Trademark Registrations

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A trademark or service mark includes any word, name, symbol, device, or any combination thereof, used to identify and distinguish the goods and services of one seller from another.  “Why should I register my trademark or service mark?” is a question that clients frequently ask.  A trademark or service mark registered with the United States Patent and Trademark Office (“USPTO”) may provide several advantages to its owner. One of the main advantages of registering a trademark or service mark with the USPTO is that a registered trademark or service mark provides its owner with nationwide priority.   In other words, a registered trademark or service mark provides its owner with superior rights.  If a trademark or service mark is registered, then its owner may prevent another business from selling a similar good or service using a same or similar trademark or service mark anywhere in the United States.

In order to register a trademark or service mark, a trademark or service mark application for registration must be filed with the USPTO.  “What are the types of trademark or service mark applications?” is another question that clients frequently ask.  There are two main types of trademark or service mark applications: (1) a use based application (also known as a 1(a) application based upon § 1(a) of the Trademark Act, 15 U.S.C. § 1051(a)); and, (2) an intent-to-use application (also known as a § 1(b) application based upon § 1(b) of the Trademark Act, 15 U.S.C. § 1051(a)).

“What type of trademark or service mark application should I file?” is the next question that clients typically ask.  The type of application that should be filed depends on whether the trademark or service mark is being used “in commerce”.  Before filing an application, an applicant must correctly determine if a mark is being used “in commerce”.  During examination of an application, examining attorneys at the USPTO do not verify the “used in commerce” dates submitted in an application.  However, unfortunately, a registered mark may be cancelled in litigation if an incorrect trademark or service mark application was filed.  In order words, if an incorrect application is filed, then a trademark or service mark owner may not be able to use their registered trademark or service mark to enforce their rights against others.  Therefore, an accurate determination of whether a trademark or service mark is being used “in commerce” is crucial before filing a trademark or service mark application.

“What trademarks or service marks cannot be registered?” is yet another question that clients ask.  An examining attorney at the USPTO will only allow a trademark or service mark to be registered if a trademark or service mark satisfies United States trademark law governing the registration of trademarks and service marks. For example, the USPTO will not allow a trademark or service mark to be registered on the Principal Register if a trademark or service mark is “descriptive”, which means that the mark describes the nature or quality of the goods or services sold, unless the trademark or service mark has acquired “secondary meaning”.  “Secondary meaning” is when consumers have come to recognize a trademark or service mark with a certain product or service over time. An applicant may be able to establish secondary meaning by presenting evidence to the USPTO.

Additionally, examining attorneys at the USPTO will not allow a trademark or service mark to be registered if the mark creates a “likelihood of confusion” with another trademark or service mark filed or registered with the USPTO prior to the filing date of an application for registration.  A trademark search is required to determine if a trademark or service mark creates a “likelihood of confusion” with another mark.  A trademark search is always recommended before filing a trademark or service mark application with the USPTO.

The attorneys at The Plus IP Firm have represented numerous clients before the USPTO in order to register hundreds of trademarks and services marks.  If you have a question regarding the ability to register your trademark the attorneys at the Plus IP Firm are available for a discussion.