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TRADEMARKS

Trademarks are used to distinguish one's goods or services over another. Trademarks are generally affixed or attached to the goods or containers in which they are sold. Service marks are used in connection with the providing of a service.

Registration of trademarks may be made Federally with the U. S. Patent and Trademark Office or in each state with the office of the Secretary of State. There are many advantages with a Federal Trademark Registration and this section is directed to Federal Registrations.

TRADEMARK PROCEDURE

1. Selecting the Name

From a legal standpoint, selection of a highly distinctive, strong trademark without any descriptive, surname or geographic connotations decreases the difficulties of obtaining trademark registration and difficulties of protecting this trademark against infringers and defending it from attack by others.

To minimize costs in the selection of a new trademark, the classification of their goods should be determined and the client provided with a listing of marks in that classification. Such listings are available for Federally registered and pending marks before the U. S. Patent and Trademark Office. It should be recognized that more extensive materials would include state registrations or companies having unregistered marks.

Trademark Selection Guidelines

a. distinctive,

b. preferably not a generic name,

c. preferably not a descriptive or suggestive term,

d. preferably not a personal name,

e. is not confusingly similar with a "Famous" mark (Federal Antidilution Statute). and

f. many other rules apply to the selection of a name but it is beyond the scope of this article to completely outline all of the laws and rules and consider other matters relating to the trademarkability of a name (such as, for example, "secondary meaning").

2. The Trademark Search

It is recommended that once a new mark is selected but prior to its use on products or in advertising, a detailed investigation should be conducted. There is no one trademark registry which can give absolute assurance of a conclusive search. An investigation should also include unregistered conflicting marks since a new trademark can be successfully challenged by an unregistered trademark. Some comments and the reasons concerning such an investigation are:

a. To avoid use of a mark in which there is significant risk that its use will be attacked by another owning that mark (or a confusingly similar mark).

b. To avoid the use of a mark that others are using to avoid the question of trading on the goodwill of that mark by your use of the mark.

c. The financial investment that will be made in a new mark and the costs and business consequences of being required to change the mark should be considered when deciding the initial investment in finding a new mark, including the scope and extent of the investigation.

The scope of such a search may include a search of:

Federally Registered and pending marks,

State registered marks (in some or all states),

Telephone book and catalog listings.

Since the registration of a Trademark is an ex-parte proceeding a duty exists to disclose to the U. S. Patent and Trademark Office certain matters relating to the trademarkability of the mark sought to be registered.

At some point the investigation must be completed, a new mark adopted, and the risks of challenge assumed. The longer a new mark is used and the greater the area in which it is used without challenge, the less the chances are of its being challenged, especially if the new mark is registered at an early date.

3. Application

There are two types of trademark applications, an intent to use application and an application for a trademark currently in use. Appendix A includes a listing of the information that should be obtained from the client in determining the information necessary to determine the type of trademark application and its contents.

4. Prosecution of the Trademark Application

The U. S. Patent and Trademark Office may reject the Trademark Application for a variety of reasons.

Some rejections may be overcome with evidence that the trademark has attained "secondary meaning". Such evidence of distinctiveness includes:

	a. Duration;
	b. Extent and nature of use;
	c. Advertising expenditures in connection therewith identifying the types of media and attaching typical advertisements;
	d. Statement from the trade or public (or both) or other appropriate evidence tending to show that the mark distinguishes such goods; (Note: Dealers or retailers may constitute the purchasing public.)
	e. Evidence that the mark has become distinctive by reason of substantially exclusive and continuous use thereof by applicant for the five years preceding the application filing date.
	f. Evidence of increase in sales and growth of business and distribution under the mark.

5. Post Issuance Matters:

Section 8 of the Trademark Act of 1946 provides that within six years after the date of registration each registered trademark owner must file an declaration verifying that they are currently using the mark. Failure to make a timely filing results in the automatic cancellation of the mark.

Furthermore, if the trademark owner can demonstrate that it has used the mark continuously over the past five years, then it is in its best interest to file a supplemental declaration under Section 15. The Section 15 Declaration of continuous use is optional unlike the Section 8 Declaration of current use. However, this additional filing gives the mark the maximum protection available under the Trademark Act. Once a Section 15 declaration is filed, the trademark owner's rights in the mark become "incontestable", i.e., the mark can no longer be attacked on the grounds that it is merely descriptive.

6. Trademark Renewal

The Federal Trademark must then be renewed every 10 years.

7. Enforcement

An investigation should be conducted to uncover various facts before sending out a cease and desist letter to a potential infringer. Some of the items of such an investigation are listed in Appendix B ("TRADEMARK PRELIMINARY FACTUAL INFORMATION"). A cease and desist letter to a prospective defendant may be the basis for a declaratory judgment action and should not be taken lightly. For example, if a trademark user sends a cease and desist letter alleging trademark infringement and it develops that the other party, not he, has priority of use, the other party may demand that he cease using the mark.

An important test to determine whether a trademark is infringed is whether the mark in question is confusingly similar to the trademark. Other issues to examine include whether there is quality control over the goods in question so the consumer can justifiably rely on the trademark for the goods he purchases.

While a lawsuit may be used to enforce a trademark, alternative methods of enforcement include a filing with the U. S. Customs. The owner of a trademark registration may file the registration with U. S. Customs and the infringing goods may be stopped from entering the United States.

Appendix A

REGISTRATION OF MARKS SERVICE MARK (SM) TRADEMARK (TM)

1. Mark is (give mark or attach specimen):

2. Mark is used for : ______ Product *, ______ Service **

3. List Products or Services for which Mark is used.

4. Nature of present use:

A. For Trademark in connection with product when sold

_____ Marked directly on product

_____ Label on Product

_____ Tag on Product

_____ On container for product by ________ (Printing label, tag, etc.)

_____ Other: Describe:

B. For Service Mark

_____ Advertising

_____ Letterheads

_____ Catalogues, Brochures

_____ Other: Describe:

5. First date of use of TM [use must be in connection with sale of a product (as in 4A)]

A. Date used within State _________________________

Product or Service involved in first use: _____________________

B. Date used in Interstate or Foreign Commerce ___________________

Product or Service involved in first use: _____________________

6. If Mark is modification of an earlier used mark or name, describe mark or name and manner of use.

* A Trademark is a name or the like which is used in connection with a product as that product is shipped and sold to the user.

** A Service mark is used like a trade name to identify services which are rendered.

7. Was use made of the Trademark as a trade name, or in advertising before being used as a Trademark (i.e., in connection with the sale of a product)?

8. Was Mark earlier registered by you for a Service or Product?

______ Yes ______ No

I f so, identify Registration and Product(s) or Service(s) if known.

9. Seven (7) identical specimens of current use are enclosed in the form of

_____ Label _____ Part of bag or container

_____ Tag

_____ Photograph of Product with Mark

_____ Advertising (SM)

_____ Letterhead (SM)

_____ Other. Describe:

10. Describe known Mark(s) or Name(s) used by others in the market area for your goods or services which have a resemblance to the Mark to be registered (include nature of product or service for the known mark or name):

Enclosed is material supporting earliest dates of first use in Section 5 (dated invoices showing Mark or for products with mark dated advertising, dated orders, etc.). This is not necessary for filing but it is best to preserve this type of material in the file.