Trademarks:Identifying & Protecting

Your Rights

John RodriguezAttorney-Advisor

Office of International RelationsU.S. Patent and Trademark Office

Conference on Intellectual Property in the Global Marketplace

• A trademark serves to identify you and your goods/services to your customers.

• A trademark enables customers to distinguish you from your competitors.

Why are Trademarks Important?

• A word, phrase, symbol or design, or a combination of words, phrases, symbols or designs that identifies and distinguishes the source of the goods or services of one party from those of others. Even colors, smells and sounds may be trademarks in the U.S. (and in some other countries).

What is a Trademark?

Examples of Trademarks

• Plop, plop, fizz, fizz, oh what a relief it is!

• We bring good things to life.

• Rebirth

• Breveté (stylized)

• Vanish

Possible Names for a New Anti-Aging Cream

• Breveté is the Soul of Lit-Up Skin.

• A Brief Moment on the Fingertips Erases Years from the Complexion.

• Beauty is Brief…Breveté is Forever.

• A Bit of Breveté and Brand New Skin.

Possible Slogans

Fanciful or Arbitrary Words

EXXON

Source Indicating CapacitySpectrum

No Source Identifying

Capacity

Not Inherently Distinctive

Can Acquire Distinctiveness

Inherently Distinctive

Generic SODA

Merely DescriptiveCHOCOLATE FUDGE

SuggestiveSUNKIST

Can a Company Use Any Word or Phrase and Have Trademark

Protection?

• To lessen the risk that it could violate another company’s trademark rights, a business needs to determine whether another business is already using a trademark that is identical or similar to the one it wants to use, for the same or related goods or services.

Why Should a Business do a Trademark Search Before Filing?

• Avoid having to change your mark – in every place it appears.

• Avoid having to recall existing product with the infringing mark.

• Avoid having to destroy existing product with the infringing mark.

• Avoid being held liable for damages to the owner of the mark – and possibly even attorney’s fees.

Conducting a Search Can Save a Company Time, Money and Grief!

• How do I find out whether the same or similar mark is federally registered or the subject of a pending TM application for registration for the same or related goods/services?

• By performing a search, free of charge, using the Trademark Electronic Search System (TESS) at the USPTO Web site www.uspto.gov

Searching! The Knock-Out SearchUSPTO – WHOIS – WEB

www.uspto.gov

Welcome to TESS!

Enter the Words or Phrases You Want to Search…

• Designs also are registrable and should be searched.

• For composite marks consisting of a word and a design element, each element – word and design – should be searched.

Searching…designs!

• If it is being used as a trademark or service mark, e.g., acting as an indicator of source for the goods or services.

• Also, there must be a distinctive portion in the domain name.

• But if your proposed mark is being used as a domain name, you may want to select another mark.

www.trademark.com

Can an Internet Domain Name be Registered as a Trademark?

Searching! The Knock-Out SearchUSPTO – WHOIS – WEB

Searching! The Knock-Out SearchUSPTO – WHOIS – WEB

• Common Law - unregistered

• State Registration – the “truly local”

• Federal Registration® - interstate

• Other Federal Statutes

– Smokey Bear

– Woodsy Owl

Types of Trademark Protection in the U.S.

• Not required, because trademark rights (in the U.S.) arise from use on or in connection with product or service, BUT…

• There are advantages to having a federal trademark registration.

Does a Company Need to Register its Mark in the U.S.?

• Constructive notice nationwide of TM owner's claim.

• Evidence of ownership of the trademark.

• Jurisdiction of the federal courts may be invoked.

• Registration can be used as a basis for obtaining registration in foreign countries.

• Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Advantages of Federal Registration

• USPTO does not –

– Consider trade names.

– Consider state registrations.

– Consider common law marks.

– Consider domain names.

• Conducting a “full search” ensures that these other sources of information will be considered in clearing marks.

USPTO Search – Only One Part of the Equation

• Knock-out searches: Done!

• Full searches: Done!

• Any possible bases for refusal: … No!

Almost Ready to File…

What’s my basis for filing my application?

• Use-based, or

• Intent-to-use (must have bona fide intent), or

• Foreign application or registration.

Almost Ready to File…

• What constitutes “use” of a trademark?

• What constitutes use in of a trademark in “interstate commerce”?

What Constitutes “Use”?

• File an application at the U.S. Patent and Trademark Office!

• You can fill out an application online, check it for completeness, and file it over the Internet using the Trademark Electronic Application System (TEAS) at www.uspto.gov/teas/index.html

How do I get a Federal Trademark Registration?

www.uspto.gov

• Actual date all five required elements of application are received in the Office.

• Provides protection against applicants filing after this date.

– Fee: one class fee is required.– Address: a correspondence address is needed.– Mark: a clear representation of a single mark.– Identification: the applicant’s goods or services.– Name: the owner of the mark.

Application

• Filing fee for paper filings:

VS.

• Filing fee for e-filing:

Filing Fees or, “You do the Math!”

$375 per class of

goods/services

$325 per class ofgoods/services (or $275 per class if filed under the newTEAS PLUS form!)

Welcome to TEAS!

• In addition to a lower filing fee…

– You minimize chances of making a mistake!

– You get instant acknowledgement of receipt!

– You have 24-hour access to filing information!

Benefits of Filing Online…

1. File Application.

2. Examination by Trademark Examining Attorney-Allowed, Amended or Refused.

3. If Allowed, Notice of Allowance and Publication for opposition in the Official Gazette. (If Refused, appeal to the TTAB.)

4. After Publication, Opposition period.

5. If no Opposition, Registration issued.

Examination Process at USPTO

• Examination: 7 months after filing(average

pendency)

• Registration: 19.5 months after filing

Trademark Timeline[Times are Approximate]

®

TRADEMARKREGISTRATION

CERTIFICATE

Congratulations!

Remember!

• TRADEMARK REGISTRATIONS MUST BE MAINTAINED!

– Evidence of continued use form – submitted between 5th and 6th year.

– Renewal form – submitted between 9th and 10th year.

– EASY FOR COMPANIES TO DO by timely and accurately filing the forms electronically!

• No, but, remember, an applicant must comply with all procedural and substantive requirements of the Lanham Trademark Act and Trademark Rules of Practice, even if he or she is not represented by an attorney.

Do I Need an Attorney to File My Trademark Application?

• No. “Trademarks are territorial.”

• You must search and file for trademark protection in each country in which you want to do business.

• However, you may use your application or federal registration as a basis to file one “International Application” under the Madrid Protocol in certain foreign countries… (More to come!)

Is Federal Registration Valid Outside the United States?

• Be proactive in protecting your trademark!

• Have you considered registering your mark in “X” country?

– Where market.

– Where source products or parts.

– Where plan to expand in foreseeable future.

– Defensive registrations against counterfeiters.

Protecting Your Trademarks Abroad

Protecting Your Trademarks Abroad

• What is the Madrid Protocol? It is an international trademark filing treaty administered by the World Intellectual Property Organization, WIPO.

• The U.S. is a member of the Madrid Protocol.

Protecting Your Trademarks Abroad: The Madrid Protocol

• Under the Madrid Protocol, the U.S. TM owner can -

– File a single application, in English, at the USPTO Web site, pay in US Dollars, and seek registration in any or all of the countries who are members, as the applicant designates.

– There is no need to file individual applications in each of the other 65 countries. (Currently, there are 66 members.)

Benefits to U.S. Companies

• Under the Madrid Protocol, after rights are granted in any of those countries:

– Assignments can be effected by filing a single document with WIPO.

– Renewal of all rights can be effected by the payment of a single fee at WIPO.

Benefits to U.S. Companies

• A “basic application” or “basic registration” in the USPTO.

• Payment of Fees:

– USPTO Certification fee of $100.00 per class.

– International Registration fee(s) designated by the selected country(ies).

General Requirements Under the Madrid Protocol

• Distinguish your trademark from surrounding text, e.g., use capital letters or italics.

• Use the mark in its proper form. Do not pluralize it nor make it possessive.

• Use the mark as an adjective and couple it with a descriptive or generic term, e.g., a Xerox copy. – Not as a noun, e.g., use “copy”, not “Xerox”. – Not as a verb, e.g., use “photocopying”, not

“xeroxing”.

• If your mark is federally registered, use the ®.

Maintaining Your Company’s Trademarks: Tips on Proper

Trademark Usage

• Register your marks and maintain the registrations.

• License use of your marks, with your manufacturers, your distributors, and any other authorized third-party users, and exercise quality control over your licensees’ products.

• Use your mark, use your mark as a mark, and use your mark consistently. Use notices of prior right.

• Monitor the USPTO Official Gazette, monitor the marketplace, and STOP unauthorized third-party uses.

Maintaining Your Company’s Trademarks: Don’t Lose Your

Rights!

General Trademark Information

• Call the Trademark Assistance Center at 1-800-786-9199 or

• Email your question to: TrademarkAssistanceCenter@uspto.gov

Conference on Intellectual Property in the Global Marketplace

Trademarks:Identifying & Protecting

Your Rights

john.rodriguez@uspto.gov

THANK YOU!