Whether they recognize it or not, most successful businesses are the owners of one or more trademarks (though those trademarks may not be registered trademarks and we’ll discuss the significance of that distinction below). A trademark (or a “service mark” where services are concerned) is, by definition, a word, name, symbol or design (or some combination of those marks) used in commerce to identify and distinguish the trademark owner’s products from those offered by others.
“Coca Cola” is a classic example of a trademark. There are other types of trademarks and service marks as well, such as colors (for example, United Parcel Service has the exclusive right to use brown in the package delivery business, while Home Depot has the right to use orange in connection with the sale of home improvements and building supplies). Even sounds may be trademarked, such as the Pillsbury doughboy’s giggle and the Taco Bell “bong.”
In this month’s issue of Attorney’s Corner, we’ll go over the basics of the federal trademark process, including the benefits of registering, what constitutes a registerable trademark, what’s involved in the application process, what’s involved in maintaining a trademark and some scams for trademark owners to watch out for.
Why Bother Registering?
At the outset, it should be noted that a mark doesn’t even have to be registered in order for the owner to sue for infringement. If your company, “Thunderbolt Car Service” has been doing business for many years and someone opens up “Thunderbolt Car Services” down the block and starts siphoning off your business, you can bring a lawsuit in response, even if “Thunderbolt Car Service” has not been registered with the United States Patent and Trademark Office (USPTO) as a trademark.
However, you’re in a much stronger position if your mark is registered. Registering places the public on notice that “Thunderbolt Car Service” is your company’s name, and that nobody else has the right to use it for purposes of marketing ground transportation services. That cuts off many defenses an infringer might raise when confronted by the trademark owner, like “I didn’t know.” The USPTO maintains an online database that is open to the public, and before a mark is used in commerce, the user is expected to double-check that nobody else is using that mark.
Owners of a registered trademark are entitled to display the ® symbol along with their mark to place others on notice that the mark is registered as a trademark. Those with marks that have not been registered may use the ™ symbol to notify potential infringers that the mark is claimed as an unregistered trademark.
Do I have a Trademark?
In order for a mark to be eligible for registration as a trademark it must meet two basic requirements. First, it must be used in commerce (or there must be a stated “intent to use” the mark in commerce, followed by actual use), and second it must be distinctive. The first requirement is relatively easy to meet. If you have for example a name or logo that your company has used in business for many years, you’re using the mark in commerce. Alternatively, if you plan to use the mark (say, for a planned subsidiary that will use alternative fuel vehicles), you can file on an intent-to-use basis, and the USPTO will hold the mark for six months pending receipt of proof that the mark is in use.
The second requirement is that the mark be distinctive. A complete discussion of this requirement is well beyond the scope of this article; what follows is a highly simplistic overview. The strongest marks are “fanciful” or unique/made-up marks (such as “Exxon” or “Kodak”). Next are “arbitrary” marks; common words used in a meaningless context (such as “Apple” computers). Marks may also be “suggestive,” requiring the consumer to “connect the dots” in their mind. The car brand “Jaguar” is suggestive, bringing to mind something sleek and fast, but not necessarily a motor vehicle. Lastly, a “descriptive” mark is one whose dictionary definition is synonymous with a quality of the product or service (such as “Crystal Clear” ice), and that has been used extensively in the marketplace such that it has become distinctive.
Words or terms that are purely generic in nature (such as “black car service” or “taxi company”) may not be registered.
What is Involved in Registering a Trademark?
While registering a basic trademark is a relatively straightforward process, it’s a highly technical one that is best left to an experienced attorney. The first step in the process is finding out if another company is using the mark for the same product or service. If there’s another Thunderbolt Car Service (or company with a similar name) that has already registered (or applied first to register), you’re out of luck, and the application process stops there. Must you change your company’s name if this is the case? You can continue using the name if the other company doesn’t find out and raise an objection, and you might even some day be able to apply to register if that other company lets its registration lapse. However, if there is an objection, chances are you’ll ultimately be forced to rename your company.
Assuming you get the green light to proceed, your attorney will ask questions about the proposed trademark, including how long the mark has been in use, whether the mark’s words are displayed in a particular font and/or color, whether there is a logo associated with the mark and what it consists of, etc. You’ll need to provide a “specimen” showing how the mark is being used. A screen shot of your company’s website showing the company name/logo and describing the transportation services offered is a good example of a specimen. Note that you may not be able to register a mark in its entirety. Specifically, where multi-word marks are concerned, certain components may or may not be capable of being registered and must be “disclaimed.” For example, you can register “Thunderbolt” if it’s not associated with another transportation company’s registered trademark. However, you can’t claim the exclusive right to use “Car” and/or “Service.”
Once the application has been submitted and the required application fees paid, expect to wait several months for the USPTO to assign an examiner to review the application. The examination may result in the issuance of one or more “office actions,” or official letters from the examiner to the attorney of record. The examiner may ask that amendments be submitted to correct certain errors or supply additional information, or the examiner may ask for consent to make simple corrections or revisions on the applicant’s behalf. In a worst case scenario the examiner may refuse (i.e. reject) the application because it fails to comply with the trademark law. For example, the trademark law does not allow registration of a mark where there is a “likelihood of confusion” with an existing mark. If you were to try to register “Uba” for a car service or “Starybucks” for a coffee shop, chances are the USPTO would issue a refusal on this basis.
Assuming your application passes the review process, a legal notice regarding the proposed trademark will be published in the USPTO’s official gazette. This weekly publication gives trademark owners who believe a tentatively approved application infringes upon their registered mark the opportunity to object. If there are no objections, the mark typically registers a few months thereafter, the entire process having taken 10 to 12 months.
Once a trademark has been registered, the owner must periodically file maintenance documents, submit specimens showing the continued use of the trademark and pay associated fees. Failure to file these documents during the specified time periods will result in the cancellation of the trademark.
Scams to Watch Out For
Because the USPTO database is open for viewing by the public, it is ripe for abuse by private companies who mine it for owner information, and then send out notices/invoices asking that the recipient pay various fees; oftentimes to a P.O. Box or overseas bank account. These mailings often bear official-sounding names such as “U.S. Patent and Trademark Organization” or “World Trademark Bureau,” and the more sophisticated ones may refer to an actual upcoming filing deadline related to your trademark. While some of these companies provide actual services (such as filing maintenance documents on the owner’s behalf, oftentimes at an inflated price), others simply take the owner’s money and provide nothing of value in return. If you own a trademark and receive one of these mailings, and have never used the company’s services, chances are it’s a scam.
Building a name in the ground transportation industry takes a lot of time and effort. Chances are, it’s one of the most valuable assets your company owns. If you have not already done so, I strongly recommend that you take steps to protect the investment you have made in your company’s name by registering it as a trademark before somebody else does.