Robert S. Broder, P.C.

                                  Attorneys At Law

 

2209 Merrick Road - Suite 204

Merrick, NY 11566
Phone: 516.771.0349

 

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BASIC FACTS ABOUT TRADEMARKS
 

A TRADEMARK may be a word, symbol, design or combination

word and design, a slogan or even a distinctive sound which

identifies and distinguishes the goods or services of one party

from those of another. Used to identify a service, it can be

called a service mark. 

 

Normally, a trademark for goods appears on the product or on

its packaging, while a service mark is usually used in

advertising to identify the owner' s services.

A trademark is different from a copyright or a patent. A

copyright gives protection for an artistic or literary work and

a patent gives protection for an invention.

 

Unlike a copyright or patent, trademark rights can last

indefinitely if the mark continues to perform a

source-indicating function. The term of the Federal trademark

registration is 10 years, with 10 year renewal terms. However,

between the fifth and sixth year after the date of the

registration, the registrant must file an affidavit stating the

mark is currently in use in commerce. If no affidavit is filed,

the registration will be cancelled.

 

Trademark rights arise from either (1) use of the mark, or

(2) a bona fide intention to use a mark, along with the filing

of an application to Federally register that mark on the

Principal Register. A Federal trademark registration is not

required in order for a trademark to be protected, and a

trademark may be used without obtaining a registration.

Before a trademark owner may file an application for a

Federal registration, the owner must either (1) use the mark on

goods which are shipped or sold, or services which are

rendered, in commerce regulated by Congress (e.g., interstate

commerce or commerce between the U.S. and a foreign country),

or (2) have a.bona fide intention to use the mark in such

commerce in relation to specific goods or services.

 

BENEFITS OF REGISTRATION

 Advantages of Federal trademark registration :

1). The filing date of the application is a constructive date

of first use of the mark in commerce (this gives

registrant nationwide priority as of that date, except as

to certain prior users or prior applicants);

2). The right to sue in Federal court for trademark

infringement;

3). Recovery of profits, damages and costs in a Federal court

infringement action and the possibility of treble damages

and attorneys' fees;

4). Constructive notice of a claim of ownership (which

eliminates a good faith defense for a party adopting the

trademark subsequent to the registrant's date of

registration);

5). The right to deposit the registration with Customs in

order to stop the importation of goods bearing an

infringing mark;

6). Prima facie evidence of the validity of the registration,

registrant's ownership of the mark and of registrant's

exclusive right to use the mark in commerce in connection

with the goods or services specified in the certificate;

7). The possibility of incontestability, in which case the

registration constitutes conclusive evidence of the

registrant's exclusive right, with certain limited

exceptions, to use the registered mark in commerce;

8). Limited grounds for attacking a registration once it is

five years old;

9). Availability of criminal penalties and treble damages in

an action for counterfeiting a registered trademark; and

10). A basis for filing trademark applications in foreign

countries.

 

NOTICE

Once a Federal registration is issued, the registrant may

give notice of registration by using the "" symbol, or the phrase

"Registered in U.S. Patent and Trademark Office" or "Reg. U.S.

Pat. & Tm. Off." Although registration symbols may not be

lawfully used prior to registration, many trademark owners use

a TM or SM (if the mark identifies a service) symbol to

indicate a claim of ownership, even if no Federal trademark

application is pending.

 

THE REGISTRATION PROCESS

The Patent and Trademark Office ("PTO") is responsible for

the Federal registration of trademarks. When an application is

filed, it is reviewed to determine if it meets the requirements

for receiving a filing date. If the filing

requirements are not met, the entire mailing, including the

fee, is returned to the applicant. If the application meets the

filing requirements, it is assigned a serial number, and the

applicant is sent a filing receipt.

The first part of the registration process is a

determination by the Trademark Examining Attorney as to whether

the mark may be registered. An initial determination of

registrability, listing any statutory grounds for refusal as

well as any procedural informalities in the application, is

issued about four-five months after filing. The applicant must

respond to any objections raised within six months, or the

application will be considered abandoned. If, after reviewing

the applicant's response, the Examining Attorney makes a final

refusal of registration, the applicant may appeal to the

Trademark Trial and Appeal Board, an administrative tribunal

within the PTO.

Once the Examining Attorney approves the mark, the mark

will be published in the Trademark Official Gazette, a weekly

publication of the PTO. Any other party then has 30 days to

oppose the registration of the mark, or request an extension of

time to oppose. An opposition is similar to a proceeding in the

Federal district courts, but is held before the Trademark Trial

and Appeal Board. If no opposition is filed, the application

enters the next stage of the registration process.

If the mark published based upon its actual use in

commerce, a registration will issue approximately 12 weeks from

the date the mark was published.

If, instead, the mark published based upon applicant's

statement of a bona fide intention to use the mark in commerce,

a notice of allowance will issue approximately 12 weeks from

the date the mark was published. The applicant then has six

months from the date of the notice of allowance to either (1)

use the mark in commerce and submit a statement of use, or (2)

request a six-month extension of time to file a statement of

use. 

 

STATUTORY GROUNDS FOR REFUSAL

The Examining Attorney will refuse registration if the

mark or term applied for:

1). Does not function as a trademark to identify the goods or

services as coming from a particular source; for example,

the matter applied for is merely ornamental;

2). Is immoral, deceptive or scandalous;

3). May disparage or falsely suggest a connection with

persons, institutions, beliefs or national symbols, or

bring them into contempt or disrepute;

4). Consists of or simulates the flag or coat of arms or other

insignia of the United States, or a State or municipality,

or any foreign nation;

5). Is the name, portrait or signature of a particular living

individual, unless he has given written consent; or is the

name, signature or portrait of a deceased President of the

United States during the life of his widow, unless she has

given her consent;

6). So resembles a mark already registered in the PTO as to be

likely, when used on or in connection with the goods of

the applicant, to cause confusion, or to cause mistake, or

to deceive;

7). Is merely descriptive or deceptively misdescriptive of the

goods or services;

8). Is primarily geographically descriptive or deceptively

misdescriptive of the goods or services of the applicant;

9). Is primarily merely a surname.

A mark will not be refused registration on the grounds

listed in numbers 7, 8 and 9 if the applicant can show that,

through use of the mark in commerce, the mark has become

distinctive so that it now identifies to the public the

applicant's goods or services. Marks which are refused

registration on the grounds listed in numbers 1, 7, 8 and 9 may

be registrable on the Supplemental Register, which contains

terms or designs considered capable of distinguishing the

owner's goods or services, but that do not yet do so. A term or

design cannot be considered for registration on the

Supplemental Register unless it is in use in commerce in

relation to all the goods or services identified in the

application, and an acceptable allegation of use has been

submitted. If a mark is registered on the Supplemental

Register, the registrant may bring suit for trademark

infringement in the Federal courts, or may use the registration

as a basis for filing in some foreign countries. However, none of the

other benefits of Federal registration listed above apply.

 

Robert S. Broder, P.C. 2903 Preston Lane Merrick, NY 11566
Phone: 516.771.0349 Fax: 516.7717677 rsbroder@optonline.net

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