TRADEMARK

TRADEMARK REGISTRATION IN USPTO

Trademark is a distinct identity used by an individual or a business entity. It indicates the source and origin of goods. This distinct identity helps the consumers to identify that the products or services with which the trademark appears originate from an exclusive source, and to differentiate its products or services from those of other entities. The consumers today classify their tastes and preferences on the basis of brands and brand names. This brand name is what gives the manufacturers an edge over their competitors. It is thus very crucial for any entity today to register the brand name so that their unique identity is legally protected. It is for one of the main reasons for rise in the applications for trademark registrations as the people have accepted the fact that a registered trademark would ensure a greater protection.

Trademark Search

To adopt a trademark similar to another trademark would only give rise to claims for infringement and litigation[1]. It is for this very reason that the first step in trademark registration is to have a comprehensive trademark search. It is done to ensure that the same or similar mark is not already in use by a third party. USPTO is the federal agency entrusted with the task of Trademark and Service mark registration[2]. A thorough search of USPTO is not in itself sufficient to ensure and avoid opposition or future litigation. Before filing an application for trademark registration it is better to search the database of the agencies stated below:

1.      Search for federal trademarks at USPTO

2.      Common law search

3.      State search

There are enough precedents now which depict that whenever someone has avoided this essential step it has only caused legal trouble and nothing else. In International Star Class Yacht Racing Ass'n v. Tommy Hilfiger[3], Tommy Hilfiger had no other option but to fight a five year long court battle for the mark ‘Star Class’, as his “knock out” search for the mark in international class 25 for apparels, did not uncover the Yacht Association’s prior common law use of the same mark. The company had no other option but to face a long legal battle with the Association due to its failure to conduct a full trademark search. Given that lot of value is associated with trademark; it is prudent to get a thorough trademark search done prior to applying for a trademark.

Application[4]

Prior to preparing the application, the determination of trademark class under which the application is to be filed is another important aspect. The goods and services are classified into different classes. As trademark is not only a name but it also acts as a representative of what is being done with the mark. All goods or services are categorized within International Classes[5]; goods are classified from classes IC 1-34, while services are in IC 35-45. In 1973 USPTO adopted the international classification system as set forth by the Nice Agreement[6]. As the correct and apt inclusion of all the necessary trademark classes is an essential pre requisite for comprehensive protection of the trademark. The trademark applications are drafted and submitted to the Trademark Office, primarily to get the mark registered and to get the exclusive right to use the trademark for a particular period of time.

Examination[7]

When the application is submitted before USPTO a filing date will be assigned by the office. The filing date being the date the application was received. If the application has met with the entire filing requirements then a serial number is assigned to the application.  After some time the application is reviewed by an examiner at USPTO and determine with regard to whether the mark can be registered or not. If the examiner arrives at a finding that the mark cannot be registered, then a letter referred to as “Office Action” will be issued and the same would either state the grounds for refusal or would state the required corrections. The time within which a response is to be provided for the office action is within six months, if no response is given in that time period then the application would be abandoned. If the response does not adequately address all the issues raised in the office action then the Examiner will issue a final refusal in which case the only relief is to approach the Trademark Trial and Appeal Board for relief.

Publication of opposition[8]

After the application is cleared by the Examiner, the mark would be then sent to the official gazette of USPTO. USPTO will also provide a notice of publication which would indicate the date of publication. When the mark is published in the Official Gazette, any party who is of the belief that he would incur substantial damage by registration of such a mark has the right to file an opposition. Such an opposition to the registration of the mark can be filed 30 days from the date of publication to file an opposition to registration. If no opposition is filed within the time limit then the application is taken to the next stage.

Registration [9]

If the mark is being used in commerce before the application is filed then USPTO would issue a registration certificate 3 months after the mark was published provided there was no opposition for the same. If the application for trademark registration is intent to use application then USPTO will issue a Notice of Allowance about three months after the mark was published provided no opposition was filed in this regard. After the issuance of this notice within six months you have to either start using the mark and notify USPTO in this regard or request for a six-month extension or else the application would be abandoned. Only after USPTO has been notified with regard to the trademark being in use would the USPTO issue a registration certificate in this regard.

It is evident that trademark registration if done at the correct time would ensure greater protection for the mark.

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[1] Corsearch, Inc. v. Thomson & Thomson, 792 F. Supp. 305, 307 (S.D.N.Y. 1992)

[2] 35 U.S.C. § 1051

[3] 959 F. Supp. 623 (S.D.N.Y. 1997)

[4] http://www.uspto.gov/trademarks/index.jsp , www.uspto.gov/trademarks/law/tmlaw.pdf

[5] http://www.wipo.int/classifications/en/

[6] http://www.uspto.gov/trademarks/teas/reg_maintain.jsp

[7] Supra note 4

[8] Supra Note 4

[9] Supra Note 4