Protect Your Brand with a Federal Trademark

At Spiegel & Utrera, P.A., we recommend Internet businesses registering their names should generally refrain from registering their web extension, such as .com or .net with their name, unless they're planning to register the mark both with and without the web extension. Obtaining a trademark without the domain extension will help prevent other businesses from registering the same name by just adding a different extension.

The price is right, but the main reason is that intellectual property is a specialized field where an experienced attorney from Spiegel & Utrera, P.A. can assist you in avoiding Federal Trademark and Federal Servicemark registration pitfalls. Filing a Federal Trademark or Federal Servicemark yourself or using a document preparation service may look cheaper, but in the long run you may very well end up with needless delays and added costs. Although Spiegel & Utrera, P.A.'s filing of your Federal Trademark or Federal Servicemark application does not include representation if the application is rejected or requires amendment, if legal issues do arise, Spiegel & Utrera, P.A. stands ready to represent you in completing the registration process.

The Mark must be filed under the owner's name. The owner must provide the goods or services under the Federal Trademark or Federal Servicemark. An owner may be an individual or business entity such as a corporation, limited liability company or partnership. If the owner is a business entity, the type of entity and nationality must be specified. The application must be based on actual use or an intent-to-use the Mark in commerce. An actual use application requires a description of the products or the advertising or promotional materials the Mark has been placed upon. An intent-to-use application requires a statement in good faith that the owner intends to use the Mark in commerce, but such Mark will not be registered until it is actually used. A drawing of the Mark and a specimen of the Mark must be submitted when the application is based on actual use.

The registration process may typically take around six to eight months to wrap up, although it can last longer if legal issues arise. After filing an application, the U.S. Government will assign a serial number and mail a receipt about two months after filing. The U.S. Government will examine the application and publish the Mark. Other parties believing they have a superior or claim to the Mark will have thirty days from the publication date to object to the Mark.

It is common that the U.S. Government may issue an office action letter. Office actions are letters from the U.S. Government that set forth the legal status of a Federal Trademark application. They are issued by a Federal Trademark examining attorney who is assigned to each application and usually contain administrative or substantive issues which need to be addressed.

There are several types of office actions: examiner's amendments, priority actions, non-final office actions, final office actions, and suspension letters. A priority action requires a response within 6 months or the application will be declared abandoned. A non-final office action is usually the first phase of the examination process. A final office action finalizes outstanding issues. A suspension letter suspends action on an application while waiting for related matters to be resolved. Spiegel & Utrera, P.A. can assist you with the correct response.

During the examination of a pending Federal Trademark application as well as after a Federal Trademark has registered, the owner of a Federal Trademark may change for various reasons. Some Federal Trademark or Servicemark owners transfer their ownership of a Mark to another entity, which is called an assignment. In addition, some Federal Trademark owners change their names while retaining ownership. In both instances, the U.S. Government advises Federal Trademark owners to record the ownership transfers.

Once you have started the registration process, we recommend that you place the Trademark symbol "™" next to the Mark. Once the Federal Trademark process is complete and the U.S. Government issues the registration number to you, the "®" symbol may be used instead.

Many clients assume incorporating or forming their business entity with the Secretary of State will automatically protect their business name—it does not. Incorporation in and of itself is not a valid defense to trade name, Trademark or Servicemark infringement, unfair competition or anti-dilution claims. You must take a positive step and register the Mark.

Let's say that you've started a corporation, Mystic Green Candle Enterprises Inc., and you've got a great idea for a product, the "Mystic Green Candle." Just because you started Mystic Green Candle Enterprises Inc. would not stop someone else from marketing the Mystic Green Candle. In order to properly protect your idea, you would need to register it. Registering at the state level is cheaper, but it affords a lower level of protection than a Federal Trademark or Federal Servicemark, which would protect your Trademark or Servicemark throughout the United States.

Trademarks and Servicemarks are generally divided into two categories of strong Marks: fanciful and arbitrary. Fanciful Marks are invented words, symbols or logos. Exxon and Xerox are fanciful Marks. Arbitrary Marks are words that have meaning, but the Marks are not used in connection with meaning. "Fox" photos, "Apple" records and "Gateway" computers are examples of arbitrary Marks. There are also Suggestive Marks such as "Coppertone" suntan oil and "Skinvisible" transparent medical adhesive tape.

Descriptive Marks are the weakest type of Mark, where the word or words are merely descriptive of the product or service. Such Descriptive Marks cannot be used as a Mark at all, unless it is shown that the phrase has, over time, acquired "secondary meaning." Descriptive Marks can be registered and protected if used for five years or more. Finally, generic words may never serve as Trademarks.

Failure to register a Mark that should be registered denies a company substantial benefits. These include nationwide protection from the time the registration issues, a presumption of validity in infringement litigation, and permission to use the "®" symbol. A registration may become "incontestable" after five years, which means that the validity of the Mark is immune from challenge except on a limited number of grounds.

The entrepreneur should select three Marks from the fanciful or arbitrary categories and subject them to Trademark searches. If a Mark creates a "likelihood of confusion" with a Mark previously used, it may be enjoined in an infringement action. A proper, full common law Trademark search includes trade directories, business name lists, and information databases. We strongly recommend you conduct a Trademark or Servicemark Search when proceeding with your registration.