Legal Information - Trademarks

These pages are maintained for our clients and prospective clients that have questions about Trademark Services we offer, and how to minimize attorneys' fees associated with such services.

What is a Trademark?

A trademark is defined as any word, short phrase, sound, color, smell, symbol or other characteristic (or combination of these) that is capable of identifying the source of a particular good or service. See 15 USC 1127; 15 USC 1052.

What kinds of trademarks are protected?

There are a number of types of marks that are recognized. http://tess2.uspto.gov/tmdb/tmep/1300.htm. The traditional mark is a symbol or words that is affixed to a label and sold to the public. A certification mark is a mark used by a company that tests or certifies other products as complying with a set of standards or criteria. A collective mark is a mark used by an association or cooperative to identify the goods or services of the cooperative. A membership mark is a mark that associates the person using it as a member of a particular organization.

Can I file for a Trademark if I have not begun Use of it?

Yes. This is known as an Intent to Use (often abbreviated ITU) application. Generally, you must have a bona-fide intention of actually using the designated mark in interstate commerce, and you must begin such actual use within 6 months of the date a Notice of Allowance is issued (generally within two months after it is published in the Official Gazette). However, you can generally obtain extensions for use. Tthefiling fee for such an extension is $150, and there are five 6-month extensions available for each mark.  These extended periods are available, for instance, when the trademark is related to a product that must be approved before it is sold (like pharmaceuticals).

What is the "Principal Register" and what is the "Supplemental Register"?

The Principal Register is the actual list (now maintained electronically) of the marks that have achieved registration, and have not been canceled or abandoned. This means that they have been through an examination, have been determined to qualify as a trademark, have been published for opposition, and have either not been opposed, or have survived an opposition proceeding. They are accorded the full range of protection of statutory marks, and most importantly, they are presumed valid (the defendant in a trademark infringement suit bears the burden of proof that the mark is not valid). Marks on the Principal Register have full nationwide priority from the date of the filing of the application. Marks that are not confusingly similar to other registered marks, but which are merely descriptive, geographically descriptive, or merely surnames, may be registered on the Supplemental Register. Marks on the Supplemental Register are not presumed valid, and are only accorded protection in the geographic area in which they are actually used.

What is the level of protection afforded a trademark?

Trademarks fall into a sliding scale of protection. The highest form of protection is accorded to arbitrary marks (made-up words) and fanciful marks (marks that have a meaning in one area, but not in another, e.g. Apple® for computers). These are marks that have no meaning or significance to a consumer of the particular product or service. An example is Exxon®. The next level is suggestive marks , which are marks that might bring to a consumer's mind the nature of the product or service, but it would take some imagination to connect the two. An example of a suggestive mark is Big'nTuff® for paper towels (it takes some imagination to connect these words to paper towels). The above categories are referred to as 'inherently distinctive' - meaning that their mere use without more in connection with a product or service will establish rights to protect the association. The final two levels are descriptive and generic. A descriptive word or mark literally describes the goods or services to which it is applied. An example is HARDWOOD FLOORS as a mark applied to flooring products. Descriptive marks cannot be registered on the Principal Register unless they have acquired secondary meaning. This usually requires 5 years of uninterrupted and continuous use of the mark in interstate commerce.  Generic marks are marks that the relevant purchasing public understands primarily as the common name for goods or services.  An example is SCREENWIPE for premoistened antistatic cloths cleaning computer and television screens.  Generic marks are incapable of functioning as trademarks, and are accorded no protection on either the Principal or Supplemental Registers.

Do I have to search for potentially conflicting marks?

To file an application for a trademark, you are not required to do a search, nor are you required to disclose to the PTO the results of any search you do (NOTE: this is NOT the rule with respect to patents). However, mere filing of a trademark application does not establish any rights (except for the priority date), particularly over a senior user. Therefore, the failure to do a search can result in a defective application (lost fees and costs), and potentially, liability for trademark infringement if you go out and begin marketing using the trademark. Therefore, the real answer to this question depends on the facts. Generally, it is a sliding scale, with a general duty to do a complete search for large retailers and companies ('sophisticated marketers'), and a general recognition, at least for infringement purposes, that small companies limiting their use to a small geographic area are not required to do a search. However, with search costs being relatively low, and now with the PTO database beingreadily available, courts are more likely to expect at least some level of searching before beginning actual use of a mark.

The premier search service is provided by Thomson & Thomson and costs around $570 for a 'full U.S.' search. There are also a number of cheaper alternatives. One is MicroPatent.

The normal time to registration in a perfect application is about 11 months, mainly due to the huge backlog of work for the Examining Attorneys at the PTO. The first 'office action' by the examiner is not required until 6 months after the application date. The average time to registration in our experience is about 14 months, but we have achieved registration in the past that have taken over 4 years!

How much is this going to cost?

The filing fee for the PTO is $325 per class, per mark, or $275 per class, per mark if the applicantfully uses the electronic filing system and agrees not to receive paper. There are 34 product classes and 11 service classes. You can see a description of each at http://www.uspto.gov/go/tac/doc/basic/international.htm. If you file an ITU, you have to pay an additional $100 when you file the statement of use (once you begin using the mark in interstate commerce).

Beyond the initial fees and costs, the costs you will incur vary widely, and are usually dependent on the number of cited references by the examiner. For example, if the mark is descriptive, merely a surname, geographically descriptive, or if there a number of similar marks, the response to the office action can take significant effort. These services are provided by one or more of the attorneys in the Bowie & Jensen trademark group, including Mike Oliver, Kimberly Grimsley and Paralegal Tina Murphy . We have completed many trademark prosecutions, and the fees have ranged from approximately $700 to well into the high four figures.

Can I file a Trademark myself

Yes. You start here: Trademark Office Website. Applications can be filed electronically from this page. The real question is whether you will save money doing it yourself. If the application is relatively simple (e.g. you are filing for an arbitrary mark), and there is clearly no similar mark on file at the PTO, you might be able to get by. However, if the mark is more complicated, or there are similar marks, even the initial application can be complex.

Our fees range between $750 and $1,000 for the initial application, depending on the complexity of the mark (for example if it is lined for color, or we have to research a disclaimer). We always conduct a 'literal' search, because even where clients have thought they found all potential issues, we have discovered that they have not. Our literal search however does not include common law sources, and so is not as comprehensive as Thomson & Thomson’s full U.S. search.

Searching and review costs can vary widely, especially depending on the descriptiveness of the mark, whether the class is crowded, and whether the mark uses common suffixes or prefixes.

Can I file internationally?

Yes. Please see our notes on use of the Madrid Protocol.

What other services does Bowie & Jensen, LLC offer?

We engage in all types of inter partes proceedings, including opposition proceedings (the objection to the registration of another person's mark on the Principal Register); cancellation proceedings (a request to remove a registered mark from the Principal Register); interference proceedings (resolution of two marks in prosecution as to priority); and concurrent use proceedings (prosecution involving an agreement to split geographically the permitted use of two marks).