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Protecting Your Valuable Trademark Assets by Federal RegistrationOverview:In the United States, the value of a trademark is primarily determined by its seniority in time relative to other similar marks in the same business (i.e. date of first use in commerce), the amount spent on promotion and other efforts to promote recognition of the trademark as identifying a company's goods or services, and the active policing of possible infringers using a similar mark in the same line of business. In this regard, one cannot treat a trademark as something one owns outright, but rather as an asset which can vary in value due to seniority, promotion, and policing, and which can in fact be lost if neglected. Trademarking is not an inexpensive or easy undertaking. If a company does not have a reasonable level of funds to commit to the mark's promotion and policing, the trademark will not likely have much strength. Despite this, many companies, small as well as large, do apply for federal trademark registration for their marks, and you may desire this protection for yours. Federal trademark registration reserves a spot on the federal principal register so far as the trademark examiners at the U.S. Patent and Trademark Office (USPTO) are concerned, so if a subsequent user of a competing mark attempts to apply for registration, that registration will typically be blocked at the outset by the trademark examiner, meaning a subsequent user faces many obstacles to either registering their own mark or forcing you to give up yours. After 5 years of continuous and exclusive use of your registered trademark, you may apply for continued trademark status including incontestability, meaning that your registered trademark as a rule cannot be canceled by another company that contests your right to have it on the register. And only if your trademark is on the register can you use the coveted ® next to it. These benefits are important and unique to federally registered marks, weak as well as strong. Simple as the federal trademark application looks, it is not simple, and you can't just obtain a trademark by applying for one. Not only are there rigid and technical criteria for what can constitute a trademark, but also your mark cannot be overly similar to a registered mark already on the federal register. And your trademark application better be technically correct in all respects (most of which are not the least bit apparent) or you will find yourself starting over and paying another large application fee. Most importantly you must bear in mind that your application will be reviewed with a fine-tooth comb by a diligent and experienced trademark examiner who has considerable discretion to decide whether or not to let your mark be published for opposition. Published for opposition? That's right, when your trademark has finally met all the objections the examiner might communicate to us, and all of which require proper response to avoid the application being deemed abandoned or just plain rejected, your mark is cleared for publication by the USPTO, and other companies have 30 days after the publication date to file any opposition they may have to your application. If none is filed, your trademark proceeds to registration and a certificate of registration is issued in due course. If there is an opposition, then the application enters into an opposition proceeding which must be resolved one way or the other before it can proceed. Sometimes the opposition effectively kills the application, but others we can overcome or settle. A successful trademark application takes about a year or so, start to finish, but can take much longer under certain unfavorable circumstances known as a suspension even if there is not an opposition. Then, until and if your trademark obtains incontestability status after the required 5 years of continuous and exclusive use and after the proper required filings and fee payments, it is subject to a cancellation proceeding, meaning its status as a federally registered mark can still be contested. Sound complicated? It is, and that's why it is penny-wise and pound-foolish to ever attempt a federal registration yourself. Some of my best and most loyal clients first went that route and then later called me to bail them out. By the way, the above discussion barely scratches the surface of all the technical issues involved. There are 3 basic steps I follow to assist you in federal trademark registration
Picking the Right TrademarkBe sure to consult me at the earliest possible time for assistance in selecting your trademark, and please do not spend a lot on printing, etc. until we are reasonably certain you have picked the right mark. Many names that spring right to one's mine about a product or service are either generic, meaning they can be used by all and reserved by none, or descriptive, meaning they lack sufficient identity of their own to be a trademark. You probably won't pick a generic mark, such as Apple to identify apples you grow and sell, but might inadvertently pick a phrase or series of words the trademark examiner deems too generic to be granted trademark status. However, you might very well be drawn to words that the examiner will consider too descriptive of the goods or services and thus lack the distinctiveness a trademark must have. (Some descriptive terms can be proved distinctive over time by the right use - an example is [city name] Center for the Performing Arts - descriptive yes, but capable of becoming distinctive. These few marks can be put on the supplemental register, which does not convey trademark status but can act as a springboard for proving that status later.) Speaking of the word Apple, most of us can think of a successful trademark using that word in the computer arena. All words are generic in their normal dictionary context, and most can be arbitrary in other contexts. If you start looking carefully at many of today's trademarks, many are arbitrary uses of generic words. Words can also be evocative, and this probably accounts for the lion's share of registered marks. How about Best Buy? That's evocative, not descriptive. But the line between descriptive and evocative is an elusive one, and we have to give such potential marks careful scrutiny. The final category of successful trademarks are fanciful, such as Exxon or Xerox, names that are completely made up and do not otherwise exist in the dictionary. These trademark owners, ironically enough, must fight hard to preserve their fanciful trademark status. It's best to use a fanciful mark in a context such as gasoline stations (Exxon) where people are unlikely to start using the word as a synonym for the product, than in patented goods such as the first copier machines, where they might (Xerox). Most of us have seen the ad by Xerox to say that their mark is not synonymous with copier. This didn't help the Bayer company much, though, with their Aspirin mark that became generic. Perhaps this helps you understand why the waiter or counter person asks if Pepsi is ok instead of Coke and vice versa. Both these companies are fighting hard to prevent these extremely valuable marks from falling into generic use as synonyms with cola drinks. But, in short, instead of trying to fully comprehend all the above categories of words yourself, I suggest you run them by me. Words we think might be ok, we will run knock-out searches on to see if any identical marks are already registered and thus preventing us from registering yours. Running a Full U.S. Availability SearchThis is expensive, but essential. I use Thomson & Thomson, which is the preeminent trademark search firm in the U.S. and throughout the world. I formulate the search for you to maximize its value and evaluate it for you, at nominal cost over the cost of the search itself. A full search does a complex evaluation of similar words, spellings, etc. related to your mark, and does so not only for federally registered marks on the principal and supplemental register, but also for cancelled and abandoned marks, state registered trademarks, common law marks, Internet domain names, and trade names. Most of these searches are a good inch thick. You will get a copy for your own records, but will be glad I'm the one doing the evaluation. Entries number in the hundreds. Speaking of Internet domain names, your ideal mark will also be available in some form for Internet domain name use, hopefully as a .com name. You won't want a mark just like one already being used in a competitive sense as a legitimate domain name. And, although a federally registered trademark owner can sometimes force a transfer of domain name to it by another owner, one generally cannot so this with a mark federally registered after the domain name is created by another owner. Sometimes, my evaluation will be negative, which is frustrating, but is caused by an unexpected similar mark not able to be caught by the knock-out search. Sometimes it will be qualified, meaning I see problems ahead that could result in rejection, and leave it to you if you want to run the risk of applying. Most of the time these applications are in fact rejected with no hope of overcoming the objection, but enough are accepted to warrant filing by applicants with good risk tolerance. Filing a Federal Trademark Application.Now we have finally reached the application phase. You'd probably laugh at me if you watched me laboriously prepare the online application the USPTO prefers, but expert scrutiny and analysis of the technical requirements must be done each time an application is filed, even by someone such as myself who has filed many applications over the years. There is no substitute for experienced due diligence in such matters, which can mean the difference between an application that is summarily rejected right away and one that proceeds to registration. As part of my flat fee for the application side, I also shepherd the application throughout the registration process, including give and take with the trademark examiner, all the way to receiving and transmitting to you the certificate of registration. There are two forms of application, Intent to Use and In Use. If you are already using your mark in commerce, we will of course file on the In Use basis and use your actual date of first use in commerce to establish your seniority status with the mark. However, federal law has a very valuable provision which allows you to file for registration before you actually use the mark. This lets you find out if you will be granted registration before you commit funds to promoting the mark or printing it on boxes, stationery, etc. This is known as an Intent to Use application. Your date of first use for seniority purposes in an Intent to Use application is deemed to be the date your application is received electronically by the USPTO regardless of your actual later date of first use in commerce. This means no one can steal your mark after the date of your application by trying to use it before you do in order to establish an earlier date of first use and thus higher priority than you will have. After your trademark has gone through publication and presumably no opposition the trademark examiner will issue what is known as a Notice of Allowance, which gives you 6 months to file evidence of actual use or apply for another 6 month extension. After actual use is shown, the application proceeds to the issuance of your certificate of registration. I strongly recommend the Intent to Use application process whenever it might apply to your situation and can go over this in more detail with you on a case-by-case basis. After We Obtain Registration.Registration is just the beginning. Of course you will want to begin using the ® with your registered mark as soon as possible. But beyond that you must decide how you will promote and police your mark. Promotion is a business matter - it results from your own efforts. But policing has a legal aspect. If someone else starts using your mark and you don't catch it fairly quickly, then, if a Court decides you could with reasonable efforts have caught that competing use earlier, it can refuse to enforce your mark in an infringement action, meaning that for practical purposes your trademark has lost all its strength. The best way to establish a policing policy is through me using a policing service by Thomson & Thomson. Whether or not this catches the offender, it does provide some evidence of taking reasonable steps to do so and is the customary method of policing marks. What they do is watch for applications and other possible competing uses that would show up on a trademark search and will notify me when they see something of note. Then if necessary I can write a letter asking the offender to cease and desist and also with your authorization can oppose any federal application being published that might infringe. You will also want to keep documentation of your continued use of the mark with a trademark use file I will help you establish. Between the 5th and 6th years following your registration date, you must file a special affidavit with the USPTO of your continued use. Failure to do this will result in cancellation of your trademark by the USPTO. Thereafter, by each of the 10th anniversary dates after your registration dates you must renew your trademark or it will be cancelled by the USPTO. The best way to keep track of this is to put in on my shoulders by engaging me to perform the policing services described above. Then I will keep track of these dates for you and prepare the nominal but essential paperwork for continuing your trademark in effect. Fees for Trademark Services.Trademark Search and Registration: I have found that most trademark clients want the predictability of a flat fee, especially in this context when hours can build up during the registration process and cause fees to rise above budget. Therefore I charge the following flat fees: Trademark Full Availability Search: $875, including the approximate $550 cost I will pay Thomson & Thomson. So for just a modest amount over the cost of the search, I will formulate the optimal search, order and pay for the search including an extra copy of the search report for you, and review the search to report to you my opinion on the advisability of utilizing this trademark and applying for federal trademark registration. This process typically takes under 2 weeks start to finish. This also includes reasonable amounts of assistance in evaluating the mark before the search and performing a knock-out search with the USPTO. Federal Trademark Registration Application: $850, including the $275-$325 government filing fee. I will determine the optimal filing method and technicalities, file the application and copy you with the relevant filing information, monitor the application throughout the process with the trademark examiner and work with the examiner on overcoming any technical examiner objections that are capable of being overcome, receive and transmit to you the certificate of registration. This process can take a year or more, but sometimes we will know if the examiner has no objections in 4-5 months. This fee does not cover any work relative to oppositions that may be filed by third parties after publication of the mark or any appeal from an adverse determination by the trademark examiner. It also does not cover substantive examiner objections, such as that the proposed mark conflicts too much with an existing federally registered trademark, or that the proposed trademark is too generic or descriptive to permit exclusive use and thus registration. Also, depending on the goods and services covered by the mark, more than one application may have to be filed. Goods and services fall into classifications by categories that reflect commerce 50-100 years ago, so a group of goods or services may fall into multiple classifications. The trademark office requires a separate $275-$325 filing fee for each classification, and I also believe it is good practice to file a separate application for each classification in case we have more examiner objections in one classification than another. Other USPTO filings related to the Trademark: These vary, but typically are $600 or less including the rather substantial fees that have to be paid the USPTO. I will discuss those that are applicable to your situation with you before we embark on these ancillary services. Trademark Watches and Policing: I try to make this as efficient as possible, especially if multiple marks are involved. But for a single mark, the cost is $50/month payable each year in advance ($600) plus the watching service fee for their services in notifying me of problems. For multiple marks of one owner, my fee goes down to $480 annually per mark. The watching service fee varies with the services. Typically we at least request watching U.S. trademark applications and publication events for problem trademarks. This runs about $360 per year per trademark.
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