Thank you for your interest in retaining Myers & Kaplan Intellectual Property Law, LLC to represent your interests in seeking trademark registration at the state and/ or federal level. This letter contains information which may be helpful to you in selecting and evaluating your trademark for registration.
In addition to reviewing the information contained in this letter, we encourage our clients to research this topic thoroughly before undertaking the trademark process. In addition to the information which your attorney will provide you, there are many excellent trademark law references available from a wide range of reputable sources. The United States Government Printing Office publishes several useful pamphlets on intellectual property law, including trademark. Other references may be obtained from the public library, from retail booksellers, and on the Internet. Feel free to ask our opinion as to the value of any such references. We highly recommend that you visit the United States Patent and Trademark Office website.
The modern United States trademark law (the "Lanham Act") is set forth at 15 U.S.C.A. § 1051, et seq. That law, however, has grown upon, and has been nurtured and influenced by very old roots that may be traced back to ancient England, circa 1400, when the common law courts were called upon to decide issues of fairness under the laissez-faire (free market) theory of competition. Needless to say, the principles of trademark law have grown complex over the succeeding generations as the needs and concerns of businesses operating in the modern multinational and international arena have grown.
Trademarks, patents, and copyrights are often jointly categorized as ‘intellectual property;' that is, they are created by human thought, creativity, and resourcefulness for the ultimate benefit of all of society and are, therefore, recognized within the law as protectable property interests. Such property rights may be transferred, encumbered, and protected against third party infringement by the owner of the intellectual property.
While the law recognizes each kind of intellectual property, the purposes for each are very different; thus, the legal protections available for each are different. In fact, only the rights of patent and copyright are protected by the United States Constitution. Additionally, the rights of patent and copyright are vested solely in federal law; that is, no state may grant copyrights or patents. In contrast, trademark rights arose at common law, were later codified by legislative act, and have been modified from time to time by court interpretation. Unlike patent and copyright law, modern federal trademark law gives each state the right to register trademarks for use within its borders; however, any rights granted by an individual state are always subordinate to those rights granted by federal law. When state and federal rights overlap between different parties claiming common rights in a mark, the law of priorities becomes very complex indeed.
A. Patents: A Short Description
Patent rights generally may be secured by "whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof …." 35 U.S.C.A. § 101. Additional patent protection may be available for plants, 35 U.S.C.A. § 161, and for ornamental designs, 35 U.S.C.A. § 171. Depending upon the type of patent right held, the term of protection ranges from fourteen years from the patent issue date to twenty years from the patent filing date.
Generally, the right granted by issuance of a patent is the right to exclude others from making, using, or selling the patented "art." Patent rights may not legally be claimed until the rigorous patent application process has been successfully completed and the United States Patent and Trademark Office has issued Letters Patent to the inventor.
B. Copyrights: A Short Description
Copyright protections are defined within 17 U.S.C.A. § 101, et seq. Copyrights generally subsist "in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." 17 U.S.C.A. § 102. Copyright protection also encompasses compilations and derivative works. Thus, copyrights protect any of a variety of forms of expression that have been fixed in some tangible medium through which others may perceive the expression. A copyright generally endures for the life of the author plus an extended term of years; however, the duration of the copyright may be limited or otherwise modified depending upon the date of first creation or publication of the work, the category of the work, the statutory classification of the authors, and the completeness of the records relating to the death of the authors.
Copyright ownership gives the owner the exclusive right, subject to certain statutory limitations, to reproduce the copyrighted work, to prepare derivative works, to distribute copies of the work, to perform the work, and to publicly display the work. 17 U.S.C.A. § 106. Unlike a patent, a copyright may be claimed from the moment of reduction to tangible form. While there is no statutory mandate that the author comply with the extensive federal copyright registration procedures, the author is encouraged to expediently register his copyright with the United States Copyright Office and the Library of Congress. The Copyright Act provides certain extremely favorable legal rights and remedies that may not be exercised without prompt registration.
C. Trademarks: A Short Primer
Trademark rights arise out of the use in commerce of a specific and recognizable name, mark, slogan, sound, or other means by which an individual's or entity's product or service may be distinguished over that of another. 15 U.S.C.A. § 1051. Trademark rights attach, on a limited basis, at common law through mere use of the mark in trade; that is, there is no requirement that the mark be registered. Like copyrights, however, the law encourages prompt registration of the mark in order to obtain maximum legal protection.
1. What is Protected by a Trademark? What is the Value of a Trademark to My Business?
Trademarks arose at common law out of the concern for protecting the goodwill and reputation of a business in the eyes of its customers. Early business owners and guilds recognized that by placing the business name or guild symbol upon their products, the consuming public came to associate the quality and uniqueness of the product with the merchant's symbol or name. Customers came to rely upon that reputation and perception of quality in their subsequent purchasing decisions and product preferences. The very same considerations remain valid today in the selection and adoption of a trademark; that is, a strong trademark builds consumer preference for your business and its products over that of your competitors.
Conversely, any infringing use of a trademark may cost your company both profits and future sales due to misappropriation of your customer base; it may also lead to unfulfilled expectations on the part of your customer due to a real or perceived inferiority in quality or other important characteristics of the infringing product - characteristics attributed to you, even though you were the unknowing victim of the competitor's wrongful trademark use. Obviously, such abuses of trademark rights are not taken lightly by any company.
2. How Long is a Federal Registration Valid?
Common law trademark rights exist so long as the mark continues to be applied to the product or service in commerce; however, federal registration of the mark is limited to successive ten year periods. 15 U.S.C.A. §§ 1058 and 1059. Additionally, in order for the mark to continue in force and effect, federal law requires the owner of a registered mark to file in the fifth year of registration an affidavit setting forth specific statutorily mandated information; otherwise, the mark will be cancelled at the end of the sixth year of registration. 15 U.S.C.A. § 1058.
3. What is the Importance of Obtaining a Federal Trademark Registration?
Trademark ownership gives the owner a limited, exclusive right to use the registered mark in commerce, 15 U.S.C.A. § 1115, and to prevent others from making any use of the mark, or any colorable imitation thereto, in connection with the goods or services, which use is likely to cause confusion, mistake, or to deceive the consuming public with regard to origin or sponsorship of the product or service. 15 U.S.C.A. § 1114. As discussed previously, however, this grant of trademark rights must always be measured against any prior claim of right held by another party pursuant to either common law or state law.
If the Commissioner of Trademarks determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to the earliest of the filing dates of the applications pending or of any registration issued pursuant to the Act. 15 U.S.C.A. § 1052. In plain language, Section 1052 gives the Commissioner the right to issue registrations to two or more applicants with similar marks, if he determines that consumers will not be mislead, confused, or mistaken in recognizing the actual origin of the relevant product or service; however, the Commissioner may restrict any such concurrent registrations to the particular geographic regions in which each applicant uses its mark based upon federal filing dates and prior common law rights in the mark. Id.
Among the benefits provided by federal registration of a trademark are the right to bring legal action for damages in infringement, 15 U.S.C.A. § 1114; injunctive relief, 15 U.S.C.A. § 1116; seizure of counterfeit marks, id.; recovery of lost profits, direct and punitive damages, recovery of costs of litigation, and attorney fees, 15 U.S.C.A. § 1117; and destruction of infringing articles, 15 U.S.C.A. § 1118. Additionally, there is a powerful and broad ‘catch-all' clause designed to prevent unfair competition, or "passing off." 15 U.S.C.A. § 1125. That section provides in pertinent part that:
"(a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."
This section protects both registered marks and qualifying unregistered marks, and generally has created the broad federal tort of unfair competition. The intent of this section is to protect against misappropriation of goodwill associated with another's trademark by acts of confusingly similar marketing and packaging which would create the false impression that the products of the misappropriating party originated with the other party. The law is, however, construed consistently by the federal courts with the other requirements of the Lanham Act.
Most often, this section is invoked by a party claiming infringement of valid trademark interests against a later user of the mark. The federal courts have developed a broad set of elements to be analyzed in cases brought under this section. The courts have focused generally upon actual confusion of the relevant public, the sophistication of the purchaser, the degree of similarity of design and marketing, and the relative strengths of the marks. While intent to deceive is not critical to a finding of likelihood of confusion in a trademark case, such intent may substantially affect any damages ultimately awarded.
4. May a Federal Trademark Registration be Challenged?
There are many grounds upon which a mark, registered or pending, may be challenged: abandonment; genericness; descriptiveness; prior national use; likelihood of confusion, mistake, or deception of the relevant consuming public; fraud upon the Patent and Trademark Office in prosecuting an application for registration; and failure to meet certain other statutory requirements. 15 U.S.C.A. § 1064. These challenges may arise offensively to set aside a registration held by one party in order to secure registration with the challenging party; or, the challenges may arise defensively during an interference proceeding or an infringement suit. Id. See also, 15 U.S.C.A. § 1115 (defensive claims).
Any registration or pending application for registration may be challenged by any interested party that believes it is or will be damaged by registration of the mark, 15 U.S.C.A. § 1064, unless that mark has achieved incontestable status pursuant to 15 U.S.C.A. § 1065. A mark may achieve incontestable status after the registered mark has been in continuous use for five consecutive years subsequent to the date of registration and is still in use in commerce. Id. There are enumerated, but limited, statutory grounds upon which an incontestable mark may be challenged. Id. See also, 15 U.S.C.A. § 1115. An incontestable mark may always be attacked on grounds that it has become the generic name in commerce for the product or service for which it is registered, or has been abandoned. An incontestable mark may be contested, on a limited basis, on grounds of prior senior use in commerce. Id. To the extent that a party may prove its senior use in commerce, the prior senior user may obtain exclusive use in the geographic area where it has done business before publication by the registrant. Id.
The general steps in obtaining a trademark registration are: selecting a trademark, conducting a trademark search, obtaining a legal opinion regarding the results of the trademark search, and filing one or more applications for registration with the United States Patent and Trademark Office and/ or with appropriate state authorities.
A trademark search is probably the most critical step in securing trademark rights which are free and clear of conflicting claims by others. The purpose of a trademark search is to gather information from a variety of sources across the entire United States. This information will show whether other persons, businesses, or entities in other geographic locations claim rights in the same or a similar trademark. Armed with this information, you may make an informed decision regarding whether to proceed with your use of the trademark.
Based upon the results of the search, your attorney can give you guidance regarding whether to file for registration of the trademark and whether you may be infringing upon someone else's prior rights in the trademark. Based upon the results of the search, your attorney may advise you regarding potential interference actions during the registration process. He may also advise you that use of a contested mark could subject you to litigation. Your attorney may also be able to make suggestions regarding ways to secure unencumbered rights in a potentially contested mark.
Our Questionnaire covering typical trademark documentation considerations, along with certain relevant legal questions, is attached for your consideration and use. For obvious reasons, you should continue documenting any changes to either the design or wording of the mark at issue. You should also document each product and/ or service with which the mark is used, including the dates and locations of use of the relevant mark for each product or service.
You should periodically review your answers to our Questionnaire. Should any of your answers change during your ongoing developmental efforts, be sure to document your new answers for the benefit of your trademark attorney.
One final note regarding your documentation: Remember at all times that the trademark application process is a legal proceeding, subject to state and federal law and regulation. Just as you would expect in any other legal proceeding, evidence is of paramount importance. Your evidence for trademark prosecution purposes is comprised of any document, drawing, sketch, witness, paper, or record, without limitation, which proves, or tends to prove, your answers to questions similar to those contained in our Questionnaire. Dates and other details are of critical importance. Procedures and means by which each piece of evidence may be validated and authenticated are essential. Be careful to document, record, have witnessed, compile, and preserve each and every piece of evidence bearing upon your answers to our Questionnaire.
Please feel free to consult us if you have any questions regarding the proper method of recording, authenticating, and preserving your documentation. Although the above guidelines are not relevant in every case, you should consult us if you decide to vary at all the procedure outlined above.
With regard to our standard office procedures, should you wish us to proceed with any searches or filings on your behalf (or should you simply wish to consult with us generally), please contact us. We will be happy to schedule an initial office consultation. Following that consultation, should you wish to retain this Firm, you should expect that we will prepare and mail to you our standard engagement agreement. Upon our receipt of your signed agreement and retainer fee, along with any relevant design documents and/or prototypes, we will proceed in accordance with your instructions.
This Firm also represents inventors in prosecuting domestic and international patents; in conducting secured disclosures to industry; in finding and developing engineering, prototyping, and manufacturing resources; in developing products from concept to market-ready design; in finding and developing marketing partners; in developing business opportunities; in selling or licensing individual patents or portfolios of intellectual properties; and, in protecting intellectual property rights in all forms.
In addition to our patent-related services, we represent businesses, artists, designers, architects, software developers, musicians, and, of course, inventors in seeking and enforcing intellectual property rights, especially through state, federal, and international trademark, copyright, and trade secret laws.
We hope that this page addresses some of your questions and will serve as a future reference for some of the services rendered by our Firm. We would be delighted to speak with you at any time should you have additional questions. Again, thank you for your interest and we shall look forward to working with you!