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Q&A Trademarks

How Does a Trademark Office Action Extension of Time Work?

For U.S. federal trademark applications, the standard deadline to make a response to an office action is three (3) months from the date the office action was sent. Failing to respond by the deadline will result in abandonment of the trademark application. However, it is possible to obtain an extension of time to respond.

How to Obtain a Trademark Extension of Time

An extension of time to take action following a trademark office action—whether non-final or final—requires filing an explicit request for an extension by the original 3-month deadline and paying an official fee (currently $125 if filed electronically). The official fee is a fixed amount and it does not matter how many classes of goods or services are in the application. The extension is basically automatically granted upon filing the request and paying the fee. It provides a single 3-month extension of the original deadline to make a substantive response or appeal. In other words, after obtaining an extension the applicant is able to substantively respond to the office action, or to appeal from a final office action, up to six (6) months from the date the office action was sent.

Only one extension of each office action deadline is possible, however. Six (6) months is the maximum period to take action when such a response is necessary. Although it is still possible to separately obtain extensions for each of the different deadlines associated with different office actions.

Also, the extensions discussed here only apply to office action response deadlines. For instance, extensions of time to file a statement of use (SOU) following allowance of an intent-to-use (ITU) application are treated differently—those are for six (6) month periods and up to five (5) such extensions are available.

Additionally, the shortened 3-month response deadline, and the possibility of requesting a 3-month extension of time, will only arise for post-registration office actions beginning October 7, 2023. Until then, post-registration office actions will have 6-month response deadlines.

Extensions Inapplicable to Madrid Protocol Extensions

For Madrid Protocol extension applications based on foreign priority rights the response deadline for an office action is instead always six (6) months. There are no extensions available to that 6-month response deadline in Madrid Protocol extension trademark applications.

Missed Deadlines

If a response deadline is missed, it may be possible to file a petition to revive an application with the payment of an official fee. Alternatively, an applicant can often re-apply and start the application process over again after abandonment.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Copyrights Patents Q&A Trade Secrets Trademarks

What Should I Do to Avoid Infringing Anyone Else’s IP When Releasing a New Product?

Here is a common scenario. Your business is planning to release a new product but wants to avoid infringing anyone else’s IP. What should you do? To avoid infringing anyone else’s IP, you should consider proactive clearance or freedom-to-operate (FTO) efforts, ideally before the new product is commercially launched.  Such efforts are not legally mandated but should be tailored to your businesses’ risk tolerance in light of the typical costs of patent, trademark, copyright, and trade secret litigation.  The scope of these efforts will depend upon the type of IP involved.  Specific efforts may also depend on where you are planning to release the product, geographically. The following discussion focuses on the USA.

General Tips

Consider implementing overarching policies and protocols to reduce IP infringement (or misappropriation) risks. Educate and supervise staff accordingly. Do not simply assume that employees will already understand or care about IP infringement and misappropriation risks.

Make reasonable efforts to avoid infringement, including proactive clearance/FTO efforts where appropriate. But accept, as a cost of doing business, that despite those efforts there will always remain some risk that a “troll” will make an IP infringement claim of dubious merit.  Failing to make reasonable efforts will just make it easier for others to target you with infringement claims that are expensive to defend.

When making goods or materials at the request of a customer (e.g., as supplier for a retailer), be cautious of harsh and potentially predatory indemnity or warranty terms in purchase agreements. These can come into play if the customer is requesting infringement—either intentionally or merely negligently—while passing all infringement liability onto your business.  You might be agreeing to assume IP infringement risks that far exceed the commercial value of the contract. This is also concern where infringement liability may depend on customer actions outside your control.

Patents

For patents, the most common type of patent infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s patent(s). However, though knowledge and intent (willfulness) can impact damages. Also, indirect infringement—a category of certain types of infringement—may require knowledge of the patent and that your activities infringe.

Consider a pre-launch patent FTO study that initially involves a search for any potentially conflicting patents, followed by a legal analysis. Proactively performing a patent FTO study allows you to find potentially problematic patents before they find you. That makes possible certain risk reduction efforts, such as an opinion of counsel, a design around, seeking a license, etc.

Trademarks

For trademarks, infringement has essentially a strict liability character and infringement does not depend on whether you had actual knowledge of the other party’s trademark. Liability can arise if there is a likelihood of confusion, even in the absence of any actual confusion by consumers. Trademark infringement does not have to be willful to result in a damages award. Also, there is a presumption that a trademark owner can obtain an injunction against use of an infringing mark.

When adopting new branding, it is not unusual for a first-choice mark (and second-choice…) to be already taken by another business. Many marks are already taken by others, which limits the universe of marks freely available for your business’ use at the time of adoption. It may be preferable to select a different mark from the start than to later re-brand, because re-branding tends to become more burdensome, costly, and disheartening as time passes.

Consider a pre-launch trademark clearance that initially involves a search for any potentially conflicting trademarks, followed by a legal analysis. Such a search should encompass all the relevant jurisdictions (e.g., all countries where your brand or mark will be used). Registration is not required to have enforceable trademark rights in the U.S. So a clearance search should ideally assess possible unregistered marks too.

Copyrights

For copyrights, there must be unauthorized copying of protected expression. Though there can be risks from copying that happens though inattention or negligent conduct. Fair use limits the copyright owner’s exclusive rights, but fair use will not always apply (and usually won’t when simply making commercial use of a work rather than making critical commentary about the work). There are many misconceptions about copyright law. For instance, just because something is available on the Internet does not make it “fair game” for your business’ use—even if denoted as being “free” or “royalty free”.

Have an awareness of copyright infringement risks. Also be aware of the ways that employees might commit infringement. For instance, employees posting materials to online platforms under via company accounts can present copyright infringement risks. Consider ways to educate employees about copyright and supervise employee activities.

Perform copyright clearance for any materials that you did not wholly create yourself that you plan to use, and obtain written permission or a license or assignment of ownership. Retain records of written authorizations. And make sure that you adhere to the terms of any license. Also consider seeking an indemnity for any licensed materials, because you could be licensing materials that are themselves infringing.

Trade Secrets

For trade secrets, there must be misappropriation of secret materials. Though there can be risks from misappropriation that happens though inattention or negligent conduct. However, trade secret misappropriation will generally only arise if your business had received secret information from someone else. This could occur by hiring an employee who knows confidential information from a prior employer.

For trade secrets, review any non-disclosure agreements (NDAs) in place and consider clean room or other protocols if any confidential materials were or will be received by staff. 

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Agreements Copyrights Patents Q&A Trade Secrets Trademarks

How Can My Business Acquire and Own IP Rights?

Some intellectual property (IP) rights arise automatically under certain circumstances while others require affirmative action. 

PRACTICAL TIP: Think about IP early to avoid waiving potential rights and consider the benefits of optional protections.

Copyrights

Copyright attaches automatically to the author when a new creative work (e.g., text, photo, etc.) is fixed in a tangible medium of expression.  Registration is not required for copyright to exist.  Copyright ownership is also independent of possession and ownership of a copy of a work—even the “original” or sole copy. 

Trademarks

Trademark rights can arise through use of a mark in commerce to identify the source of goods or services, provided that the mark is distinctive.  Registration is not required to have enforceable trademark rights in the U.S.  However, registration of a mark, particularly a federal registration on the Principal Register, helps to secure rights through the entire country and over time can limit the possibility for others to challenge the trademark rights in the registration.

Trade Secrets

Trade secret rights can attach to information that derives economic value from not being generally known and not being readily ascertainable so long as you take reasonable measures to keep it secret, meaning the existence of trade secret rights depends on the affirmative steps you take to maintain secrecy. 

Patents

Patent rights require applying for and then obtaining a patent following an examination to determine if the invention satisfies criteria for patentability.  In the U.S., a patent must be applied for within one year of any disclosure, public use, or commercialization of the invention by the inventor. In most other countries, a patent must be applied for before any public disclosure.

International Considerations

Patent and trademark rights are territorial and rights in the U.S. will generally not provide exclusive rights abroad.  Copyright and trade secret rights may have international enforceability in both the U.S. and some foreign jurisdictions. 

Assignments and Licenses

IP rights can also be obtained from others via assignment (i.e., a transfer of ownership) or licensing (i.e., authorization to use the IP without a transfer of ownership).  For many types of IP, assignments must be in writing and/or satisfy other criteria to be valid.  Trademark rights are tied to underlying customer goodwill and cannot be assigned apart from that goodwill.

Employee- and Vendor-Created IP and Joint Development

When employees create things that may be subject to IP rights, the general rule—with some exceptions (notably for copyrightable works made for hire created by an employee within the scope of his or her job duties)—is that the employee rather than the employer is the owner.  Businesses wanting to obtain ownership of employee-created IP should consider a written agreement (e.g., employment agreement) that establishes either an obligation to assign IP (to be followed later by execution of an assignment) or a prospective assignment of any expected future IP.

When hiring a vendor to create or develop something, or jointly developing something with a business partner, consider who will own the IP at the outset. Merely paying for development will not automatically result in the transfer of ownership of vendor-created IP. Joint development can raise complex questions about who will own what, and ownership of particular IP may depend on which person(s) or entity contributed to that particular subject matter in the absence of a written agreement.

A common mistake is to ignore ownership of IP rights until there is infringement or a big business deal. Attempting to “fix” or alter IP ownership after the fact is usually much more complicated than sorting that out from the start of a vendor/partner/employee relationship (or even at the start of a particular project).

Online Resources:

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

How Do I Protect My Business’ Name and Logo?

Trademark law can protect a brand name (in words), graphical logo, or the like—a “mark”—used to identify the source of goods or services.  But not all marks are protectable.  It is not unusual for a first-choice mark (and second-choice…) to be already taken or simply not be protectable. The following is an explanation of the basics of how a business’ name and logo can be protected under trademark law.

The first step is to select a mark that is distinctive enough to be protectable.  Generic terms (or functional aspects) are never entitled to protection under trademark law.  Merely descriptive terms are not protectable but descriptive marks can potentially develop “secondary meaning” and acquire distinctiveness in consumers’ minds over time, through extensive use and promotion, so as to become protectable.  Suggestive, arbitrary, or fanciful marks are inherently distinctive and thus always protectable. Arbitrary and fanciful marks have the greatest legal strength, in conceptual terms. 

A common problem is that businesses select marks that are not conceptually strong enough to merit exclusive rights as trademarks. Businesses people are frequently drawn to descriptive or generic terms because they require less initial investment to obtain consumer recognition. But the tradeoff is that generic and descriptive marks are considered conceptually “weak” and offer less or no legal exclusivity.  In this respect, business and marketing considerations can be in tension with legal considerations under trademark law. If exclusive trademark rights are important to your business, make sure you select a mark that is good enough in legal terms to be protectable under trademark law.

Keep in mind that a mark must be one specific thing. Materially different spellings or visual depictions potentially reflect use of different marks. It is possible to have multiple different marks that are each in use, potentially even simultaneously with the same goods or services. But consistency in usage is important. This generally means settling on the exact mark or marks that will be used and sticking to those decisions.

Secondly, trademark rights generally go to the senior user.  This means many marks are already taken by others, which limits the universe of marks freely available for your business’ use at the time of adoption. If your business’ mark creates a likelihood of confusion with an existing mark, the prior user will have superior rights.  There can be a likelihood of confusion even if there are differences between the respective marks or goods/services, and evidence of actual confusion in the market is not required.  Also, a protectable but weak mark, such one that resembles numerous other coexisting marks, will have more limited scope of exclusivity than a stronger mark. 

Geographically separate but otherwise similar uses of trademarks can sometimes coexist. Although businesses operating on the Internet tend to encompass wide geographic areas of use without much opportunity for separation. Moreover, a prior user might consent to coexistence in some circumstances—often subject to certain conditions to avoid confusion, such as agreements limiting the scope of the goods/services with which a mark is used. In general, the possibility of coexistence or consent is very context-specific and cannot simply be assumed to be possible.

Trademark rights in the U.S. arise from commercial use of a mark.  “Common law” rights can accrue automatically through use of a mark but are generally limited to the geographic area in which the mark is actually used.  Registering a mark has benefits, and a federal registration on the Principal Register can secure rights over the entire country and can be used to prevent unauthorized importation of goods bearing the mark.  Trademark rights can be abandoned through nonuse without intention to resume and federal rights are presumptively abandoned after three years of nonuse. 

Trademarks are also territorial. Rights in one country generally provide no exclusivity in another.  But most countries have no use requirement; many follow a first-to-file system and may provide little or no common law rights based on use alone. 

After adoption of a mark, use it properly and consistently, and monitor for potential infringing uses. Additional steps can also be taken to enhance protection of a trademark.

Useful Tips:

  • Use care when selecting a mark to avoid having to later re-brand, which becomes more burdensome over time.  Identify and evaluate potentially conflicting existing marks as part of initial mark selection.  In doing so, consider all jurisdictions and scenarios under which your business plans to operate, including likely future expansion as to goods/services and geographic areas. A trademark legal clearance can help identify potentially conflicting marks and associated infringement risks.
  • Registration of an Internet domain name or a corporate name (trade name), or both, does not alone establish any exclusive rights in a brand or mark under trademark law. 
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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

What is the Process to Register a Trademark?

The process to register a trademark (or service mark) involves submitting an application, which is then substantively examined and a registration is ultimately either issued or refused.  Post-registration action is required to maintain a registration, which can potentially last indefinitely provided that the registered mark is still in use.  Both federal and state trademark registrations are available in the USA, and registration is also available in foreign countries.  In many jurisdictions, including for U.S. federal applications, marks are published for potential opposition by others prior to registration.  Trademark registrations are also subject to cancellation (or expungement, etc.) under certain circumstances. 

Federal registrations are handled by the U.S. Patent & Trademark Office (USPTO), which oversees two registers: the Principal Register and the Supplemental Register.  Only registration on the Principal Register establishes a presumption of exclusive rights in a mark. 

Not all Registrations are Equal in the U.S.: Federal trademark registration on the Principal Register is almost always preferable to state registration because much more expansive national rights are obtained, which is significant in the age of the Internet.  Also keep in mind that a federal registration on the Supplemental Register does not by itself establish exclusive rights, although it can block a later conflicting registration. The value of state-level registrations varies. Some state trademark registrations provide no presumption of exclusive rights.

Basic Requirements of a Federal U.S. Trademark Application

A U.S. federal trademark application must identify the mark, the associated goods and/or services, and a filing basis. 

Identification of Mark

The identification of the mark establishes what, exactly, constitutes the mark, which can include words (e.g., in “standard characters”) and/or graphical elements (e.g., color, stylized typeface/font, design element(s)), depending on the nature of the mark.  Importantly, a mark must be one specific thing. Different spellings or different visual depictions potentially represent different marks. A trademark application must be limited to one mark, with any other potential marks pursued in separate applications.

Identification of Goods and Services

The goods and services must be identified and grouped according to a classification system, with filing fees calculated based on the number of classes of goods/services included.  There is some skill involved in wording these identifications of goods and services appropriately. One important consideration is that for U.S. federal registrations it is not possible to simply “reserve” a mark, that is, merely to block others from using it. Use of the mark with all the identified goods and services must have already occurred or at least be intended in the future. Therefore, crafting a proper identification of goods and services requires first understanding how the applicant is currently using and/or legitimately intends to use the mark.

Filing Basis

As to filing bases, first, an application can be based on actual use in commerce, that is, the mark is already in use.  Evidence of use in the form of a “specimen” must be submitted with such an application and the date of first use in commerce must be specified. 

Alternatively, a federal application can be filed based on a bona fide intent-to-use (ITU).  In this case, the mark has not yet been used in commerce but the applicant has a good faith intention to do so.  The ITU application filing date establishes constructive use in commerce.  But a statement of use (with a specimen) is still eventually required in an ITU application in order to obtain a registration—with paid extensions of time the applicant has up to about three years to do so. 

Federal U.S. registrations based upon prior foreign registrations and applications as well as Madrid Protocol extensions based on a foreign application or registration are also possible. 

Lastly, it is possible for a given application to include multiple filing bases. This is most common when a mark has already been used with some but not all goods or services, but use with the further goods/services in the future is intended. It is also common when priority to a foreign trademark registration or application is involved.

The Examination Process

Trademark office examination involves a search for conflicting registrations and an analysis of whether the applied-for mark meets applicable legal criteria.  This is called trademark “prosecution”. Applicants can respond to any refusal sent in an “office action” by making amendments and arguments.  Appeals from refusals are also possible. Additionally, even if a trademark examiner believes a mark is registrable, third parties can oppose registration and can later challenge an issued registration.

Federal registrations can take anywhere from a matter of months to years to obtain, provided that the mark is registrable at all.  The timeline tends to be longer when there is a refusal (for instance, based on a prior conflicting registration or application) or an opposition to registration is lodged. State registrations may take only a matter of days to weeks, provided the mark is registrable.  Foreign registration timelines vary widely. 

Helpful Tips:

  • Although U.S. applicants can apply for registration themselves, subject to identity verification, legal advice from a knowledgeable attorney can help in obtaining the best and most appropriate coverage. Foreign trademark applicants are generally required to hire a licensed U.S. attorney.
  • Registrations of word marks in “standard characters” are usually the broadest because they do not include any limiting claim as to color, font, or other graphical elements in a mark that includes one or more words.  On the other hand, words that are unregistrable in standard characters alone can sometimes become registrable when distinctive graphical elements are added as part of a “composite” mark that includes both word(s) and graphical element(s). 
  • Consider the effect of expanded, reduced, or otherwise changed use of a mark over time. Such changes may may suggest pursuing one or more additional registrations. Some changes may also affect the ability to maintain an existing registration (e.g., due to a substantial changes to a graphical logo or ceasing use with certain goods/services).
  • State-level registration might be worthwhile if usage does not qualify for federal registration, such as purely local usage that is not part of interstate commerce.
  • Trademark registrations are territorial. A registration in one country will generally not provide exclusive rights in any other country. Consider foreign registration(s) if a mark is or will be used in multiple countries.
  • Registrations are generally even more important in other countries, where trademark rights are often determined on a first-to-register basis—sometimes without regard to priority of actual use.
    • For example, unrelated companies concurrently using similar brands in two different countries but later expanding to a common third country can sometimes lead to disputes.
    • As another example, outsourced manufacturing can also sometimes lead to trademark disputes. Export-only manufacturing in a foreign country of goods having trademarks applied to them may still be considered trademark use under foreign law (e.g., “OEM” manufacturing in China), even without any local commercial sales in that foreign country.
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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Categories
Copyrights Patents Q&A Trade Secrets Trademarks

What Are Typical IP Litigation Costs?

Intellectual property (IP) litigation tends to be relatively expensive compared to other types of lawsuits. There are many reasons for that. Though the complexity of the legal issues involved and a tendency for extensive pre-trial discovery and use of expert witnesses contribute to the total costs.

Below are graphs showing average costs through various stages of a an infringement or misappropriation lawsuit in the U.S. A summary graph compares average costs for “small” patent, copyright, trademark, and trade secret cases with less than $1,000,000 at risk. There are also individual graphs for patent, copyright, trademark, and trade secret cases with different amounts at risk, that is, with different amounts of potential damages for infringement or misappropriation (in U.S. dollars). All data comes from the 2021 AIPLA Report of the Economic Survey.

graph of average patent, trademark, copyright, and trade secret litigation costs by stage.  Initial Case Management: $57,000 (Patent), $24,000 (Copyright), $22,000 (Trademark), $60,000 (Trade Secret); Discovery, Motions (incl. Claim Const.): $369,000 (Patent), $161,000 (Copyright), $200,000 (Trademark), $367,000 (Trade Secret); Trial, + Any Appeal: $771,000 (Patent), $1,143,000 (Copyright), $415,000 (Trademark), $776,000 (Trade Secret).
Comparison of Average “Small” IP Lawsuit Costs by Type of Case and Stage
Clustered bar graph of average patent litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  
Initial Case Management: $57,000 	$122,000 	$421,000 	$361,000; Discovery, Motions (incl. Claim Const.): $369,000 	$1,033,000 	$1,621,000 	$3,556,000; Trial, + Any Appeal:	$771,000 	$1,910,000 	$3,728,000 	$5,568,000
Average Patent Litigation Costs
Clustered bar graph of average copyright litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  Initial Case Management: $24,000 	$77,000 	$136,000 	$292,000; Discovery, Motions: $161,000 	$882,000 	$1,125,000 	$2,501,000; Trial, + Any Appeal: $1,143,000 	$1,421,000 	$2,358,000 	$5,778,000
Average Copyright Litigation Costs
Clustered bar graph of average trademark litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  Initial Case Management: $22,000 	$48,000 	$83,000 	$194,000; Discovery, Motions: $200,000 	$514,000 	$837,000 	$1,718,000; Trial, + Any Appeal: $415,000 	$892,000 	$1,592,000 	$3,381,000
Average Trademark Litigation Costs
Clustered bar graph of average trade secret litigation cumulative costs, by stage of case, for cases with less than $1M, $1-10M, $10-25M, and >$25M at risk.  Initial Case Management: $60,000 	$102,000 	$171,000 	$469,000; Discovery, Motions: $367,000 	$977,000 	$1,708,000 	$2,112,000; Trial, + Any Appeal	$776,000 	$1,717,000 	$3,309,000 	$4,582,000
Average Trade Secret Litigation Costs

Additional reports on IP litigation are available from various sources, including PWC’s 2018 Patent Litigation Study and Lex Machina’s 2022 Patent Litigation Report (and infographic), as well as Lex Machina’s 2021 Copyright and Trademark Litigation Report (and trademark infographic and copyright infographic).

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Categories
Q&A Trademarks

What Should I Do Now That My Trademark is Registered?

Maintaining a U.S. trademark registration requires certain post-registration action. The following is a brief summary of the most important actions a registration should take or consider taking to maintain a trademark (or service mark) registration.

Continue Using the Mark

Continue using the mark in commerce in a consistent and non-generic manner.  Such usage should be prominent enough to be recognized as a distinctive mark by consumers.  Also ensure use is proper trademark usage, as an adjective that modifies a noun rather than as a noun or verb.  Abandoned marks are subject to cancellation.  For marks registered based solely on foreign priority, use in or with the USA must begin within three years of registration or be subject to cancellation or expungement. 

Use Registration Symbol

It is recommended to use the registration symbol ® with a mark in jurisdictions where registered, or alternatively the ™ symbol.  At least the first or most prominent appearance of the mark on a given article, advertisement, etc. should carry such a symbol.  Use of “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” is also permitted for U.S. federally registered marks as well. For U.S. federal rights, there is no legal requirement to use ® or ™ symbols or the like (that is, marking is not required) in order to preserve rights in a mark. However, U.S. federal law does say that failing to use the ® symbol or an equivalent phrase can limit monetary recovery for infringement of a registered mark.

Note that some jurisdictions prohibit the use of the ® symbol with an unregistered mark. So be careful about usage across multiple jurisdictions—the ™ symbol can be used instead with a mark that is unregistered in a given jurisdiction.

Maintain Control

If a mark is licensed for use by another, the mark owner must maintain control over the quality of the associated goods and services.  Any such license should be in writing and should include an explicit quality control provision. 

Retain Evidence of Use

It is recommended to periodically collect and retain in your records evidence of use of the registered mark in commerce in the U.S., particularly if not routinely documented in the ordinary course of business.  Such evidence can be useful as a specimen of use or to defend against a challenge to the registration by another entity.  If registration was filed on an intent-to-use (ITU) basis, or a foreign priority basis with an intent to use in the USA, it is further recommended to retain written records of that intent at the time of U.S. filing, such as detailed business plans. 

Evaluate Expanded or Changed Use Over Time

If your use of the mark has expanded to encompass new or different goods/services that are not identified in the registration, it may be worthwhile to pursue an additional registration to ensure full protection.  If use has ceased with some but not all of the goods/services identified in the registration, an amendment can be filed to delete only the unused goods/services.  If your branding has changed, such as a “refresh” that materially alters the commercial impression of a graphical logo or the wording of a mark, it is important to evaluate whether the that new usage supports the existing registration and whether a new application should be filed. 

Make Required Filings and Renew the Registration

If the owner’s name or address has changed, official records must be updated. 

Maintaining a U.S. federal registration also requires submission of a Declaration of Use, with supporting evidence, between the 5th & 6th years of registration.  Additionally, renewal is required between the 9th and 10th years of registration and at ten-year intervals after that, each such requiring a Declaration of Use and supporting evidence.  Madrid Protocol extensions to the USA further require that the underlying international registration be maintained. 

Beware of misleading, official-looking notices sent by private entities seeking payment of trademark-related fees as scams. Have a trusted trademark attorney review such notices if in doubt about whether they are a scam.

More Information

More information about maintaining trademark rights is available here.

More information about strengthening protection of a registered trademark is available here.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Categories
Q&A Trademarks

How Can I Strengthen Protection of a Trademark?

Simply establishing trademark (or service mark) rights through use and registering that mark is not the end of the story. Of course, registering a mark is the most important step that can be taken to protect a mark. But certain additional steps can be taken to further enhance or strengthen protection of a brand. The following are possible additional steps to consider in order to increase protection and exclusivity around a given mark in the United States.

Register Domain Name(s)

If not already done, consider registering domain names based upon or incorporating a mark to reduce the chances of cybersquatting.  Consider also registering domains with variations on your brand and mark, such as:

  • Typographical errors and misspellings
  • Phonetic equivalents and alternate spellings (such as British vs. American English)
  • Abbreviations and acronyms
  • Transliterations or translations into other languages
  • Added or modified punctuation (such as dashes)
  • Added or synonymously substituted generic, descriptive, or disparaging terms (such as geographic, corporate, or good/service terms)
  • Alternate top-level domains (TLDs) that may have meaning in connection with your mark, such as country-code TLDs (ccTLDs) or generic TLDs (gTLDs) with letters that make up part of your mark or that have generic, descriptive, or disparaging meaning when used in connection with your mark

Additionally, registered trademarks can optionally be recorded in the Trademark Clearinghouse. This provides benefits that can complement defensive registration of alternate domains. For instance, the trademark holder is notified of any new gTLD domain name registrations matching the recorded trademark.

Secure Social Media Handle(s) and Account/User Name(s)

If not already done, consider locking up social media handles and accounts based upon or incorporating the mark—and maybe also variations on that brand similar to those noted above for domain names

Record Registration with Customs

Consider recording a trademark registration with U.S. Customs and Border Protection (CBP).  Such a recordation allows CBP to help block importation of counterfeit and infringing goods into the USA.  However, CBP recordation requires having a valid registration on the Principal Register and further requires periodic renewal of the recordation.  It is also possible to provide product identification (Product ID) guides, product test kits/tools, and other online or in-person training to CBP to aid in the identification of suspect goods by customs field agents at ports of entry.  CBP recordation to block importation is a significant exception to the general rule that trademark owners have to police infringement themselves.

Record Registration with Online Marketplace Platforms

Certain online marketplaces allow trademark registrations to be recorded in their own private brand registries, such as Amazon.com’s Amazon Brand Registry and Wal-Mart’s Walmart Brand Portal.  The policies and procedures for such registries vary by platform.  They typically require having a granted registration on the Principal Register. Generally speaking, recording in such private registries can assist in blocking the appearance of counterfeit and infringing goods (sometimes automatically) and can also help reduce the risk that your own brand and associated goods will be blocked by the platform. 

Proactively Monitor the Commercial Market

Proactively monitor both online and offline markets for potentially problematic activities by others that implicate your mark.  Aside from CBP recordation (see above), the U.S. government will not monitor private trademark rights, which is left to the mark holder.  Monitoring can involve visiting stores, reviewing advertising media and publications, following competitor activities, and periodic online and/or trademark database searches.

For example, monitoring allows for:

  • Enforcement actions, including infringement lawsuits and demand or cease & desist letters
  • Oppositions, cancellations, and other challenges to TM registrations and applications by others
  • Domain name cybersquatting actions in court or through mandatory arbitration (UDRP, URS)
  • Takedown requests to online platforms (availability and procedures vary by platform)
Photo of Austen Zuege

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Categories
Q&A Trademarks

What Should Be Done to Maintain a Trademark?

Maintaining rights in a trademark (or service mark) requires ongoing action. Failure to continue using a mark, or use in an improper or insufficient manner, can potentially result in loss of a registration for the mark or even loss of all exclusive rights. The following guidance provides suggestions about satisfying use requirements and the proper way to use marks in business and commercial advertising/marketing contexts. The focus is on U.S. federal trademark law, but this guidance is also informative about similar requirements at the state-level and for international usage scenarios.

Continued Use Requirement

In order to maintain rights in a mark it must continue to be used in connection with bona fide (good faith) commercial offerings of the associated goods or services. This means the most basic rule of maintaining rights in a mark is: use it or lose it!

Use on goods occurs when two conditions are met. First, a mark must be placed on the goods or their containers, or on attached tags or labels, or displays associated with the goods. If the nature of the goods makes those kinds of placements impracticable, then use of the mark on documents associated with the goods or their sale qualify. Second, for federal trademark rights, use requires that the goods (bearing the mark) be sold or transported in “commerce”, meaning interstate or foreign commerce and not merely locally. Mere advertising is generally insufficient as evidence of use of a mark on goods.

Use in connection with services occurs when a mark is used or displayed in the sale or advertising of services and those services are rendered in “commerce”, or the services are rendered in more than one state or in the United States and a foreign country. An important distinction is that use of mark in advertising may be sufficient to show use in connection with services, even though advertising alone is generally insufficient to show use with goods.

Use of the trademark by an authorized licensee can be sufficient to maintain a trademark registration as long as the owner maintains control over the quality of the goods or services. Failure to maintain quality control over licensed use can result in loss of rights. Preferably, a written license agreement with a quality control provision should be executed if licensing is desired.

Non-use may make a registration subject to cancellation or the like. Moreover, non-use without an intention to resume use will result in abandonment (loss) of rights.

Excusable non-use may allow an unused registration to still be maintained. However, the requirements to establish excusable non-use are rather strict and generally require non-use to be the result of special circumstances beyond the registrant’s control.

Marks registered in the U.S. based exclusively on a foreign priority registration are subject to cancellation or expungement if they have not been used in or with the U.S. after three (3) years of registration. This is an exception to the general rule that use in commerce is required to obtain a federal registration in the first place.

Proper Form of Use

In order to maintain rights in a mark, use should take a proper form. Improper usage may weaken rights or even result in loss of rights. An explanation of proper usage follows. This includes (1) using a mark as an adjective, (2) using a mark consistently, and (3) optionally using trademark identification/status symbols. More guidance is available from the International Trademark Association here and here.

Use Mark As an Adjective

Trademarks (and service marks) function to identify the source of goods or services. To do so, the distinctiveness of the mark must be maintained. A mark that becomes the generic name for the goods or services themselves will lose trademark protection. Therefore, a mark should always be used as an adjective that modifies a noun and never as a noun or as a verb. A helpful approach is to always couple use of a mark with an appropriate generic term immediately following the mark. For instance, “EXAMPLE widgets” represents proper use of the mark EXAMPLE together with the generic term widgets.

Another helpful exercise to determine if usage is proper is to insert the word “brand” immediately after the mark (along with a generic term). If the wording still reads appropriately, in English, then usage is likely to be proper. For instance, “Buy EXAMPLE brand widgets” still reads appropriately. But “Please EXAMPLE brand me those things” reads awkwardly because the mark is being improperly used as a verb. Beyond just a theoretical exercise, the word “brand” can also be inserted into actual commercial usage this same way.

Marks should also be used prominently. This means the mark should be used in such a way that consumers would understand that it functions as a trademark (or service) mark and identifies the source of the goods or services. Consider where the mark is placed in relation to other text, graphics, or the like. The mark should grab the attention of consumers and not be buried in other text, too small to see, etc.

Although not legally required, a helpful technique is to distinguish the mark from nearby text using all capital letters, boldface or italic font, underlining, quotation marks, color, or other stylized format. A trademark symbol—discussed below—can also be used to distinguish the mark from surrounding text. These aspects of the appearance and presentation of the mark help to convey a commercial impression of the mark as indicating the source goods or services rather than in a generic or merely descriptive way.

Use Mark Consistently

A mark is a specific indicator. So usage must be consistent. If a logo is changed or word(s) are modified that materially alter the mark (so as to no longer create essentially the same commercial impression) then it is possible that rights in the mark could be challenged or lost, or renewal of a registration refused. Spelling (and punctuation, if any) should always be the same. A “refresh” of branding can lead to loss of rights in previously-used marks when it materially alters the commercial impression given by the mark.

Also, do not pluralize or singularize a mark by adding or removing an “s”, and do not use a mark in a possessive form (unless the mark itself is possessive or a non-trademark use as a company name or trade name is involved). For example, LEVI’S® for jeans should not be changed to “LEVI” because the mark includes the possessive “‘S”. Such changes do not reflect proper usage.

Use Trademark Identification/Status Symbols

It is recommended—but not legally required in the U.S. to maintain rights—to include an appropriate trademark symbol with use of a mark.

Use of the trademark registration symbol ® immediately after a mark is permitted and encouraged for any registered mark, though it must not be used for an unregistered mark. For instance, a registered mark can be identified as “EXAMPLE® widgets.”

Sometimes the term “Registered Trademark” or its translation is used, or the phrases “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.,” but such terms are often less convenient than a symbol. An additional option is the use of a footnote or legend that indicates that the mark is a registered trademark, identifies the registered owner by name, and/or indicates that use of the mark is under license.

The symbols ™ (for trademarks used with goods) or SM (for service marks used with services) can be used even with unregistered marks. For instance, an unregistered or registered trademark can be identified as “EXAMPLE™ widgets.” If there is doubt, or a given use of a mark encompasses both goods and services, use of the ™ symbol might be preferred because it is more widely recognizable.

An appropriate trademark symbol should be used with the first and/or the most prominent use of the mark on the goods, their packaging, or given advertising materials (such as a single web page or single print ad). It is not necessary to continually use trademark symbols with each and every instance of the mark on the same item. On the other hand, there is no legal penalty for unnecessary use of trademark symbols. Though over-use of trademark symbols may simply be less aesthetically pleasing in some circumstances.

Failing to use a trademark symbol does not result in the loss of U.S. federal trademark rights. However, such a failure may limit recovery of monetary damages. When a mark is federally registered in the U.S., either use of a symbol (or accepted alternative) or actual notice to an infringer is required in order to recover profits and damages for infringement. Use of the trademark registration symbol ® (or the phrase “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.”) along with a registered mark provides acceptable notice of federal registration to all potential infringers to allow recovery of monetary damages.

Retain Evidence of Use

The requirement that a mark must be used to maintain rights gives rise to a need to keep and retain evidence of use of that mark with the relevant goods and/or services. If someone ever seeks to challenge the mark for alleged non-use, or if a registration is audited, such evidence can be important. For some marks subject to extensive use, evidence of use may be plentiful and easily obtained. However, for other marks, usage might be less widespread. For example, some marks might be used with a seasonal service business such that evidence of use is mostly available only at certain times of the year.

The first important point is that evidence of use should be maintained for all goods and services in which rights to the mark are claimed. For a registration, this means all of the explicitly-identified goods and services. Evidence of use with only some but not all of the identified goods or services will usually be insufficient (at least with respect to those goods and services for which evidence of use is lacking).

The sort of evidence retained should also show proper usage of the mark. Proper use is discussed above. It may be unhelpful to retain evidence that shows improper usage in a generic or merely descriptive sense rather than to identify the source of goods or services.

Also, evidence of use should be maintained for each jurisdiction where rights in a mark are claimed. Evidence of use in one country is usually insufficient to show use in a different country, for instance. If you wish to maintain rights to an international portfolio of marks, be sure to retain evidence in each jurisdiction of use.

Lastly, if a registration was initially filed based on a claim of an intent to use the mark (including based on foreign priority without actual use in the USA), then evidence of that intent at the time of filing should be retained too. This sort of evidence can include written business plans or the like.

Renew Your Registration

A registration of a mark must periodically be renewed to stay in effect. Registrations can usually be renewed indefinitely so long as there is continued use. The U.S. requires renewals at ten-year intervals, plus a one-time certification of use after the first five years of registration. All renewals and declarations of use to maintain a registration require supporting evidence of use.

In the U.S., “common law” rights in a mark may continue to exist even if a registration in that mark is abandoned but commercial use of the mark continues. However, that may not be the case in other countries. If a registered mark is still in use, it is usually worthwhile to renew the registration.

Extensions of an international registration under the Madrid Protocol require that the underlying international registration be maintained too. This means that both the U.S. extension registration and the international registration must be renewed in order to maintain registration in the USA.

However, BEWARE of misleading, official-looking notices sent by private entities regarding a trademark registration requesting payment of fees. These are often scams. See examples of such misleading scam communications here (USPTO-related) and here (WIPO/Madrid-related).

Updating and Amending a Registration

If the use of a mark changes, or the ownership of the mark changes (including a merger or change of name or the owner), then a registration should be updated or amended. The owner and any legal representative also have a duty to maintain current and accurate addresses in official records. This allows for prompt receipt of any official post-registration correspondence, including notifications of any challenges to the registration.

Amendments to the scope of the registration may be possible, and even required. Selected goods and services can be deleted from a registration while others remain, if the scope of use is reduced. But expansion of use generally requires filing a new application—existing registrations cannot be expanded to add new identifications of goods and services. Amendments to the depiction of the mark itself are rarely permissible.

Monitor the Marketplace

It is helpful to proactively monitor the marketplace for potentially problematic activities by others. A few instances of infringement or improper usage of a mark will generally not result in loss of trademark rights in the USA. However, the widespread presence of infringing or simply improper uses might eventually lead to genericide, that is, the mark becoming generic, which would result in the loss of exclusive rights. Laches or other equitable doctrines might also bar certain forms of relief against an infringer if a lawsuit is inexcusably delayed—though this is very context-specific.

Additionally, the existence of similar marks and registrations by others can have the effect of weakening the scope of exclusive rights. So even if third party usage does not completely destroy rights in a mark those third party uses may still weaken it.

In theory, the existence of a registration should automatically block a later registration by someone else that is likely to cause confusion. That is the point of regular examination procedures for all new trademark applications. But examination is not always perfect. There are opportunities to challenge the applications and registrations of others. But the opportunities to do so decrease over time. In any event, potentially problematic uses by others must first be identified before they can be challenged.

When it comes to infringement, mark owners must police their own rights. That is, in most situations, the government will not police infringement for you. It is generally up to the brand owner to identify infringement and pursue legal action where appropriate and desired.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Categories
Q&A Trademarks

How Can a Brand Be Protected as a Trademark?

Trademarks (and service marks) serve to identify a particular source of a product or service. The purpose of trademark law is tied to that source-identifying function. Trademark rights arise through use. Registration is optional. What matters most in terms of a brand eligibility for trademark protection is its strength or distinctiveness, together with any any prior conflicting uses of identical or similar brands already taken by others.

Generally, a brand can be protected under trademark law if it is distinctive enough to serve such a source-identifying function—and it is actually used for that purpose. There is a continuum of kinds of marks that separates distinctive ones capable of exclusive rights and ones that are not distinctive and do not entitle the user to any exclusive rights. The possibility of exclusive trademark rights depends first of all upon selecting a mark that is distinctive enough. Doing that properly requires some understanding of the strength continuum of mark distinctiveness.

Continuum of trademark strength/distinctiveness
Pyramid Illustration of the Strength Continuum of Marks

Brands and marks are categorized along the following range or continuum of increasing conceptual distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. A mark that is fanciful, arbitrary, or suggestive is considered to be inherently distinctive and automatically is eligible for federal trademark protection. Long ago these were referred to as technical trademarks. While these categories are well-established now, there may be dispute as to where any given mark falls on this continuum. Changes in how a mark is used over time can also complicate these determinations.

A fanciful mark is a non-dictionary word concocted by the user. These are sometimes referred to a coined marks. Some examples are EXXON® for petroleum and petroleum products, and many pharmaceutical brands that are completely made-up names.

An arbitrary mark is a known word used in an unexpected or uncommon way. An example is APPLE® for computers.

A suggestive mark is one for which a consumer must use imagination or any type of multistage reasoning to understand the mark’s significance. A suggestive mark does not directly describe features of the product or service but instead suggests them. Example are ESKIMO PIE® for frozen confections and KITCHENAID® for small household devices and utensils.

Descriptive terms define qualities or characteristics of a product in a straightforward way that requires no exercise of the imagination to be understood. Merely descriptive terms are not entitled to trademark protection. Only marks that have acquired secondary meaning through extensive and substantially exclusive use over a sufficient period of time attain acquired distinctiveness to potentially be protectable as trademarks. Simply being the first to use a descriptive term is not enough. An example of a merely descriptive term is “cotton” for t-shirts made at least partly from cotton, or the term “large” to describe the size of the t-shirt. An example of a descriptive mark that has acquired secondary meaning in the USA is AMERICAN AIRLINES® for air transport of passengers and freight.

Generic terms are what the public understands to be the common names of associated products or services. Another way of stating this definition is that a generic term denotes a category (genus) of goods/services of which a particular brand is one species. A generic term does not signal any particular source and can never serve as a protectable mark under trademark law. Usage and advertising can never make a generic term protectable. Some examples of generic terms are “breakfast cereal” or “television” for those same goods. Some terms that were at one time protectable can also become generic, such as “escalator” for moving walkways.

The distinctiveness of a mark depends on how it is being used. The same mark might fall in different distinctiveness categories in different contexts. For example, the mark APPLE® may be arbitrary when used to identify a source of computers but “apple” is generic when applied to the fruit widely known by that name.

When it comes to trade dress, a form of trademark protection, functional aspects are not protectable. In this sense, functional aspects of things themselves are treated like generic terms—alone they are ineligible for trademark protections. An example of a functional feature is the shape of a key that allows it to fit into a corresponding lock.

A “trade name” is somewhat different from a trademark. A trade name is the formal legal name of a corporate entity. For instance, “Acme, Inc.” a hypothetical corporation registered in a particular U.S. state, is a trade name. While it is possible that such a company sells ACME or ACME, INC. brand widgets, it might instead sell EXAMPLE brand widgets. Trade name and trademark usage may not be the same. There tend to be different (and less stringent) legal standards applied to securing trade names than to securing trademark rights. A common mistake is to believe that forming a corporation or registering an assumed name with a state—alone—creates trademark rights, when trademark rights require both use of the mark (as a mark) and a sufficient level of distinctiveness.

Also keep in mind that registering an Internet domain name does not by itself establish any trademark rights. While the availability of a suitable domain name is often an important consideration when selecting and adopting a brand, domains can be registered without regard for the use and distinctiveness requirements that apply to trademarks. Moreover, using a domain URL merely as an Internet address is not the same as trademark use as a source identifier.

When selecting a mark, it is common for businesses to gravitate toward conceptually weak marks as brands because they “sell themselves” and are immediately recognized by consumers for what those marks represent. So there is less investment required at the outset to establish consumer recognition of the brand. But some things are too weak to even function as marks and will not be protectable at all. Selecting a merely descriptive term as a brand will not allow for any exclusive rights unless and until secondary meaning (acquired distinctiveness) is achieved over a significant period of time. But even descriptive marks that have acquired distinctiveness are still subject to descriptive fair use defenses that limit the scope of exclusivity. And a generic term is never entitled to exclusivity, regardless of usage or advertising effort. Anyone who wants to have exclusive rights in a brand needs to select a mark that is distinctive enough to merit trademark protection.

Also, trademark strength can actually be assessed in different ways, to refer to either protectability or scope of exclusivity. There is inherent or conceptual strength, which categorizes how a mark naturally is or is not capable of serving as a source identifier. That is about protectability. But there is also commercial or marketplace strength, which refers to the level of exclusive use as a brand by a particular entity (secondary meaning). That is generally about the scope of exclusive rights. For instance, a suggestive mark may be conceptually/inherently strong (distinctive) enough to be protectable, but if there are many other entities using similar marks due to similar suggestive connotations then the commercial strength and degree (scope) of exclusivity in the coexisting marks is lessened. Likewise, a fanciful/coined term may be conceptually strong as a mark but may still be commercially weak if its usage has been limited in duration and there has been negligible advertising.

Lastly, recognize as well that many marks are already taken by others, which limits the universe of marks freely available for another business’ use at the time of adoption.   It is not unusual for a first-choice mark (and second-choice…) to be already taken. Conducting a legal clearance when adopting a brand is recommended to avoid conflicts with someone else’s preexisting trademark rights.

Photo of Austen Zuege

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.