Back to Basics: Trademarks Part 2

This is the second in a series or posts on the basics of trademark law.  The first one focused on the selection of a mark for use in connection with goods or services.  Here I focus on the federal trademark registration process.

Once you’ve selected your mark for use in connection with your product or service, you should conduct a search to determine whether your mark is available for use and registration.  This involves reviewing a number of different databases including the federal and state trademark databases, as well as a number of different directories for use of your mark and similar marks in connection with similar goods or services.  A trademark attorney can assist you with this process. 

If the mark is available for use, determine whether or not you need to register your mark with the United States Patent and Trademark Office.   Federal trademark registration requires a showing that you have sold your goods or services using your mark across state lines.  If your business plan does not anticipate crossing state lines, then you should seek state trademark protection.  However, if you anticipate that your business will be conducted across state lines, you should seek federal trademark protection.

Filing for federal trademark protection can be done prior to an actual sale of your goods or services with your mark across state lines.  Alternatively, if you have already begun using your mark with your goods or services across state lines, you can file your application along with proof of use of the mark. 

After your mark is filed, it will be reviewed substantively by an examining attorney.  If your mark is allowed, it will be published for opposition.  This allows anyone who believes they may be harmed by your registration to file an opposition.  An opposition proceeding is a quasi-judicial proceeding the takes place in the US Patent and Trademark Office.  It is similar to litigation in that there are documents exchanged and depositions may be taken.  During an opposition proceeding, the opposing party must show how they will be harmed by registration of your mark. 

The determining factor in an opposition is essentially whether a potential consumer would likely be confused as to the source of opposer’s goods or services and yours.   Several factors go into the determination.  These include:

·         how similar are the marks in their appearance and impression;

·         how similar are the goods and/or services;

·         do the goods or services travel in the same or related channels of trade;

·         how sophisticated are the buyers of these goods or services, in other words do they purchase on impulse or would they be relatively careful or thoughtful in their purchase; and

·         how many other marks are in use with similar goods or services.

Your ability to prevail on these factors will likely result in registration of your mark. 

One final note about trademarks is that they need to be used.  After your mark has been registered, you will still need to show to the U.S. Patent and Trademark Office proof of use of your mark in connection with the goods or services listed on the registration.  Failure to do so may result in a lapse of your registration.