Protecting Your Trademarks

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Trademarks

How to Protect Your Mark(s)

Trademarks and service marks are among the most valuable assets that a business owns, and can be as important as the goods or services offered by the company. U.S. trademark law is very liberal, and there are many different kinds of intellectual property that can be protected: words, phrases, slogans, symbols, designs, shapes (e.g., bottles) and trade dress (e.g., a product’s packaging or the decor of a business). The purpose of trademarks is to distinguish one company’s products or services from those of others. Consumers often select products and services because they have confidence in certain trademarks. For that reason, a loss of trademark rights can be as harmful as a decrease in quality. Knowing how to protect your company’s intellectual property, and actually protecting it, are some of the most important steps you can take in promoting your business brand.

The following information will explain how the Collard & Roe trademark team will help you protect your trademark(s) and explain important steps in the process. The following suggestions are offered to help you or your client obtain and maintain the broadest trademark protection possible, and at the same time, reduce costs.

Determining Whether a Mark Will Be Available

The first step in pursuing trademark protection is to determine whether a particular mark will be available. Though not mandatory, we always recommend conducting a search for similar marks in commercially related fields. A failure to do so could lead to problems in the future, and can be even more expensive if your company is forced to change the name of its brand. The determination of whether a mark is available is a subjective one, and no single rule applies to all situations.

What do you need to know when first choosing a mark? The following are some examples which sometimes can form the starting point of analyzing availability:

• Generally, the word portion of a mark is considered more significant than the design element.

• Where common elements of two marks are strong, the addition of words with little trademark significance (e.g., descriptive or generic terms) usually will not be enough to distinguish the marks. On the other hand, where the common portions of the mark are fairly weak, then the addition of other words may be enough to distinguish the two marks.

• Phonetically similar words are treated as equivalents, i.e., a difference in spelling is usually not enough to distinguish otherwise similar marks. For example, from a trademark point of view, there is little difference between QUICK, KWIK and QUIK.

• Foreign words will be translated, and the English language equivalent will be compared with marks already used or registered in the United States. For example, THE ROSE, LA ROSA and DIE ROSE all will be treated as equivalents (i.e., a rose is a rose in any language).

Even if conflicting marks do not exist, there are specific categories of marks that generally cannot receive full protection under U.S. law. Marks that describe a product of service, consist solely of a surname recognizable in the United States, or describe a geographic place, can only be registered if there has been significant use of the mark in the United States over many years. However, marks that are descriptive or geographically descriptive or are surnames usually are registrable on the Supplemental Register. Once the marks has been registered for five years, an application can be filed to register the mark on the Principal Register.

Only after a search is conducted, is it possible to provide you with an analysis of your client or company’s chances of success in obtaining a registration.

If a decision is made to adopt and use a mark in the United States, then the steps discussed below should be considered.

File a Trademark Application As Soon As Possible

Under current U.S. law, the first party to file an application in the U.S. Patent and Trademark Office has rights that are superior to any other party that subsequently (a) files an application, or (b) begins use of its mark in the United States. The obvious conclusion to be drawn is that one should file an application as soon as possible. Any delay in filing could cause a loss of trademark rights, which in turn would be costly, not to mention much wasted energy in marketing a trademark that suddenly cannot be used. We understand that time is money. The Collard & Roe trademark team is one of the only firms that will file applications or take other action the same day that we are asked to undertake work.

Find a Valid Basis for Filing a U.S. Application

Under U.S. law, there are several bases for filing an application:

• A Foreign Registration;
• A Foreign Application filed no more than 6 months before the U.S. Application;
• An international registration or application filed pursuant to the Madrid Protocol which is extended into the U.S. by the filing of a U.S. application;
• Use of a mark in commerce in the United States; or
• A future intent to use the mark in the United States.

1. Foreign Registration (Non-U.S. Entities)

Under Section 44(e) of the U.S. Trademark Act, an entity that is located in a country which is signatory to certain treaties or that grants reciprocity to the United States may rely on its home country registration for filing an application in the United States. If this basis exists, a copy of the home country registration should be obtained as soon as possible, as well as an English translation (although we can, and do, provide translations for the convenience of many clients).

2. Foreign Applications (Non-U.S. Entities): The Six Month Rule

Section 44(d) of the U.S. Trademark Act permits a foreign applicant to rely on a home country application if that application has been filed six months or less prior to the filing of the U.S. application. For example, if a non-U.S. application has been filed on January 2, 2007, the U.S. application must be filed on or before July 2, 2007. Moreover, the applicant will receive January 2, 2007 as a “priority filing date” which is often crucial in disputes concerning which party is the “senior user.”

Section 44(d) applications also should be filed as soon as possible, and definitely before the priority deadline expires. A copy of the home application is not necessary as it is sufficient merely to set forth the filing date and application number in the foreign country. However, a copy of the foreign registration certificate will be required once it has issued.

3. International Registration Pursuant to the Madrid Protocol

The United States is a member of the Madrid Protocol, an international treaty. This treaty has an impact of U.S. trademark filings for both non-U.S. and U.S. applicants, and each situation and client requires its own strategy.. With respect to non-U.S. applicants, foreign entity can extend its international registration rights into the United States by seeking a request to extend protection. On the plus side, the number of filings worldwide is reduced since an application can extend to a number of countries without filing separate applications in each country. However, when the U.S. trademark examiner ultimately issues an Office Action in the U.S., the applicant will have to retain U.S. trademark counsel. As the extension from a non-U.S. home country almost certainly will contain defects under U.S. practice, office actions will be more frequent and complicated than they would be if a U.S. application was filed directly by a U.S. trademark attorney. This will decrease any cost savings from extending protection in the United States.

In addition, in our experience, non-U.S. applicants have had difficulties protecting their marks with all of the goods and services they desire. The U.S. Patent and Trademark Office divides all goods and services into 45 different classifications. These classifications are used for administrative purposes, and U.S. trademark examiners are given broad discretion in determining whether goods are proper described and classified. One problem our clients have encountered repeatedly is that the U.S. Patent and Trademark Office cannot amend the classification from that given by the International Bureau of the World Intellectual Property Organization. Thus, for example, if a mark is filed for use with goods in Class 4 and the examiner requires that some of the goods should be classified in Class 1, those goods must be deleted from the application. However, if the application had been directly filed in the U.S., the applicant would be allowed to add Class 1 to its application. Since the U.S. Patent and Trademark Office is very stringent in its requirements, the applicant may have been better served to file an application directly in the United States. Of course, we have assisted our clients by filing U.S. applications for applicants to protect goods and services which had been deleted from Madrid applications.

Under Section 66 of the U.S. Trademark Act, U.S. applicants can also seek to extend their U.S. trademark registration or application rights to foreign country members of the Madrid Protocol. Fees depend on the number of classes, number of countries, and the precise countries for which extensions are sought. The respective trademark offices of those countries then examine the extension request and rule on whether a registration extension shall be permitted. The advantage of this procedure is that one U.S. trademark registration or application can be extended to numerous countries. The disadvantage to this procedure is that the extensions are “tied” to the underlying U.S. registration/application. Since the U.S. Patent and Trademark Office is very stringent in its requirements for an acceptable identification of goods and services, the goods and services description may be unnecessarily narrow. More importantly, if the U.S. registration/application fails for any reason (a third party challenge or a rejection), then the extensions will also fail (although conversion to national applications are permitted with payment of fairly significant fees).

4. Use of the Mark in the United States

If a mark has been used on a product or with a service in the United States, then an application must include (a) the date upon which the mark was first used in the United States; (b) the date the mark was first used in a particular type of commerce (either commerce between a foreign country and the United States, or “interstate” commerce between two states of the United States); and (c) a statement that the mark is now in use in commerce. In many situations, the first and second dates will be the same.

Use-based applications also must contain specimens or samples of use. For smaller consumer goods, you should send us two (2) samples showing the mark on or in connection with the goods (such as hangtags or labels for garments, packaging for pharmaceutical products, photographs of a computer screen or actual print-outs of a computer program showing the mark, labels from wine bottles or canned goods, and stickers or tags affixed to perfume bottles). For items that are larger (such as machinery) or irregular (such as the shape of a bottle), photographs of the mark used on the goods are acceptable. If preferred, we can take photographs for you.

A common error is the submission of promotional material for goods (such as a newspaper advertisement or brochure advertising a product). While these specimens may be acceptable to show use of mark with services, they are per se unacceptable specimens for goods, unless the advertisement or brochure contains a photograph of the product with the mark visible on the product itself. Please note that invoices, bills of lading, and similar documentation are not acceptable.

Draft the Identification of Goods or Services Carefully

Too often, clients carelessly advise attorneys of the goods or services upon which a mark will be used. This can be an expensive mistake to correct, or even worse, could lead to a registration that does not afford maximum protection.

The object of any goods and services description is to stay as broad as possible and, at the same, meet the rigid specificity requirements of the U.S. Patent and Trademark Office (“PTO”). For example, the PTO will not allow a broad description such as “clothing.” If the identification of goods lists “clothing,” the trademark examiner will issue an Office Action requiring that the exact items of clothing be named (e.g., pants, shorts, jackets, shirts, skirts, socks, coats, hats, shoes). This additional Office Action will increase costs for your client or your company. However, if the identification of goods is already specified (e.g., clothing, namely, pants and shorts), the examiner may determine that the identification of goods is acceptable and the Office Action (and increased costs) may be avoided.

On the other hand, a client’s rights can be unnecessarily limited if the goods and services description is too specific. For example, if an applicant describes its goods as “shirts and pants for golfers,” the identification of goods would be accepted by the trademark examiner. However, if the client subsequently expanded its clothing line to include shirts and pants for tennis players, or for the general public, it may have to apply for a new registration as the current registration is restricted to “golf” clothing.

Therefore, when preparing a list of goods or services, the attorney should insist upon as specific a list of common commercial names as possible. If no common commercial name exists for a particular item (such as a new product that has no recognizable generic name), then the client should provide an explanation of the material composition, intended uses, and consuming public of the product. All of this information should be given to the trademark attorney, who then could use wording that is as broad as the PTO will permit. In addition, please note the following:

• Regardless of the field of goods or services being described, words such as “apparatus”, “system”, “machinery”, “products” and “accessories” are never acceptable unless they are qualified by more specific terms (such as “food products, namely, chicken, cheese and beef” or “fashion accessories, namely, handbags”).

• For computer products, the field of use or the type of product must be specified, e.g., “computer software used by accountants” or “computer software in the field of accounting.”

• The word “including” is unacceptable as it is considered too open-ended. Therefore, instead of “cosmetics, including lipstick,” an applicant should use “cosmetics, namely, lipstick.”

• For foreign applicants filing applications pursuant to the Madrid Protocol, class headings should not be used. The examiner is almost certain to issue an Office Action to require further specificity of the goods and services. In addition, when the client ultimately explains the exact goods and services on which its mark is used, the examiner may determine that those goods are not within the scope of the original identification of goods and services (even though the client believed that it would receive broader protection by listing the class heading). For example, if the class heading for Class 9 is:

“Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus”

the examiner will require further specificity of the goods. If the client advises the examiner that the mark is used on “computer software in the field of accounting,” the examiner may determine that those goods exceed the scope of the original identification of goods because “computer software” is not listed. Thus, clients are better served by listing the exact goods and services on which the mark is used.

All of these points may seem small, but a failure to avoid such common errors leads to more Office Actions and greater expense.

Include a Drawing Page That Meets Specific Requirements

Under U.S. Trademark Rules, there are two types of drawings: (a) a typed drawing, and (b) a special form drawing. A typed drawing contains standard characters of the mark and there is no claim to any special font, style, size, color, or any other design element. A special form drawing is used when an applicant wishes to claim stylized letters or numbers, a design element, or a special color in its mark. It is usually to a client’s advantage to present a mark in a typed version. This will allow the client greater flexibility if it decides to change the presentation of its mark. The only exception to this advice is if a logo or stylized script creates a truly unique impression upon consumers. While rare, some logos are eye-catching and do advise consumers of the entity with whom they are dealing.

Typed drawings cannot contain any special features. All letters must be in upper case (capitalized) and the mark must be presented horizontally (as opposed to own word on top of another). Special form drawings can be presented either completely in black and white, with clear black lines and absolutely no shades of gray, or in color (if color itself is an important component of the mark and will not be changed later).

Provide U.S. Trademark Attorneys with Specific and Detailed Information and Materials

Under current U.S. practice, trademark attorneys can file applications under their own signatures, thereby eliminating the dely of sending applications to clients for signature (as used to be the case). However, the U.S. attorney can only file these applications if the client’s instructions are precise and complete. For example, the name of the applicant should be correct (e.g., if a company name is followed by INC. or GMBH,, or if a mark contains a hyphen or apostrophe or an extra “S” at the end, that should be included in the instructions). Some errors can be corrected later, but some cannot, so the instructions should be complete and accurate.

Provide Specific Instructions for Replies to Trademark Office Actions

An attorney’s fee for preparing an amendment depends on the time spent in its preparation. When reporting official Office Actions to you, you should insist that your U.S. attorney clearly sets forth the examiner’s objections or requirements, as well as the attorney’s suggestions on how to satisfy them. Your response should match the recommendations point by point. We have found that clients who follow this suggestion lessen the amount of correspondence necessary, facilitate our work, and thereby greatly reduce costs.

Miscellaneous Tips on Trademark Protection

• Before a mark is registered, your client or company can use the “TM” trademark symbol or “SM” service mark symbol. The “R” federal registration symbol (“R” in a circle) should only be used after a registration issues.

• A Section 8 Affidavit of Continued Use must be filed between the fifth and sixth year anniversary of a registration being issued. A Renewal is due before the end of the tenth year of registration. Declarations of Use must now also be filed with every renewal.

• Although U.S. registrations resulting from extensions of protection under the Madrid Protocol do not require separate U.S. renewal, Section 8 Declarations of Use still must be filed with the U.S. Patent and Trademark Office.

• The marketplace should be watched for infringing uses, and challenges should be raised where appropriate.

Summary: The Trademark Process

So what is the trademark process? Our firm has a two step process. First, we recommend that you or your client conduct a trademark search. While not mandatory, if the client begins using its trademark and another party is already using the same or a similar mark, there is a risk that the client will be sued for trademark infringement. Once the trademark search is completed, and the client has reviewed the search report and given instructions, the trademark application will be filed. Since it is crucial to have the earliest filing date possible, the Collard & Roe trademark team endeavors to file applications the same day that we are asked to undertake the work, or as soon as possible under the circumstances. After filing an application, the U.S. Patent and Trademark Office will take approximately 7-9 months to examine the application. If there are no refusals or informal requirements made by the examiner, the application will be approved for publication. However, if the examiner determines that there is a reason to refuse the mark (such as there is already a similar mark on file) or that there are any outstanding informal requirements (such as further specificity of the identification of goods and services)

Note: the Differences in Attorneys’ Fees Among Practitioners

Office rents, clerical expenses and local city taxes assessed against firms in city centers have forced many firms to drastically increase their fees. Obviously, office locations or the prestige of a certain address do not produce or assure superior professional services. However, they do necessitate higher fees. You should be aware of the fees being charged, as there often is a great disparity based on nothing other than the amount of money a firm needs to stay in business. In the electronic age, location in a city center has lost much of its significance.

We hope that this information has been helpful to you. If you or your company would like to conduct a trademark search or file a trademark application, we hope you will contact the Collard & Roe trademark team.

© 2007 Stewart J. Bellus & Aimee L. Kaplan