Trademark Basics

Concepts that must be understood
before preparing a registration application

• Trademarks Handbook - 30 page overview of Trademarks from the United States Patent and Trademark Office (USPTO)


• Educational video produced by USPTO


• "Trademark Basics" from USPTO website


• Trademark FAQ - from USPTO website

• CLICK HERE to search the official Trademark ID Database to find the class designations that are applicable to specific goods or services.
• Professional Search Recommended :  One can never be absolutely sure that a proposed mark is not already registered.  In the Clinic's template for a standard trademark opening letter and in its standard Retainer Agreement template the Client is told that the Clinic will not conduct a comprehensive search of previously registered marks and the the Client is told that if there is concern he or she should have a search done by a professional service that specialized in such searches.


• Clinic Will Conduct Only a Quick Search:  The Clinic will also do a preliminary research.   The student should start by doing some simple Google searches (to get a ball park idea of whether or not the mark is already being used)


• WORDS ONLY MARK: - If only words are being registered it is easy to search the USPTO database to determine if the mark is available. Click Here to go to the Search Page.  Also search for variations (singular/plural, past tense, if number involved search for both written and the the number)


• GRAPHICAL MARKS:  On a blank Google search page click "images" in the upper right corner of the page.  Then click the camera icon and then click to upload a JPG image file of the graphical mark from your hard drive.  The search results pop up instantly.  If an image similar to the image that the client wants to register appears in the search results share the URL link of that search page with the client.  Finding a similar graphic does not necessarily mean that the similar graphic has been registered as a trademark.  Sharing the information with the client is simply a "heads-up" notification that there could be a potential problem that may or may not warrant further investigation.  THE CLINIC WILL NEVER ATTEMPT TO SEARCH THE USPTO DATABASE LOOKING FOR PREVIOUSLY REGISTERED GRAPHICAL MARKS.

• You must have an adequate description of the goods or services associated with the mark.  Strive to use one or more of the pre-approved descriptions found in USPTO's searchable Trademark ID Manual.  Applicants are allowed to describe their goods and services using descriptions that are not found in the Trademark ID Manual but doing so will increase the amount of the filing fee and may delay approval approval of the application.


• Understand the Concept of "class".  Each of the pre-approved descriptions found in the Trademark ID Manual (see above) has a "class" assigned to it.  A "class" is a categorization of the goods/services that the trademark is used with. Each trademark must be registered with at least one class. There is a separate filing fee for each class chosen.  Once registered a mark will be protected against others trying to use it to brand goods or services within the same class.  The actual class is determined by USPTO in the on-line application based on the description of the goods or services provided by the application in that application.

To qualify a mark must be distinctive (capable of distinguishing the goods or services upon which it is used from the goods or services of others). A non-distinctive device is one that merely describes or names a characteristic or quality of the goods or services. The distinctiveness of a device can generally be categorized into one of five categories which fall along a spectrum of distinctiveness. From most distinctive to least distinctive, these categories are: fanciful, arbitrary, suggestive, descriptive and generic.

"Strong" Marks can be Registered


Fanciful: 


Inherently distinctive - an entirely invented word or "fanciful" sign


• STARBUCKS
• EXXON
• KODAK
• FRISBEE

Arbitrary: 


Usually a common word which is used in a meaningless context in connection with products or services unrelated to the word's dictionary meaning.


• APPLE (for computers)
• LOTUS (for software)
• SUN (for computers)

Suggestive: 


Tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not directly describe this characteristic.   "Suggestive" marks are often difficult to distinguish from "descriptive" marks (described below), since both are intended to refer to the goods and services in question.  Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods.  Descriptive marks allow one to reach that conclusion without such imagination, thought or perception


• MICROSOFT (suggestive of software for microcomputers)
• NETSCAPE (suggestive of software which allows traversing the "landscape" of the Internet)
• SILICON GRAPHICS (suggestive of graphic oriented computers)


"Weak" Marks can not be Registered


Descriptive: 


Marks that are merely descriptive are not allowed.  According to the USPTO's Trademark Manual of Examining Procedure "a mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services".  Trademarks are supposed to identify the source of goods or services not describe the goods or services.


• COLD AND CREAMY (descriptive of ice cream)
• LEKTRONIC (descriptive of electronic goods)
• KIDDO MAGAZINE (descriptive of magazine geared towards parents)
• ELECTRONICS LAND (descriptive of a store that sold electronics)
• VISION CENTER (descriptive of optics store)


• EXCEPTION: descriptive marks can qualify but only if there is a demonstration of "acquired distinctiveness" (or "secondary meaning"). Evidence would have to be presented that consumers in the marketplace associate the mark with specific goods or services.  See the discussion of "Supplemental Register", below.

Examples of marks which might be considered descriptive but have clearly developed secondary meaning include:


• SHARP for televisions
• DIGITAL for computers
• WINDOWS for windowing software
• INTERNATIONAL BUSINESS MACHINES for computers and other business machines
• POWER COMPUTING for computers based on the Power PC chip.


• Click here for an article entitled "How to Respond to Descriptiveness Refusal on a Trademark Application"

Merely Informational:


According to USPTO's Trademark Manual of Examining Procedure A proposed mark can not be registered if if is merely informational and fails to function as a mark that indicates the source of the goods or services.  This is so if consumers would perceive it as merely conveying general information about the goods or services and not as a means to identify and distinguish the applicant's goods/services from those of others.  This occurs where the proposed mark is a common phrase that would ordinarily be used in advertising or in the relevant industry, or that consumers are accustomed to seeing used in everyday speech by a variety of sources.  Examples include


• ONCE A MARINE, ALWAYS A MARINE (for clothing)
• SPECTRUM (for illuminated pushbutton switches)
• DRIVE SAFELY (for automobiles)
• THINK GREEN (weatherstripping and paper products)
• PROUDLY MADE IN USA (for electric shavers)
• WATCH THAT CHILD (for construction material
• FRAGILE (for labels and bumper stickers).

Trade Names and Business Names Can't be Registered


According to USPTO's Trademark Manual of Examining Procedure proposed mark can not be registered if is a trade name or a business name.

Generic: 


Generic term that identify the type of productrademark-email-explaining-clinic-policies.docxt or service are not allowed.


• LIGHT BEER (generic for beer low in calories)
• COMPUTER SOFTWARE
• FACIAL TISSUE

• Marks that are merely descriptive
• Marks that are surnames
• Marks that are company names and trade names
• Marks that are geographically descriptive
• Marks that are domain names
• Marks that cause confusion with already registered marks

• If you register a graphic image that includes words the image itself will be protected but not the embedded words unless those words have been registered in a separate filing without graphics.


• trademark registrations must include a "drawing" showing the mark.  There are two types of drawings:


• "standard character" (words alone)
• "special form" (graphic image with or without words embedded)


• Registering a mark in "standard characters" (words alone) allows the owner of the mark to stop someone else from using those words even if the other person has embedded the words in a graphical image


• By comparison, if the only registration was a graphic image with embedded words the owner can stop only the use of that specific image.  The owner will not otherwise be able to stop people from using the words.


• If protecting BOTH the graphics and the words are important two or more separate registrations will be be needed - one for the words alone and the other(s) for graphic images that have the words embedded.

• The Basic Filing Fee:  The filing fee for the registration of single trademark covering an single "class" of goods or services is $350


• Number of Marks:
• Only ONE mark may be filed per application.
• multiple marks require separate applications each with its own filing fee;


• Number of Classes:
• You must pay for each class of goods and/or services in the application.
• Multiple subclasses within a class are covered by the single application.

• Principal Register - The norm. Used in the vast majority of filings. It grants full benefits enjoyed by registered trademarks


• Supplemental Register. - for a mark that does not qualify for the Principal Register because the words are descriptive in nature (see the discussion on "weak marks" above) and consumers in the marketplace do not yet associate those words with identified goods or services (that is, the mark has not acquired a "secondary meaning") BUT where you expect that the mark, with use, eventually will be associated with those goods or services.


• The Supplemental Register gives applicants up to five years to demonstrate that the mark has achieved an "acquired distinctiveness" (secondary meaning).


• The Supplemental Register offers less protection than the Principal Register but the mark will show up in searches of the USPTO database. The federal registration symbol () may be used BUT the mark has only common law legal protection


• To qualify for the Supplemental Register (as is the case with the Principal Register) you must be able to show that the mark is in actual use


• Prior to the expiration of the five year period an application can be submitted to the Principal Register along with evidence showing that consumers in the marketplace now associate the mark with identified goods or services. For example, in one case the word "Shoeland" was deemed over time to have become associated with a specific shoe store.


• Click here for instructions on how to amend a previously submitted application to change it from the "principal" to the "supplemental" registry (after USPTO has tentatively rejected a filing alleging that the mark is "merely descriptive")

• CHOICE #1:  "USE IN COMMERCE"


• If the mark is already used in commerce you may file under the "used in commerce" basis (as opposed to the "intent to use" basis).


• SPECIMENS:  You must submit "specimens" proving "use in commerce"  Specimens are scanned images, digital photographs or screen captures from a browser that are uploaded into the on-line trademark application (not to exceed 2 megabytes per attachment).  A specimen is a real-life sample of how the mark is actually being used in the marketplace.  A specimen must show the mark being used as branding (that is, "functioning as a trademark" by serving as an indicator of source).  The specimen should generally be what consumers actually see when they are purchasing the goods or services.  CLICK HERE for a page on the USPTO website providing detailed information on the specimen requirement


• For "Services"


• Specimens can include images that show the mark being used in marketing, advertising, business cards, websites, etc.


• Screen captures from a website are the most common type of specimen when it is services being sold.


• For "goods"


• The specimens MUST show the mark being used on the goods themselves (where and how a consumer would expect to see it).


• Specimens for sale of goods can be digital images showing the mark being used on labels, hang tag or packaging.


• Specimen for sale of goods can also be a webpage screen capture, BUT, it must show a means for ordering the goods such as a “shopping cart” button/link, an order form, or a telephone number for placing orders.


• NOT OK:  specimens showing the mark being used in advertising brochures, business cards, internal marketing materials, etc.


• NOT OK:  specimens showing the mark being used as a decorative element on the goods.  Below is a digital photo showing the mark printed on a tee-shirt as a decorative element.  This is NOT sufficient because it does not show the mark being used as branding for the product.  In contrast, an image showing the mark used on the tee-shirt's label is OK.




• Using Screen Capture of Web Page as a Specimen


• Specimens derived from a web page MUST show the trademark located on that web page in a place where branding would normally be expected AND the page must show that the goods can actually be purchased (or, if the page is promoting services and not the sale of goods, the page must show a direct association between trademark and services)


• The URL of the webpage and the date that the page was accessed must be shown either on the image itself OR that same information must be provided in a sworn statement


Quote from USPTO "Examination Manual"


Due to the transitory nature of Internet postings, the URL for the web page of the specimen and the date the page was accessed or printed must both be provided to enable verification. 37 C.F.R. §2.56(c). Trademark owners can submit the URL and date directly on the specimen webpage itself appearing anywhere on the page, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.


• OPTION ONE:  imprint the URL and access date directly onto the image itself.
  
  
  • Though other methods can work, perhaps the easiest way to create a digital image that includes both the URL of the page and the date the page was accessed is to use the Firefox browser with the "Page Saver WE" extension installed.
  
  
  • If you don't currently use Firefox, download and install using this link
  
  
  • In the Firefox menu click "Add-ons" and type "Page Saver WE" in the search box.  Install it
  
  
  • A button for the extension will be added to the Firefox menubar.  Right click on that button then click "page saver options" then click select "Add a header to each image captured" then edit the "Header text pattern" box to customize what you want shown in the header of the resulting digital specimen files (you want it to display the month, date, and year plus the URL address of the page).  To actually capture an image, navigate to the relevant web page then click the button for the extension in the menu bar (you will then be asked where you want to save the image on your hard drive)
  
  
• OPTION TWO:  Verified Statement


• If you have trouble imprinting the URL and access date on the image itself you can include a verified statement in the application regarding the URL location and date accessed.  Here is what to put in the application:


• "Declaration in Lieu of Oath"


• On the third page of the application "Mark Information", near the bottom, is a box for entering an "Additional Statement".  Click the button and the "additional statement" options will immediately appear below.  Click the button for "MISCELLANEOUS STATEMENT". Then click the following link for the plain text statement that must pasted into the "MISCELLANEOUS STATEMENT" entry box.


Click here for the plain text


• Then, on the "Basis of Filing" page, in the sub-page for uploading specimens, in the box labeled "DESCRIPTION OF SPECIMEN", paste the following text (after editing)


Specimen is screen capture of a webpage. URL: https:www.xxxx.com - access date: 12-1-20

See the image below




• CHOICE #2:  "INTENT TO USE"


• If the mark is NOT yet used in commerce but will be in the future the application can be filed only under an "intent to use" basis.


• CLICK HERE for the Clinic's client information page on the "Intent to Use" basis of filing

• "Standard Character" Drawing (a slogan using words alone)


• A standard character type of "drawing" are words alone with no graphical elements (thus, they are not actually "drawings" in the plain English definition of that term).


• This type of "drawing" is used where no claim is being made as to the manner that words are displayed. Use only where the mark contains no design element


• Latin characters only. Uppercase or lowercase OK (or any combination)
• All numerals are depicted in Roman or Arabic numerals;
• Only common punctuation or diacritical marks;
• Any font style OK - may use bold or italicized letters;
• If the mark includes any non-English wording, an English translation of that wording must be included


• The following disclaimer must be included in the application (Note: there a check box in the on-line application form that can be used to easily have the statement included):


"The mark is presented in standard character format without claim to any
particular font style, size or color"


• On the TEAS application DO NOT PUT QUOTATION MARKS AROUND THE CHARACTERS unless you want them to be an actual part of the mark being registered.


• "Special Form" Drawing - (graphic image)


• Stylized graphic or logo (with or without words)


• The words within the drawing are NOT protected, only the graphic image itself (a separate application may be needed to protect the words)


• The only allowable format is JPG  -   The image MUST have a pixel count of no greater than 944 and no less than 250 in BOTH width and length


• BLACK & WHITE vs COLOR IMAGES:


• Bottom line - unless the color is essential don't claim any color as a "feature of the mark".  If you submit a graphic that claims one or more colors as a feature only versions of the trademark with those specific colors would be protected.


• Black and white offers wider protection (you can stop other people no matter what color combination they have used).  If you chose this route make sure that the digital image that you submit is either grayscale or black & while (and not in color)


• USPTO considers an image saved in grayscale to be a black and white image


• Note on Scanning Black & White or Grayscale Images:  If scanning the image of a black & white or grayscale mark the scanner must be set specifically for black-and-white, not color.  I.e., if the improper setting is used, the produced image may appear to be black-and-white, but will actually consist of thousands of colors, and will result in a mark image of unacceptable quality when received at USPTO.  Since USPTO allows a black-and-white image to be submitted as grayscale the image can be scanned using 8 bits per sample pixel which allows for 256 different shades of gray.


• CLAIM OF COLOR:  A box on the application will ask for a listing of the colors claimed as being part of the mark.  List ALL colors.  If the image is purely black & white (including grayscale) enter "color is not claimed as a feature of the mark".


• DESCRIPTION OF GRAPHIC MARK REQUIRED:  With all graphical marks (whether or not color is claimed) there is a box on the application asking for a complete and accurate description of the entire mark.  Include ALL literal elements and/or design elements that are found in the image of the mark.  Do NOT include a description of any element not appearing in the image of the mark.  If a color mark, you must specify the color(s) that are part of the mark, including black and white, and also state the location thereof in the mark image.



Sample Description for the Mark Shown to the Right The mark consists of an orange diamond surrounded by an incomplete diamond that is broken on the northeast and southeast lines and results in an orange connected line on the left side and a dark blue-gray line on the right.  The wording "C.L. JOHNSON" appears in orange on the northwest side of the surrounding diamond while "CONSULTING" appears in dark blue-gray on the northeast side of the diamond. A dark blue-gray circle appears between "C.L. JOHNSON" and "CONSULTING".  The colors white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.



• IF THE APPLICATION INCLUDES A CLAIM OF COLOR - be sure to upload a high quality graphic file as the "drawing".  A low quality scan can often result in unintended variations of the colors in different parts of the image and or a grayish looking background rather than the intended white.  THIS MAY DELAY APPROVAL.  Note that the sample description above anticipates the grayish background problem by including a disclaimer stating that gray and white are not a part of the mark (don't include this disclaimer if gray or white ARE intended to be a part of the mark's colors).

• Electronic Filing can be done on-line using the Trademark Electronic Application System (TEAS).  CLICK HERE for instructions on how to use the on-line applicaiton process.

Misleading Offers and Notices from Private Companies


• Don't be fooled by potentially misleading offers and notices from private companies. Click here for more information from the government's website.


Routine USPTO Email about "Design Search Codes"


• If the registration is for a graphical mark USPTO will usually send the applicant a routine email about a month after filing telling the applicant that they will be searching their database of previously registered marks looking for marks that are similar.  Their message will list the "design search codes" that they propose to use in doing the search.  The applicant normally does not need to respond but if the applicant wants one or more of the codes on the list to be removed because of irrelevance the applicant may send USPTO an email asking that the objectionable codes be deleted.  To send such an email the applicant should follow the easy to understand instructions included in USPTO's message.


USPTO "Office Actions"


• CLICK HERE for an article about how to respond to a USPTO "office action".


Tracking the Application


• The overall registration process usually takes a few months but may take up to a year or even longer depending on several factors; for example, the basis of filing and the completeness of the application. The status of pending applications can be checked through the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  To do this you must have access to the serial number given in the filing receipt email sent to your client (the serial number is 8-digits and generally begins with 76, 77, 79, or 85)


USPTO Examining Attorney


• Approximately 3 months after the date that the application has been filed it will be assigned to an "examining attorney" to determine whether federal law permits registration.  The examining attorney will examine the application, the drawing, and any specimen, to ensure that they satisfy all of the legal requirements.


• If the examining attorney refuses registration or requires more information or documentation your client will be notified by means of a written communication called an "Office Action".  Response to an Office Action must be submitted within 6 months of the issue date.


Publication for Opposition


• Once all of the issues have been resolved the examining attorney will approve the mark for publication in the Official Gazette (OG) a weekly online publication.  The USPTO will send the applicant a Notice of Publication stating the publication date.


What if an "Opposition" is filed?


• After publication in the OG, there is a 30-day period in which any member of the public may object to the registration by filing an "opposition"


• Filing an opposition, if not resolved between the parties, results to an administrative hearing similar to a court proceeding held before a USPTO tribunal called the Trademark Trial and Appeal Board.  Hearings are held at USPTO's headquarters in a suburb of Washington, DC


Final Approval


• For applications filed on a "Use in Commerce" basis:


• If no opposition is filed USPTO generally will issue a registration certificate about 11 weeks after publication


• For applications filed on an "Intent to Use" basis:
  
  
  • If no opposition is filed USPTO generally will issue a "Notice of Allowance" (NOA) about 8 weeks after publication.
  
  
  • Within 6 months after the issuance of the NOA the applicant must either:
  
  
  • Submit a "Statement of Use" (a sworn statement saying that the applicant has begun using the mark in commerce) - the filing fee for this form is $100, or
  
  
  • Submit a "Request for an Extension of Time to File a Statement of Use" if additional time is needed to begin using the mark in commerce - the filing fee for this form is $150.
  
  
  • Both of these forms can be downloaded from http://www.uspto.gov/teas.


Trademark Rejections and Appeals Procedure


• CLICK HERE for an article on this topic


Periodic Renewals Required


• A trademark registration must periodically be renewed.  This is done filing a "Section 8 Declaration of Continued Use" with USPTO on-line (or completed and submitted electronically).  Here is a link to the USPTO forms page.  Following the initial registration the deadlines for the periodic renewals are as follows:


• Between the 5th and 6th year
• Between the 9th and 10th year
• Between the 19th and 20th year (and then similarly every 10th year thereafter)


• When filing the Declaration, in addition to paying a filing fee and providing a sworn statement that the trademark is still in use in commerce, there must also be be filed one or more specimens (digital images) showing actual continued use of the trademark.

International Registration


• The Madrid Protocol is a treaty that allows for international registration of trademarks.  It provides a cost-effective and efficient way for trademark holders to ensure protection in multiple countries through the filing of a single application in the applicant's home country (for the USA that agency is USPTO).


• The Small Business Clinic does NOT directly assist clients in filing registration applications under the "Madrid Protocol".  We refer clients to the Florida Bar website to located a qualified intellectual property attorney AND we give them the contact information for attorney Chris Sanchelima who formerally was an adjunct at the FIU law school back when we helped clients file patents


• International Applications are handled through an international agency known as the World Intellectual Property Organization (WIPO).  Click Here for WIPO's "How to file your application" page (which includes a fee calculator utility)


• International Applications are filed in the United States on-line through USPTO (which then certifies the application directly to WIPO).  CLICK HERE for the USPTO's information page


• In addtion to the fee payable to USPTO a separate fee is payable to each nation in which trademark protection is sought (the amount of the fee varies by country)


• CLICK HERE for USPTO's on-line application for international registrations

Registering a Social Media Hashtag


• Review the relevant chapter of USPTO's Trademark Manual of Examining Procedure (TMEP)


• A "hashtag" is a form of metadata consisting of a word or phrase prefixed with the symbol "#" (e.g., #chicago, #sewing, and #supremecourtdecisions).  Hashtags are often used on social-networking sites to identify or facilitate a search for a keyword or topic of interest.


• As with all marks, a hashtag must be distinctive and generic or merely descriptive.


• In the application the a hash tag symbol (#) or the term HASHTAG must be disclaimed.

Domain Names vs. Trademarks


• What is a Domain Name?.  A domain name is part of a web address. They are created by registering with an accredited domain name registrar and are NOT registered through USPTO.  Registering a domain name does not in and of itself give you the right to use it as a trademark.


• Registering an Entire Domain Name as a Trademark.  An entire domain name can be registered as a trademark provided it is actually being used as branding (to identify the source of goods or services) and not merely as a web address that is shown in the URL bar of a browser.  Of course it would have to meet all normal requirements for a trademark and the "specimens" submitted with the application would have to show the use of the entire domain name (including the ".com" etc)


• Avoid Infringing Upon Existing Trademarks.  Even when not registering it as a trademark choose the domain name carefully.  Picking a domain name that is too similar to a registered trademark could result in threats of litigation from someone claiming that your use of your domain name could cause "customer confusion".  Being forced to give up a domain name can result in a web-based business suffering a damaging, if not fatal, blow.


• Before picking a domain name do a search of the USPTO database to identify trademarks that are similar
• CLICK HERE for an article on this topic

Corporate Name vs Fictitious Name (DBA) vs Trademark


• Corporate Name: A company's official legal name as shown on its articles of incorporation (if a corporation) or articles of organization (if an LLC).  Such names are used to open bank accounts, obtain credit cards, to pursue or defend a claim in courts.


• Fictitious Name: This is a name that a company might use instead of its legal name (sometimes referred to as "DBA").  It is a misdemeanor in Florida to do business under a fictitious name unless that name has first been registered with the State.  Registration is done by completing a simple on-line form and paying a fee to the State of Florida)


• Relation to Trademark:


• Incorporating a company or registering a fictitious name does NOT create trademark rights


• Likewise, unless your corporate or fictitious name is also a registered trademark it's possible someone could stop you from using it as part of your branding.  In other words, its your name and no one can keep you from using it but it's possible that you could not use that name as your "brand" if someone else has registered it as a trademark.


• You can obtain a trademark for a corporate or fictitious name but only if it meets all of the requirements (e.g. "used in commerce", not "merely descriptive", not "generic", etc.)