Plan to Have A Strong, Successful Trademark:

Use Trademark Services from Not Just Patents® Legal Services

An applicant for a USPTO Trademark Registration must comply with all substantive and procedural requirements of the U.S. Trademark Act and U.S. Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity is not represented by an attorney.  This is not a simple task that requires just common sense or even just a law degree. Check out a few pages from the USPTO manual for trademarks: TMEP 807 Drawings,  TMEP 1202 Use of Subject Matter as Trademark  TMEP 1301 Service Marks 15 USC 1051 Application for registration; verification. Acquiring legal rights for a trademark involves more than just filling out a form, having an attorney that is not just familiar with U.S. trademark practice is a good idea.


A Not Just Patents Attorney will help you select a strong trademark and trademark strategy, make sure the trademark is clear for noninfringing use and registerability, help to select or develop a specimen that shows your trademark being used in a valid manner to both gain trademark rights and trademark registration, and assure that your application for trademark registration meets USPTO substantive and procedural requirements.


If you have already filed an application and have received a refusal in an office action for being merely descriptive, geographically descriptive or geographically misdescriptive, having a likelihood of confusion with an already registered mark or application for a mark, having an unacceptable specimen or any other reason–please call us at 1-651-500-7590  . A registered trademark raises the value of your trademark or service mark as intellectual property and improves the value of your investments.


Steps to a Strong Trademark

Short Summary of Steps Leading up to Filing for Registration & Steps After Filing for Registration

Before Filing for Registration                         After Filing for Registration    

We suggest a Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.


Verify INHERENT STRENGTH or Verify the potential trademark is a Strong Trademark(TM) rather than a Weak mark. “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).

Why does having a Strong Trademark matter?

A Strong Trademark is a strong marketing tool. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. A weak trademark is made up of words or symbols that others have a right to use so any one user has no exclusive rights to use.

An inherently distinctive trademark is stronger than a mark that is often used by others or that is merely descriptive, generic, or has other descriptiveness issues (i.e., being geographically descriptive, misdescriptive or others):

Note: Even though the USPTO does not ‘enforce’ trademark rights--A registered mark has several levels of protection through the USPTO:

  • An examiner will refuse registration for later applying marks that have a likelihood of confusion with a registered mark or a pending trademark;  
  • Any party (with a registered or unregistered mark) who believes it may be damaged by registration of a proposed trademark  may oppose a proposed mark during the opposition period.  A registered mark has a presumption of distinctiveness or inherent distinctiveness which the opposite party must overcome in order to be successful in an opposition.
  • An inherently distinctive trademark qualifies for more protection under more federal, state, and common law,
  • An inherently distinctive trademark is stronger for use in business to promote authenticity and for expanding product lines, and
  • An inherently distinctive trademark is better protected from problems with conflicting marks or marks that have a likelihood of confusion.  

What is involved with verifying a trademark for inherent strength?

Searching federal, state, and common law marks to see if the potential trademark or parts of the potential trademark are being used by third parties. One of the goals of a Strong Trademark Registration is to reserve the exclusive use of the potential trademark which means verifying that the potential trademark is not already used by prior users (registered  or unregistered).

Note: The USPTO does NOT determine the right to use a mark, only the right to register a trademark. The USPTO and the TTAB have no authority to determine the right to use, or the broader questions of infringement or unfair competition (TBMP §102.01), but only the right to register on the federal registers. However, the right to use a mark may be challenged by a prior user under the Lanham Act in an opposition to registration, a cancellation proceeding or in federal court. See Trademark Right To Use-Search and Clearance for more information.

Analyzing where the potential mark falls on a distinctiveness continuum. Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on how the trademark is used) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive are registrable on the USPTO Trademark Principal Register. Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness with Secondary Meaning (must be proven with evidence and generally at least 5 years of use). Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register and receive no common law protection as trademarks.

Verify the RIGHT TO USE the potential trademark--verify the potential trademark has no prior users that may prevent you from registering your mark or who may sue you for using their mark (including users who have abandoned their registration but have not abandoned the mark and have not lost the right to defend their claim) by searching federal, state, and common law marks to see if the potential trademark or parts of the potential trademark are being used by third parties;

Verify the RIGHT TO REGISTER the potential trademark--verify the potential trademark (or service mark) meets USPTO standards for registration (see Grounds for Refusal to see a nonexhaustive list of reasons why the USPTO can refuse a registration);

Verify the mark FUNCTIONS AS A MARK (indicates origin and distinguishes such goods/services from those manufactured and sold by others) in applicable specimens of the mark--verify it meets USPTO standards for a trademark rather than just being a collection of mere words or symbols that do not justify legal protection as a trademark (see Acceptable Specimen for more information);

Verify the registration ID of Goods and Services is both the correct and maximum claim that are user can make, verify that the Goods and Services ID meets USPTO ID requirements before filing and verify that the specimen of use meets “USE IN COMMERCE” requirements before filing a basis (i.e. Was the use a bona fide sale or transportation in commerce which may lawfully be regulated by Congress?).  See How Do I Know What Filing Basis to Use? for more information.



Office Action(s) from USPTO followed by Applicant’s Response to Office Action (ROA)

There are two basic possibilities: No Objections- the Trademark examiner allows the mark (no Office Action) and it is Published for Opposition (see below); or Refusal-examiner refuses the mark for not meeting requirements for federal registration and issues an Office Action giving the applicant a chance to respond to issues raised.


If an Office Action is made by the USPTO, Applicants (or their representatives) must address each issue raised by the examining attorney and responses to office actions must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned. No response is the leading cause of abandoned applications.


Publication for Opposition

Marks that have been approved for the Principal Register are published in the Trademark Official Gazette. Any party that feels that it may be damaged by the issuance of the trademark has a right to file an opposition within 30 days of the publication of the trademark. See also Opposition Steps/Cancellation Steps.


Certificate of  Registration (for actual use) or Notice of Allowance (intended use). If there is no opposition, the trademark will register and the applicant will receive a Certificate of Registration. If the filing was for an Intent-to-Use, the applicant will receive a Notice of Allowance and has 6 months to file a Statement of Use (or Amendment) or an extension or the application will be declared abandoned. The USPTO does NOT currently require an issuance fee (like some other countries).



Trademark Marking

The ® symbol can only be used (for the U.S.) after a USPTO registration has been issued and only for the goods or services for which it was registered.


Maintenance

A trademark owner must maintain a trademark by continuing to use the trademark in commerce and by filing for Continued Use or Excusable Nonuse and Renewal at the appropriate times.  Two years of nonuse may be evidence of abandonment.


Recommended Steps

Enforcement

The USPTO does not enforce rights to a trademark. It is up to the owner of a mark to monitor and protect their own rights through civil or criminal means. Very often the first step is sending a Cease and Desist Letter to potential infringers to put them on notice and start the enforcement process. A trademark owner may seek remedies against infringers in U.S. District Court (registered trademarks) or in state courts (for registered or unregistered trademarks for state or common law infringement or unfair competition). If a potentially infringing trademark is registered or is registering with the USPTO, an opposition or cancellation proceeding may be the best answer. See also Opposition Steps/Cancellation Steps.

Trademarks may be protected from imported counterfeits by recordation with the U.S. Customs and Border Protection (CBP), through working with the FBI and reporting counterfeiting, and by seeking enforcement through the International Trade Commission (ITC). See Anti-Counterfeit Enforcement for more information.


Domain Names-Remedies available to a trademark owner who has been infringed

Domain name registrants and trademark owners that have distinctive names or famous names should monitor use of their names by others on the internet and in other commercial use for infringement, counterfeiting or piracy. Remedies and injunctions are available for those who have trademarks on the Principal Register of the USPTO against those who violate U.S. Trademark Law. State remedies may be available to those who have unregistered trademarks or domain names.

Trademark registrants of a mark registered in the USPTO whose rights have been civilly infringed may be entitled to injunctions (stop the use of the infringing name, goods or services), the plaintiff may also be entitled to recover defendant’s profits, any damages sustained by the plaintiff (up to 3 times damages under some circumstances), and the costs of the action. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

Violation of the Anticybersquatting Consumer Protection Act (domain names) may lead to a court taking action against the domain name registrant with the following consequences: forfeiture, cancellation, or transfer of a domain name to the owner of the mark and other remedies including injunctive relief, recovery of defendant's profits, actual damages, and costs, and statutory damages (in cybersquatting cases), in an amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

Remedies for trademark owners who have been infringed through domain name registrations and use are also available through Domain Name Dispute Resolution at the World Intellectual Property Organization and other organizations. See http://wipo.int/amc/en/domains/ for more information.


Record Trademark or Trade Names (or trade style) with U.S. Customs and Border Protection (CBP)  

Only trademarks that have been registered on the USPTO Trademark Principal Register or copyrights registered through the Library of Congress can be recorded and protected through U.S. Customs and Border Protection (CBP) and through the International Trade Commission.


Different CBP rules apply for different types of importations with protection available for:

Counterfeit Trademarks (19 CFR § 133.21)-are a spurious trademark that is identical to, or substantially indistinguishable from, a registered trademark;

Copying or Simulating Trademarks or Trade Names (19 CFR § 133.22)-one which may so resemble a recorded mark or name as to be likely to cause the public to associate the copying or simulating mark or name with the recorded mark or name; and

Restricted Gray Mark Articles (19 CFR § 133.23)-are foreign-made articles bearing a genuine trademark or trade name identical with or substantially indistinguishable from one owned and recorded by a citizen of the United States or a corporation or association created or organized with the U.S. and imported without authorization of the U.S. Owner.

Infringing copies or phonorecords (19 CFR § 133.42)-are “piratical” articles, i.e., copies of phonorecords which are unlawfully made (without the authorization of the copyright owner).




Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

IP@GoNJP.com


Aim Higher®

Facts Matter

Search Not Just Patents® sites:


TrademarkServiceFirm.com

Tie It Up

Securing the Right IP

Call 1-651-500-7590 or email IP@GoNJP.com or ContactTrademark.com for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  Not Just Patents Often Represents the Underdog  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


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Call: 1-651-500-7590 or email: IP@GoNJP.com. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us See us at NotJustPatents.com