Trademark, Copyright & Patent Protection

A Federal Servicemark is the same as a Federal Trademark, except that it identifies and distinguishes the source of a service rather than a product.

A name or logo in many cases overtime becomes a company's most valuable asset.

Registering a Federal Trademark or Federal Servicemark prevents others from adopting your name or design and gives you very favorable enforcement powers throughout the United States.

If you do not register your Federal Trademark or Federal Servicemark you get no or only limited protection in a local geographic region.

A registered Federal Trademark or Federal Servicemark allows you to put everyone on notice with the Federal Trademark symbol "®" once the Federal Trademark process is complete.

A registered Federal Trademark or Federal Servicemark allows you to advertise and promote your Mark and build name recognition and goodwill for your business with out fear of losing the Mark to another.

A registered Federal Trademark or Federal Servicemark may subject the copycat to injunction, statutory treble damages, profit disgorgement and attorney's fees if litigation is necessary to prevent such a copycat from using your Mark.

Federal Trademark or Federal Servicemark rights are established from the earliest of the date of first use of the Mark on the goods or services in interstate commerce or in commerce with a foreign country, or from the date of filing of an "intent-to-use" application if later it is actually used. A registration can be attacked by the owner of a confusingly similar Mark who can establish an earlier date of first use in commerce than the owner of the registered Mark.

It means you are reserving your Federal Trademark or Servicemark before you have actually used it in commerce. Before registration, you must use the Mark in commerce and file a sworn statement attesting to such use in commerce. At the same time as the Statement of Use, a specimen showing the Mark in actual use is submitted. You will want to take advantage of the nationwide protection afforded by federal registration and reserve your Federal Trademark or Federal Servicemark today.

Liability. The bottom line is that if you personally own a Federal Trademark or Federal Servicemark, you may be opening yourself up to lawsuit in connection with the products or services offered under the Mark. You will want to form a corporation or organize a limited liability company that would own the Trademark or Servicemark and possibly conduct business operations with the same corporation or limited liability company, or you may want to have separate business entities for separate functions described here to add layers of limited liability protection.

At Spiegel & Utrera, P.A.., we recommend Internet businesses registering their names should generally refrain from registering their web extension, such as .com or .net with their name, unless they're planning to register the mark both with and without the web extension. Obtaining a trademark without the domain extension will help prevent other businesses from registering the same name by just adding a different extension.

The price is right, but the main reason is that intellectual property is a specialized field where an experienced attorney from Spiegel & Utrera, P.A. can assist you in avoiding Federal Trademark and Federal Servicemark registration pitfalls. Filing a Federal Trademark or Federal Servicemark yourself or using a document preparation service may look cheaper, but in the long run you may very well end up with needless delays and added costs. Although Spiegel & Utrera, P.A.'s filing of your Federal Trademark or Federal Servicemark application does not include representation if the application is rejected or requires amendment, if legal issues do arise, Spiegel & Utrera, P.A. stands ready to represent you in completing the registration process.

The Mark must be filed under the owner’s name. The owner must provide the goods or services under the Federal Trademark or Federal Servicemark. An owner may be an individual or business entity such as a corporation, limited liability company or partnership.

If the owner is a business entity, the type of entity and nationality must be specified.

The application must be based on actual use or an intent-to-use the Mark in commerce:

An actual use application requires a description of the products or the advertising or promotional materials the Mark has been placed upon.

An intent-to-use application requires a statement in good faith that the owner intends use the Mark in commerce, but such Mark will not be registered until it is actually used. The U.S. Government will issue a Notice of Allowance, which grants six months to either use the Mark in commerce or file for an extension. Once the Statement of Use is filed, then a registration certificate will be issued.

A drawing of the Mark and a specimen of the Mark must be submitted when the application is based on actual use. Depending on the type of application, the drawing should depict the Mark as it has been used or how the owner intends to use it. A drawing is necessary even when a specimen is submitted as well. A specimen is a real-world example of how the Mark is actually used on the goods or in a service. The mark and any logo or drawing must match identically the mark and logo or drawing on the specimen.

The registration process may typically take around six to eight months to wrap up, although it can last longer if legal issues arise. After filing an application, the U.S. Government will assign a serial number and mail a receipt about two months after filing. The U.S. Government will examine the application and publish the Mark. Other parties believing they have a superior or claim to the Mark will have thirty days from the publication date to object to the Mark. The U.S. Government will either issue a Certificate of Registration (if an actual use application) or a Notice of Allowance (if an intent-to-use application.)

It is common that the U.S. Government may issue an office action letter. Office actions are letters from the U.S. Government that set forth the legal status of a Federal Trademark application. They are issued by a Federal Trademark examining attorney who is assigned to each application and usually contain administrative or substantive issues which need to be addressed.

There are several types of office actions: examiner’s amendments, priority actions, non-final office actions, final office actions, and suspension letters:

An examiner’s amendment is a written acknowledgment of an amendment made to an application. Generally the examining attorney and the applicant or the applicant’s attorney are in contact and they may reach an agreement that the application needs an amendment. It is issued as a written memorialization of such agreement.

A priority action is a letter in which an examining attorney describes specific outstanding requirements that the applicant must meet before an application can be approved for publication. The applicant or the applicant’s attorney must respond to a priority action within 6 months from the date the priority action is mailed. If the applicant or the applicant’s attorney fails to do so, the application will be declared abandoned. Examining attorneys have no discretion to extend the time for filing a response to an office action. The benefit of a priority action is that, if the applicant responds within 2 months, the application will be given priority in processing.

An office action is a letter in which an examining attorney describes the legal status of a Federal Trademark application where the examining attorney will disclose if the Federal Trademark search yielded any conflicting Marks. The examining attorney will also send an office action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to make any procedural requirements. Applicants or the applicant’s attorney must respond to an office action. If applicant or the applicant’s attorney fails to do so, their applications will be declared abandoned.

A non-final office action is correspondence from the U.S. Government that raises new issues and usually is the first phase of the examination process.

An examining attorney will issue a non-final office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final office action, the examining attorney will issue another non-final office action that describes the new issue(s) and continues any that remain outstanding. A final office action is the last office action that an examining attorney issues. It finalizes any outstanding issues. An applicant or the applicant’s attorney’s only response to a final office action is compliance with the requirements or appeal. When a Mark registration is refused by the examining attorney, the Mark applicant or the applicant’s attorney may appeal to a U.S. Government trial and appeal board.

A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons. These include waiting for the disposition of a prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters.

If applicants do not submit a timely response to an office action, their applications will be declared abandoned. Spiegel & Utrera, P.A. can assist you with the correct response. Although Spiegel & Utrera, P.A.’s registration of your Federal Trademark or Federal Servicemark does not include representation if the application is rejected or requires amendment or response, Spiegel & Utrera, P.A. stands ready to represent you.

During the examination of a pending Federal Trademark application as well as after a Federal Trademark has registered, the owner of a Federal Trademark may change for various reasons. Some Federal Trademark or Servicemark owners transfer their ownership of a Mark to another entity, which is called an assignment. In addition, some Federal Trademark owners change their names while retaining ownership. In both instances, the U.S. Government advises Federal Trademark owners to record the ownership transfers.

Once you have started the registration process, we recommend that you place the Trademark symbol "™" next to the Mark. Once the Federal Trademark process is complete and the U.S. Government issues the registration number to you, the "®" symbol may be used instead.

Many clients assume incorporating or forming their business entity with the Secretary of State will automatically protect their business name—it does not. Incorporation in and of itself is not a valid defense to trade name, Trademark or Servicemark infringement, unfair competition or anti-dilution claims. You must take a positive step and register the Mark.

Let’s say that you’ve started a corporation, Mystic Green Candle Enterprises Inc., and you’ve got a great idea for a product, the “Mystic Green Candle.” Just because you started Mystic Green Candle Enterprises Inc. would not stop someone else from marketing the Mystic Green Candle. In order to properly protect your idea, you would need to register it.

Registering at the state level is cheaper, but of course it affords a lower level of protection than a Federal Trademark or Federal Servicemark, which would protect your Trademark or Servicemark throughout the United States.

Now, let’s take the “Mystic Green Candle.” First off, you’d want a Federal Trademark or Federal Servicemark search and a common law search to make sure that you are not the one that’s infringing on someone else’s Trademark or prior use.

Once that’s completed, you’d apply for a Federal Trademark or Federal Servicemark. A Federal Trademark or Federal Servicemark can be of just words, such as “Mystic Green Candle,” or it may include a black and white or color design or logo, say, with a picture of the Mystic Green Candle.

By registering your Mark, you avoid any confusion that may arise in the future. Protect yourself from the competition. This can be one of your best investments.

If you expand or sell your business the fact that you have a registered Federal Trademark may be very valuable.

Trademarks and Servicemarks are generally divided into two categories of strong Marks: fanciful and arbitrary. Fanciful Marks are invented words, symbols or logos. Exxon and Xerox are fanciful Marks. Arbitrary Marks are words that have meaning, but the Marks are not used in connection with meaning. "Fox" photos, "Apple" records and "Gateway" computers are examples of arbitrary Marks. Gradually, consumers may associate quality and value with these Marks and they are therefore said to have acquired "good will." Beside the two previous categories of Marks, there are Suggestive Marks. Suggestive Marks are legally distinctive but never acquire the strength as the other types. "Coppertone" suntan oil and "Skinvisible" transparent medical adhesive tape are examples of Suggestive Marks.

Descriptive Marks are the weakest type of Mark, where the word or words are merely descriptive of the product or service. Such Descriptive Marks cannot be used as a Mark at all, unless it is shown that the phrase has, over time, acquired “secondary meaning.” “Investacorp” for a corporate investing consultant, “Boston Beer” or “Arthriticare” are examples of descriptive phrases. Having said that, it may be possible to take a descriptive word, say for example the previously-mentioned "Investacorp,” “Boston Beer,” and “Arthriticare” and make them distinctive by adding fanciful letters or words, like with “IC Investacorp,” “BB Boston Beer,” and “AC Arthriticare.” A famous example is with the publicly-traded “PS Public Storage” registered Trademark: 📷

You will note that although the Trademark has the fanciful letters “PS” to distinguish it from potential competitors, no one refers to the company as “PS Public Storage.” Cleverly, a strong association has been developed with the common words “Public Storage,” so that when a consumer sees the Trademark, they think of the company while ignoring the letters “PS.”

Descriptive Marks can be registered and protected if used for five years or more. Finally, generic words, including slang words, may never serve as Trademarks. “Hog” for large motorcycles, “cellular” for cellular telephones and “Honey Brown” for beer are examples of generic words.

Failure to register a Mark that should be registered denies a company substantial benefits. These include nationwide protection from the time the registration issues, a presumption of validity in infringement litigation, and permission to use the "®" symbol, which lends an aura of legitimacy and strength to a Trademark. Also, appearance in the Federal Register has defensive value because the Mark is likelier to be seen in Trademark searches, and therefore may prevent infringements before they begin. Lastly, a registration may become "incontestable" after five years, which means that the validity of the Mark is immune from challenge except on a limited number of grounds.

A good idea is that the entrepreneur should select three Marks from the fanciful or arbitrary categories. The Marks selected should then be subjected to Trademark searches. If a Mark creates a "likelihood of confusion" with a Mark previously used, it may be enjoined in an infringement action. It is no defense that the Mark was chosen innocently. Therefore, it is foolish to go into business without a full Trademark search and clearance opinion from an attorney. The search must be a full search. Looking only at the U.S. and State Trademark registers is not enough. This is because Trademark rights in the United States arise from use, not registration, and the owner of an unregistered Trademark may be able to enjoin your company’s use. A proper, full common law Trademark search therefore includes trade directories, business name lists, and information databases.

Companies must also be aware that "searching" only by reserving a corporate name is not sufficient. The fact that a corporate name has been reserved or approved by a Secretary of State will not protect the company. Approval of a name for corporate registration purposes is no defense to Trademark infringement.

If the search is favorable, the entrepreneur can apply for registration on the principal register for Federal Trademarks with either an intent-to-use application, which requires subsequent filing of proof of actual use, or an actual-use application if the Mark has already been used in interstate commerce.

Upon Federal Trademark or Federal Servicemark registration finalization, the Federal Trademark or Federal Servicemark owner must use the Federal Trademark or Federal Servicemark in a manner to show that it is being treated as such. The Mark should be used only as registered as there are different classes of uses that can be registered. The ® symbol should be used, only if the Mark is registered with the U.S. Government. TM or SM should be used prior to registration or if it is registered with the state.

Once the registration issues, use of the symbol is not mandatory, but it is good practice to use it to put potential infringers on notice of the company’s rights. Also, once a company begins to think about either selling or manufacturing products in a foreign country, it should consider applying to register its Trademark in that country. Spiegel & Utrera, P.A., can also assist you in registering your Mark in foreign countries and through the Madrid Protocol.

We strongly recommend you conduct a Trademark or Servicemark Search when proceeding with your registration. A Trademark or Servicemark search helps to uncover a similar Mark in use. Conducting a search also shows your intent to act in good faith, which can be a very important factor should a problem ever arise.