Can I obtain Federal registration for my foreign trademark?

The answer is likely yes.  The US is one of the largest markets in the world and for an expanding business it is important to ensure your protections are in place. As long as the country you are from is part of a trademark convention with the United States or is reciprocal to US citizens, you can use your foreign registration or application as a basis to file with the Federal government. The foreign filing you are using as a basis for your new US application must have been filed in your country of origin. Foreign applicants are allowed to file as long as they have an intent to use their trademark and may use the date of filing on their foreign application or registration as their date of filing on the US application. Do not forget to provide translations for all required foreign documents and it may also be a good idea to appoint a domestic representative, someone familiar with this process that will likely be foreign to you such as a licensed attorney.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is a drawing?

A drawing is, in essence, your trademark. It is the exact representation of your trademark as you are, or intend, to use it. Drawings can be “typed” or they can be “special form drawings. A drawing is typed when it only standard Latin characters (words, numbers, letters). Drawings that are special form are those which contain a specific design, style, or color. When choosing what sort of drawing is best for you it is important to consider what is most important to protect for your trademark and your business. Some business owners even file separate applications for the typed text of their trademark and their logo design. What is right for you depends on what your business goals are, the level of protection you are seeking, and how much have invested in your business and your trademark. The specimen/sample that you will have to submit to the USPTO will have to exactly match the drawing. Once filed material changes cannot be made to your drawing, so before submitting it make sure that is exactly what you want!

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Making sure your specimen is correct

When filing a trademark application, you will have to include a specimen at some point in the process. A specimen is a sample that shows that you are using your trademark in commerce. What is exactly needed varies from application to application depending on your goods/services and what class they are in. Each international class included on your application will require a separate specimen. The sample should show your trademark being used on your goods/services or in connection with them. An example for goods could be your trademark appear on the goods or on the tag or label for your goods. An example for services could be your trademark appearing on a promotional material or a website where you advertise or provide your services. The trademark as it appears on your sample must exactly match what you applied for as it appears on your drawing! It is important to note that the law requires that your sample must have been in use on or before the filing date of your application (for actual use applications) Or on or before the date of filing a Statement of Use (for intent to use applications). Getting your specimen correct the first time can save you a lot of time and possibly money. It is always recommended to find out exactly what your specific application needs by having a licensed attorney review it.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Describing and classifying your goods/services

You know what your goods or services are, but describing them accurately and in way that will protect your trademark is not always easy. For starters your description should only include the items which you are currently or intend to use your trademark on. Generally, the best descriptions are brief, using common commercial names, and not vague or broad. Goods/services also have to be classified. The USPTO categorizes applications by putting them into classes (or international classes). Each class included on your application will require a separate filing fee, specimen (sample), and dates when you first used your trademark. Details are extremely important when completing this portion of your trademark application. Mistakes made here can be difficult to correct as once filed the USPTO does not allow material changes to an application. Even minor issues can result in delays and additional fees. Your trademark is important to you so make sure you take the time and care needed to complete it correctly and consider hiring a licensed trademark attorney.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

I missed my deadline, what can I do?

Did your deadline pass? Do not panic, there may be a chance your trademark application can be revived. A petition for revival can be filed within 60 days (2 months) from the date of abandonment. If more than 2 months have passed, then your only option is to file a new application. A petition for revival requires additional government fees. Abandonment occurs when the USPTO has not received a response by the deadline specified. If your application was issued an Office Action which you did not respond to by the deadline, then the response must be filed at the same time as the petition for revival. If your application was issued a Notice of Allowance and you failed to file a Statement of Use or an Extension by the deadline, then you must also file the past Extension you missed along with the petition for revival. It is never ideal to have your trademark abandoned, but if it happens and you realize this oversight within 2 months then there is a chance you can get your application back on track.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is a Statement/Proof of Use?

If you received Notice of Allowance (NOA) from the USPTO that means you are close to registering your trademark. The USPTO has decided your trademark is allowed and you now have to demonstrate to them that you are currently using your trademark in commerce. A Statement of Use (SOU) is what will demonstrate that you are doing so. You have 6 months from the NOA to file an SOU or an Extension. An Extension will grant you an additional 6 months to file an SOU. Up to six Extension may be filed for a total of all 3 years, although note that all applicable fees must be paid for each Extension. To file an SOU you will need to pay the fees and submit a specimen that shows that you are using your trademark in commerce. The SOU must recite that you are using your trademark in commerce, the date you first used your trademark, and on what goods/services from the NOA you are using you trademark on. You must be using your trademark on all goods/services contained in the NOA at the time you file the SOU. If you are not, then those items must be disclaimed (removed) from the application. Failure to do so could jeopardize your mark. Attention to detail is very important which is why it is recommended to have a licensed attorney prepare such filings.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

An Explanation of the Principal Register and the Supplemental Register

The Principal Register offers the strongest federal protection for your trademark. It affords you all of the benefits of Federal Registration. Marks allowed on the Principal Register are ones that are either arbitrary/fanciful marks or marks that have may be descriptive, but have obtained a secondary meaning. Sometime when denied the Principal Register a mark is given the option to be placed on the Supplemental Register. This occurs when a mark is descriptive, but has not yet acquired a secondary meaning. The Supplemental Register gives these marks time to acquire a secondary meaning while giving them certain benefits. The Supplemental Register allows the use of the registered symbol ® and can act as a deterrent from those that would infringe on your use or attempt to register a similar mark. It also allows suit to be brought in federal court and can be used as a basis for certain foreign applications.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Why Federal Registration is important

Federal registration is one of the strongest forms of protection for your trademark and offers you many benefits. In certain cases, State registration may be enough, but generally Federal registration is preferred. Those thinking about infringing on your rights will think twice knowing that you have gone through the proper steps to protect your trademark with the Federal government. Federal registration is evidence that you own your trademark and that you have the exclusive right to use the mark on your applied for goods or services in commerce. It also demonstrates that you have been using this trademark since you filed your application. Federal registration gives you the right to statutory remedies and to bring suit in federal court. Lastly, it can help you fight bootleggers and affords you rights when filing for certain foreign registrations. Federal registration demonstrates to both your customers and your competitors that you care about your trademark and think it is worth defending and protecting.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

How to use a trademark

Your trademark is special to you, your brand, and your company. There are several rules of thumb that should be followed to preserve this special status. To maintain a trademark, it is important that the public recognize it is a trademark. This can be accomplished by using generic terms alongside your mark so that people realize your mark is in fact a trademark and not a name for the goods. When placing your trademark on goods or marketing material your trademark should stand out from other text so it is clear that it is separate and different. You may also use the TM ™ symbol to indicate you claim the term as a trademark. Your mark does not have to be registered to use the TM symbol. If your trademark is registered, you can use the registered symbol ® or a statutory notice. The registered symbol cannot be used if your mark is not registered! You worked hard to get your trademark so ensure you are using it correctly and in a way that will not jeopardize its protections.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Use it or lose it

Merely thinking of a great trademark is not enough, you have to use it. This does not mean that you have to be selling your goods, but you have to be using it publicly. Public use of your trademark will establish your priority and increase your protection. A few examples of public use other than actually selling your goods include presale announcements and soliciting/accepting orders. If you are not yet using your trademark, but plan on using it in the future and want to establish your priority as soon as possible, you can file an intent to use application. While your trademark will still not be fully registered until a statement of use is filed and accepted, the benefit is that once accepted your priority date will be the date you filed the application. In addition to using your trademark in a public manner, you must use your trademark in continuous commercial use. Just like you are dependent on your trademark for protection, your trademark is dependent on your use.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Searching existing trademarks

Before filing a new trademark application, it is very important to search for existing or prior pending marks that may conflict with yours. The importance of this cannot be overstated. For starters this search will give you a good idea on how strong of a protection your trademark will offer. If there are many similar trademarks for products related to yours, then you may want to consider other options. Before investing in placing a trademark on your products, ensure that the trademark is available and viable. Whether your potential trademark or is just text, a logo, or more a search is essential. It can save you time and money while ensuring you receive a high level of protection. When conducting and analyzing the results of a search it is always important to have someone experienced, such as an attorney, involved to spot potential conflicts or issues that the average person may not be able to see.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

An overview of trade dress

Trade dress is the entirety of your product and can be used as a trademark. Trade dress is what make your goods unique. It includes all of your products feature’s including shape, size, color, images, etc. Trade dress usually comes in two forms, as a package/label or a product design. In order to protect your trade dress mark it is important that the trade dress be nonfunctional, indicate the source of your goods because it is distinctive, and that use by a competitor would cause confusion. Trade dress that is not inherently distinctive will have to have acquired a secondary meaning in order to be protected. If you have been using the trade dress for a long time, had success selling it, spent a lot on advertising, or even had media coverage then it is possible your trade dress has acquired a secondary meaning. There are many other factors that go into determining whether or not you should use your trade dress as a trademark, but protecting what makes your products standout from the competition is always important.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Using color as a trademark

Colors may be trademarked although there are of course limitations. Generally, combinations of different colors that are arbitrary in design are allowed. More issues arise when only a single color is being trademarked. Originally single color marks were not allowed, however this was changed. Single color trademarks can be allowed if the color is not related to the functionality of the goods, this functionality can be utilitarian or aesthetic, and has a secondary meaning. Whether you are looking to trademark a combination of colors or a single color it is important to note the colors cannot be merely ornamental or only define a common shape. The colors will be considered generic, and thus unable to register, if they are part of the good’s function or are used to identify a specific type of product. Colors can help set your brand and products apart from your competitors.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What can be used as a trademark?

It is possible to use many different things as a trademark. While not an exhaustive list these are some of the most common: slogans, letters, numbers, foreign language, and designs. Slogans can be registered if they can standalone when not on a label, are not explanatory/informational, are not a familiar expression, and are not just part of a phrase. Numbers and letters can function as very good trademarks when their combinations have no recognizable meaning. If the combination is a recognizable abbreviation and descriptive of the goods, then a secondary meaning will have to be shown. Foreign language trademarks can be registered as long as their translated meaning is not a generic term. It is important to note that when determining confusion with other marks, foreign language marks will only be translated if the average person would know its meaning. Designs can be registered so long as they are not ornamental, background material, or ordinary shapes. A strong design trademark can leave a commercial impression by itself.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Can I trademark a Name or Place?

While it is possible to trademark a name or place, there are many limitations. Full names and surnames can only be trademarked if there is a secondary meaning associated with them and as long as you are not infringing on the right of another person using their own name or a company with a similar name. Geographic terms can be trademarked as long as they are not descriptive of the origin of the goods. Like names, if a trademark is deemed geographically descriptive, it may be allowed if a secondary meaning can be demonstrated. A geographic term cannot be used if it would deceptively influence a customer. This means if a customer is likely to think a product is made in a specific area because of the geographic term when it is in-fact not, then the mark will not register. Lastly, even if you register a name or location fair use may allow others to use the name in some capacity. Names and locations can be an important part of your business or products, but be mindful when selecting them as your trademark.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Selecting a trademark

Not all trademarks are created equal. Some are better than others and easy to register and protect. Before filing your application there are things you should consider. The viability of a mark can be classified into four categories: generic, descriptive, suggestive, and arbitrary/fanciful. The last category, arbitrary/fanciful, is the most powerful and easiest to register. These are trademarks that have an ordinary meaning completely unrelated to the goods they are on or were entirely made-up specifically to identify your goods, services, or brand. Suggestive marks also offer a high level of protection. They are trademarks which may suggest an aspect of the goods, but still require thought and imagination to make the connection. Descriptive trademarks are marks that convey information about the product. They are harder to register and protect as they require a secondary meaning. A secondary meaning is generally obtained through marketing over time to demonstrate the trademark has acquired distinctiveness. The last category, generic, are common names for goods which cannot function as trademarks.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Confused about what a trademark is? Here are the basics!

Many begin the application filing process without fully understanding what a trademark is. A trademark is essentially your brand name. It is what you as a business owner use to identify and separate for your goods or services from your competitors. This is necessary so your potential customers know they are buying from you and not someone else! A trademark can be words, numbers, shapes, slogans, sounds, even a smell. Registration of your mark comes with many benefits. Your trademark can show the origin of your goods, assure customers of the quality associated with your brand, and demonstrate goodwill that you are not merely imitating someone else. In addition, a trademark provides legal protection against someone else using a trademark that may cause confusion, deception, or be mistaken for yours. Your brand and your company are a major investment. A trademark protects that investment and fosters growth.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.