To find an attorney who can represent you before the USPTO, consult U.S. telephone listings or the internet. You can also contact the attorney referral service of a U.S. state bar or U.S. local bar association (see the American Bar Association’s Consumer’s Guide to Legal Help for more information). Make sure that any attorney you hire has experience prosecuting trademark applications before the USPTO. The USPTO cannot help you select an attorney or recommend one.
A U.S.-licensed attorney who specializes in trademark law can provide valuable legal advice about many important issues and help you before, during, and after the trademark application process.
Before you file your application with the USPTO, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks to determine if your chosen mark is available for use and if it is eligible for federal registration. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to your chosen mark, even though they are not federally registered. Such unregistered trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database, but could still ultimately prevent you from using your chosen mark even if the USPTO registers your mark.
When you file your application, an attorney can help you navigate the registration process to provide optimal protection of your trademark rights. For example, an attorney can determine the appropriate filing basis for your application, accurately identify and classify your goods and services, select an appropriate specimen that shows your mark as used in commerce, and prepare responses to any refusals to register your mark that a USPTO examining attorney may issue. Although a USPTO examining attorney can provide information about the federal registration process, USPTO employees cannot give you legal advice.
An attorney also can help you understand the scope of your trademarks rights and advise you on the best way to police and enforce those rights. For instance, if other trademark owners challenge your application or registration, or allege that you are infringing on their marks, an attorney can advise you on what to do and defend your case.
You are required to have a U.S.-licensed attorney represent you in trademark matters at theUSPTO if your domicile is not located in the United States or its territories. A person’sdomicile is the place the person resides and intends to be the person’s principal home. Abusiness’s domicile is the location of its headquarters where the entity’s senior executives orofficers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled.
Only an attorney who is an active member in good standing of the bar of the highest court of any U.S. state (including the District of Columbia or any Commonwealth or territory of the U.S.) can represent you in a trademark matter at the USPTO. Foreign attorneys who are not licensed to practice law in the U.S. and non-attorneys cannot represent you (including preparing, signing, or filing submissions for you) in a trademark matter at the USPTO.
Once you hire an attorney, the USPTO will only communicate with your attorney about your application, registration, or TTAB proceeding.
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HIRING AN ATTORNEY
When you engage in the trademark application process or bring matters before the Trademark Trial and Appeal Board (TTAB), you are involved in a legal proceeding. These proceedings require you to comply with U.S. trademark laws and rules. An attorney who is licensed to practice law in the United States and specializes in trademark law can help you navigate these proceedings.
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Where do I search?
The USPTO offers a free search system known as TESS (Trademark Electronic Search System), available 24-7 . The TESS Help Page[14] includes information, with some sample search strategies,on how to search the USPTO’s database of registered and prior pending applications to helpdetermine whether any marks therein could prevent registration of your mark due to a likelihoodof confusion. The USPTO will not search your mark for you prior to your filing an application.After filing and as part of the examination of your application, the USPTO will conduct a searchof your mark and will let you know the results of that search. If the USPTO finds anotherregistered mark or earlier-filed pending mark confusingly similar to yours for related goods/ services, it will refuse to register your mark.
Alternatively, you can search the TESS database at a Patent and Trademark Resource Center (PTRC). The USPTO website contains information about PTRC locations in your state.
Be aware that any searches you conduct on TESS are limited to the USPTO’s database of federaltrademark applications and registrations and do not include the marks of other parties who mayhave trademark rights but no federal registration. These rights, known as “common law” rights,are based solely on use of the mark in commerce within a particular geographic area. Commonlaw rights may be stronger than those based on a registration, if the common law use is earlier than the use that supports the registration. Therefore, it is critical to learn whether superior common law rights exist, by searching the Internet for websites and articles that reference similar marks that are related to your goods and services. You should also search state trademark databases and business name databases. Because searching is very complex, you should seriously consider hiring a trademark attorney to assist you with a “full” or “comprehensive” trademark search, as discussed below.
Conducting a complete search of your mark before filing an application is very important because the results may identify potential problems, such as a likelihood of confusion with a prior registered mark or a mark in a pending application. A search could save you the expense of applying for a mark in which you will likely not receive a registration because another party may already have stronger rights in that mark. Also, the search results may show whether your mark or a part of your mark appears as generic or descriptive wording in other registrations, and thus is weak and/or difficult to protect.
You should also consider other important factors when selecting your mark, such as whether the public is likely to be able to remember, pronounce, and spell the selected mark. If you plan to market your goods or services outside the United States under the same mark, consider whether the U.S. mark might have another meaning when translated into a foreign language, particularly if, for example, the translated word could be considered offensive.
The USPTO will also refuse registration of a proposed mark for many other reasons, including if the mark is:
- A surname
- Geographically descriptive of the origin of the goods/services
- A foreign term that translates to a descriptive or generic term
- An individual’s name or likeness
- The title of a single book and/or movie
- A matter that is used in a purely ornamental manner.
While some of these refusals are an absolute bar to registration, you may overcome others by providing evidence under certain circumstances. For more information about these and other possible refusals, see Trademark Manual of Examining Procedure (TMEP) Chapter 1200
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Strong v. Weak Marks
In addition to selecting a mark that is not likely to be confused with any pre-existing marks, it is in your best interest to select a mark that is considered “strong” in a legal or trademark sense, i.e., a mark that will most easily allow you to prevent third-party use of your mark. Some marks are easier to protect than others and these are considered “strong” marks.
On the other hand, if a mark is “weak,” it most likely is descriptive and others are already using it to describe their goods or services, making it difficult and costly to try to police and protect. Weak marks should be avoided; they simply do not have the same legal protections of a stronger and more distinctive mark.
Generally, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic. The category your mark falls into will significantly impact both its registrability and your ability to enforce your rights in the mark.
The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks, because they are inherently distinctive. Fanciful marks are invented words with no dictionary or other known meaning. Arbitrary marks are actual words with a known meaning that have no association/relationship with the goods protected. Fanciful and arbitrary marks are registrable and, indeed, are more likely to get registered than are descriptive marks. Moreover, because these types of marks are creative and unusual, it is less likely that others are using them.
Examples of fanciful and arbitrary marks:
Fanciful: BELMICO for “insurance services”
Arbitrary: BANANA for “tires”
Suggestive marks suggest, but do not describe, qualities or a connection to the goods or services. Suggestive marks are registrable and are also considered “strong” marks. If you do not choose a fanciful or arbitrary mark, a suggestive mark is your next best option.
Examples of suggestive marks:
QUICK N’ NEAT for “pie crust”
GLANCE-A-DAY for “calendars”
Descriptive marks are words or designs (e.g., depiction of a television for “television repair services”) that describe the goods and/or services. Such marks are generally considered “weaker” and therefore more difficult to protect than fanciful and arbitrary marks. If the USPTO determines that a mark is “merely descriptive,” then it is not registrable or protectable on the Principal Register unless it acquires distinctiveness– generally through extensive use in commerce over a five-year period or longer. Descriptive marks are considered “weak” until they have acquired distinctiveness.
Applicants often choose (frequently at the suggestion of marketing professionals) descriptive marks for their goods and/or services, believing that such marks reduce the need for expensive consumer education and advertising because consumers can immediately identify the product or service being offered directly from the mark. This approach, while perhaps logical marketing advice, often leads to marks that cannot be easily protected, i.e., to extremely weak trademark rights. That is, a descriptive mark may not be registrable or protectable against later users of identical or similar marks; therefore, adoption of a descriptive mark may end up costing more money in the long term, either due to higher costs to try to police and enforce such a mark, or because it may be legally necessary to stop using the descriptive mark and select a new mark.
Examples of descriptive marks:
CREAMY for “yogurt”
WORLD’S BEST BAGELS for “bagels”
Generic words are the weakest types of “marks” (and cannot even qualify as “marks” in the legal sense) and are never registrable or enforceable against third parties. Because generic words are the common, everyday name for goods and services and everyone has the right to use such terms to refer to their goods and services, they are not protectable. Be aware that if you adopt a generic term to identify your goods or services, you will not be able to prevent others from using it to identify potentially competing products or services. In addition, even a fanciful mark that is very strong can, over time, become generic if the owner either starts using the mark in a nontrademark manner (see ESCALATOR and ASPIRIN examples, below) or fails to police use of its mark properly and take appropriate action. Without proper policing over time, the original owner of a mark could lose any trademark rights it has in the mark.
Examples of generic marks:
Applied-for trademarks that would be considered generic at the time of filing because they are the name of the good or product offered by the service:
BICYCLE for “bicycles” or “retail bicycle stores”
MILK for “a dairy-based beverage”
Trademarks that eventually became generic because of long-term widespread, nontrademark use:
ESCALATOR for “moving staircases,” ASPIRIN for “pain relief medication”
Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. Whether the goods and/or services are related is determined by considering the commercial relationship between the goods and/or services identified in the application with those identified in the registration or earlier-filed application. To find relatedness between goods and/or services, the goods and/or services do not have to be identical. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source. The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services.
The following are examples of related goods and/or services:
