Lately, I have been getting some requests for information regarding Intellectual Property, so I thought I would create a little something about trademarks.
Disclaimer: The following information does NOT constitute legal advice and is only for general educational purposes. Each situation is different and specific legal issues usually require additional research and investigation, so do not rely on this article to address a particular legal issue; use this as a starting point to gain a general understanding. This article, although educational in purpose and substance, nevertheless, might be deemed attorney advertising, and prior results do not guarantee future success.
What’s a trademark? A trademark usually is a word, phrase, symbol or design or combination thereof that identifies a source of goods (or services), and differentiates that source from other sources. Trademarks can even be sounds or smells. The ancient Romans used a form of trademarks to mark their goods, and especially their construction, so that people would know the source - particularly if the product or construction failed.
Copyright v. Patent v. Trademark: So, what’s the difference between these? A copyright is a protection of an expression of an idea (a play, a musical, a commercial, a book, a movie, a website), fixed in a tangible medium, that provides certain rights to the owner of the copyright (I’ll cover those some other time); it does not protect the idea itself. A patent gives the owner of a novel non-obvious invention or scientific process that is beneficial to society, for a period of time, the right to exclude others from making, using or selling their invention. A trademark, as above, essentially is the logo or brand name that indicates the source of a product or service.
So, for instance, if an inventor designs a new computer, they would patent the computer, copyright the advertisement for the computer, and trademark their cool logo on the advertisement.
Trademark v. Service Mark: Technically, a trademark is used for tangible goods and a service mark is used for the provision of services. If you make handbags you should seek a trademark. If you provide leather repair services, you will need to obtain a service mark. Generally speaking, government offices and most people use the term “trademark” generically to refer to either or both simultaneously (for example you sell handbags and repair them), and I will too, except where necessary to distinguish them.
II. Federal Trademark Law
History of the Lanham Act: In 1946, Congress passed the Lanham Act with President Truman’s signature to regulate trademarks. This was not the first attempt to introduce laws regulating trademarks, but was the most comprehensive federal effort to codify a hodgepodge of state laws and common law practices. The first federal trademark legislation was passed by Congress in 1870 and amended in 1876. In 1879 the U.S. Supreme Court found that legislation unconstitutional.
Two subsequent attempts at federal trademark legislation provided little protection for the rights of trademark users. The movement for stronger trademark legislation began in the 1920s, and was championed in the 1930s by Rep. Fritz Lanham, of Texas. In 1946 Congress passed the Lanham Act, titling it after its chief proponent.
The United States Patent Trademark Office (USPTO): Under federal law, there is a United States agency that handles federal trademarks, called the USPTO. Yes, it also handles patents. However, many (if not all) states have their own office for trademarks as well. We’ll talk about the differences between state and federal trademark registration below.
Federal Trademark Protection: Federal Registration has eight benefits for the owner of the mark including: (1) legal presumption of ownership of mark (2) legal presumption of exclusive right to use mark; State registration only gives a person rights within the border of the state, whereas federal registration is across the country (3) public is put on notice of mark ownership (4) the mark is listed in USPTO database (USPTO searches this mark themselves); also
(5) the owner can record their mark with the US Customs & Border Protection (6) the owner has the right to bring legal action concerning the mark in federal court even if you couldn’t otherwise for reasons of lack of diversity or the amount in controversy (7) the owner can use registration for foreign filing (8) the owner can use the “R in a circle” which only federal registration provides.
Some of the these benefits are obvious, but the “presumptions,” in plain English, basically mean that if someone uses your federally registered mark, or one confusingly similar, or if they challenge it, you will be *presumed* to be the correct owner and have superior rights, meaning they will have an uphill battle to prove you don’t deserve it.
Federal Drawbacks: Federal registration usually takes longer, is more complicated, and costs more than State registration; also, your federally registered mark must be used in *interstate* commerce. What does that mean? That question can get extremely complicated.
Say you provide leather repair services in the heart of New York State. Are your customers locals? Then you probably do not qualify for a federal trademark because it’s not interstate commerce; i.e., you are only providing services *within* New York State, not to other states (or foreign countries and territories) as well.
However, suppose, you advertise in other states (not just a regular website, but really spend money specifically targeted to customers in New Jersey or Connecticut. Then you *might* be engaging in interstate commerce. Also, some businesses like restaurants and gas stations, especially if located on or very near interstate highways might be considered “interstate” businesses, even if technically they only render services within one state.
III. State Registration
State Protection: One nice thing about State trademark protection is that the process likely will be a bit easier and cheaper. However, State registration only will provide local protection within the boundaries of the state.
Also, your State trademark will not show up in the federal registry of trademarks, meaning if someone applies for a new federal trademark identical to yours, they will not see yours (and neither will the USPTO examining attorney) and they might be entitled to register their mark, and *you* will have the burden of challenging them, rather than the other way around.
New York trademark registration entitles the owner of such a mark to enjoin the use of that mark by an infringing party, as well as disgorgement of the infringers profits, and statutory damages, including potentially treble damages for willful violation.
IV. Common Law Rights
I Don’t Feel Like Registering - Is That A Problem? Yes and no. Whenever you use your trademark, you automatically obtain rights in it (called “common law rights”). This means if you have been using your brand name, logo, etc., even without formal State or federal registration, you still have rights. However, you lack many of the benefits above.
One way to better secure those common law rights are to attach “TM” or “SM” to your trademark or service mark. This lets other people know you are asserting rights in the logo, etc. and intend to use the courts the enforce it if they use it without your permission.
At first blush, common law rights look weak - for instance, you don’t have a presumption that you own your mark or started using it first against other users, and you can only use federal courts if you and the infringer are in different states and the amount in controversy is over $75,000. However, you still can bring a lawsuit for unfair competition, which essentially what is a trademark infringement suit.
Moreover, you’re not gonna believe this, but guess what? In some cases, common law trademarks have won out over federally registered trademarks (!!) - even so called “incontestable” ones. Why? The other person typically used it first and established “street cred” with their brand before you did, even if you registered it later on and they never did. Those common law rights often are restricted to the geographic area in which they provide their goods or services. Be forewarned though, if they provide goods (or services) nationally, they might foreclose you from using your own mark, even after you registered it!
V. Let’s Do This
So, you decided to go ahead and register with the USPTO. The initial part is easy enough. You fill out an application on the Trademark Electronic Application System (TEAS), which costs about $275 per International Class. It can get a bit tricky because you need to accurately describe your goods and services and if you screw that up you might have to start from scratch, paying the filing fee(s) all over again.
An Examining Attorney will look at the application and decide if you have issues to address; if you do, you will receive an “Office Action Letter” that will explain to you in detail the error of your ways. Common errors are submitting a mark that is merely “descriptive” or is confusing similar to someone else’s mark.
By “descriptive” I mean the USPTO usually sees marks (from strongest to weakest) as arbitrary (“apple” for computers; apples don't have anything to do with computers), fanciful (a made up word), suggestive (“hot and crusty”), descriptive (“creamy yogurt”) or generic (“aspirin, cars, escalators”). Typically, proposed generic and descriptive trademarks are refused.
If you can address those concerns successfully, then the USPTO will publish your mark in the Official Gazette, the USTPO’s weekly publication. Others have a month to object to your registration. If no one objects, about a month later you receive “registration” of your trademark, congratulations!
VI. A Tad Oversimplified
I should warn you I grossly over simplified that process. Theoretically, if you are using your trademark in commerce, and no one objects and you have no serious issues, it really can be that easy. However, if you merely “intend to use” your mark (huh?), then the process gets more complicated and more expensive, and you will have more filings of additional paperwork. Also, you could have several go-arounds with the examining attorney until you figure out how to get your mark approved.
They cannot provide you with legal advice, but they can be helpful in explaining what you need to do. Remember, they aren’t there to make your life difficult but to do their best to ensure you are not infringing on anyone else or trademarking something so generic it would be unfair to all other people (like calling bananas “Banana Brand Bananas"). You have every right to use that name for your business - I just doubt you could get the name trademarked (you might get the *design* of the name trademarked - like if the words were spelled out with bright bananas, especially if the bananas were not yellow).
People could object and that might require an appeal to the Trademark Trial and Appeal Board. A whole bunch of stuff could happen to you on your way to your happy place. Also, even if you “register” your mark, five years later and every ten years after that, you will be required to file paperwork to maintain your trademark.
VII. Time Line
What can you expect? Generally, it could take 1-2 years to register your mark. Approximately three months after you register the USTPO will examine the application. Then about a month later, the “Examining Attorney” will decide whether you’re good to go, or if there are problems. Assuming, no issues, the mark will be published within three months. Others have a month to object. If no objections come forth, then the trademark is registered about a month later. Any kind of snags along the way typically can add months to the application process.
Registering a trademark is a powerful tool that will build your company’s intangible “goodwill” and strengthen your brand. However, it is a legal process, and can cost a bit of money for filing fees, and may (or may not) require professional legal assistance. Even many lawyers can err in attempting to describe your provision of goods and services in an accurate manner, so please, if you have help (whether it’s a lawyer or a professional incorporation service), make sure you clearly communicate *exactly* what you are trying to trademark, and what you do or sell, and to whom and where you do it. Best of luck and I can’t wait to see what you produce or provide!
Some citations have hyperlinks, try them!
 USPTO, Basic Facts About Trademarks, p.1.
 USPTO, TMIN, What Every Business Show Know About Trademarks.
 USPTO, TMIN, Basics Episode 01.
 http://smallbusiness.findlaw.com/intellectual-property/what-is-copyright.html (The dictionary defines copyright as "a person's exclusive right to reproduce, publish, or sell his or her original work of authorship (as a literary, musical, dramatic, artistic, or architectural work)."; however, it’s the expression of the ideas, not the ideas themselves, that are protected. Also, see 17 USC 102.
 Lanham Act, click here.
 Lanhan Act, click here.
 15 USC §1511.
 https://en.wikipedia.org/wiki/History_of_United_States_patent_law (patents originally were handled by the US Secretary of State, then the Department of State, then the Department of the Interior, and currently by the US Commerce Department); in 1975, the office was renamed to reflect the handling of trademarks as well.
 Diversity jurisdiction typically requires parties to be in different states; the amount of controversy requires claims more than $75,000. https://en.wikipedia.org/wiki/Diversity_jurisdiction.
 UPSTO, Basic Facts About Trademarks, p. 11.
 Currently, in NYS, it’s only $50 per “International Class” whereas the federal fees are $275.
 NYS General Business Law, §360(m).
 15 USC 1125(a).
 Incontestable Trademarks are in use for five years and aren’t challenged. 15 USC 1065. It is important to note that “incontestability” merely provides “conclusive” evidence of the owner’s right to use the trademark; that can be overcome, even by common law rights, particularly in smaller markets.
 https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule. Actually, there are variations of the filing fee, so be warned.
 The "class" refers to the "international" class number assigned to the goods/services. Note: The number of "U.S." classes is irrelevant, except for some old U.S. registrations.
 USPTO, Trademark Basics, p.5-7.
 “Intent to Use” basically means you have a bona fide intent to use your trademark in the near future (actually up to three years from the time of filing depending on the circumstances) even if you aren’t ready. Why? Suppose you will manufacture cars and you know what you want your logo to be, and you want to raise money with the logo and protect the logo, but you haven’t even built the factory yet. Then “intent to use” is for you.
 USPTO, Basic Facts About Trademarks, p.1.