Trademark

trademarkTrademark

A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish your products, services or identity from those of another. The United States Patent and Trademark Office is the agency responsible for granting and registering trademarks. In the entertainment industry trademarks that are associated with providing a service are commonly referred to as “service marks.”

A trademark can be recognized by two (2) symbols. A ™ which represents the status of a mark that offers common law protection. A ™ can be used in situations where the user has not paid a fee and went through the proper procedures with the United States Patent and Trademark Office (USPTO). However, a registered trademark which is recognized by the symbol of an “R” in a circle ®, puts the world on notice that you are using the mark in association with your goods, products and/or services.

Applying for registration of your trademark is a detailed and intricate process that includes several steps. First, the trademark owner files an application to register the trademark. About three (3) months after it is filed, the application is reviewed by an examining attorney at the U.S. Patent and Trademark Office. The attorney checks for compliance with the rules of the Trademark Manual of Examination Procedure. This review includes procedural matters such as making sure the applicant’s goods or services are identified properly. It also includes more substantive matters such as making sure the mark is not merely descriptive or likely to cause confusion with a pre-existing applied-for or registered mark.

 

If the application gets flagged for failing to meet any requirement, the examining attorney will issue an office action requiring the applicant to respond by addressing certain issues or refusals prior to registration of the mark. If the examining attorney approves the application, it will be “published for opposition.” During this thirty (30) day period third parties who may be affected by the registration of the trademark may step forward to file an Opposition Proceeding to stop the registration of the mark. If an Opposition proceeding is filed it institutes a case before the Trademark Trial and Appeal Board to determine both the validity of the grounds for the opposition as well as the ability of the applicant to register the mark.

Finally, provided that no third-party opposes the registration of the mark during the opposition period or the opposition is ultimately decided in the applicant’s favor the mark will be registered in due course. In essence, once an application is reviewed by an examiner and found to be entitled to registration a registration certificate is issued subject to the mark being open to opposition for a period of typically six (6) months from the date of registration.

A registered trademark grants certain exclusive rights to its registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered and the right to contest the registration of another applicant’s proposed mark that is too identical or similar. It should also be known that once a trademark is registered, it is only registered in the jurisdiction in which the application was filed. One must go through this process for every country that protection is sought, or the international trademark process.

This process can be explained fully in The Lanham Act, also known as the trademark act, which is set forth in the United States Code or 15 U.S.C. § 1051.