information to you in terms of what they are selling and how they are marketing their goods/services.

You may also accidentally stumble on another party that objected to your competitor’s application. If you see that, then you can dig further to see what marks they own or claim to own and what arguments they made against your competitor’s application.

Next Steps

Then, after you have dug up all of this useful information, you can use it in several ways. You can use it to better prepare your own application and you can use it to improve your marketing strategies once you learn what your competitors or doing or are planning on doing.

And if you need help reviewing these documents, you can always seek the advice of a trademark attorney.

Sign Up

If you find these tips useful, be sure to subscribe to MightyUpdates, our quarterly email newsletter to stay on top of trademark legal issues

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Image: Thinkstock/moodboard
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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How to Keep Your Trademark Registration Alive

May 26, 2015 — 2 Comments

When you search the USPTO database for trademarks you will find a lot of marks classified as “DEAD.” This usually means one of two things: First, the mark was denied registration and the applicant either failed to appeal the denial or they did not win their appeal; or second, that the mark was canceled for failing to file proper maintenance documents with the USPTO.

If you have a trademark registration, don’t let that happen to you! Make sure you file the below forms to keep your registration “ALIVE.”

Section 8 Declaration of Use

The first filing you should make after receiving a registration is a Section 8 Declaration of Use. You must file this between the 5th and 6th year after the registration date.

The purpose of this filing is to show the USPTO that you are still using the mark in commerce. For that reason, you will be required to file specimens of your use (much like when you filed the original application).

If you fail to timely file this declaration, there are grace periods before your mark is cancelled, but you don’t want to wait too long, so file as soon as you can!

Section 15 Declaration of Incontestability

Assuming your mark has been in use for 5 continuous years and is on the Principal Register, you can file a Section 15 Declaration of Incontestability to claim “Incontestability Status.” This creates a legal presumption that your registration is valid and provides for many other benefits to mark owners.

Often this is filed along with the Section 8 filing above. In fact the USPTO maintains a combined 8/15 form that you can use to save time and paperwork.

Section 9 Renewal

Lastly, between the 9th and 10th year after you receive a registration you must renew your registration. Then, it must be renewed every ten years thereafter. At the same time, you must file another Section 8 Declaration of Use showing actual use of the mark in commerce.

Again here, the USPTO maintains a combined 8/9 form to save you time and paperwork. And like above, there are grace periods if you fail to file, but you really should just file on time to save money and headaches.

Find this information helpful?

Be sure to subscribe to MightyUpdates, our quarterly email newsletter to stay on top of trademark legal issues.

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*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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