No more DIY in the US for Foreign Trademark Registrations

Courtesy of our friend David Copland, a trademark lawyer based in Dresden, Germany:

Amendments to the Trademark Rules of Practice published in the U.S. Federal Register of July 2, 2019 require as of August 3, 2019 all foreign trademark applicants, registrants, and parties to a TTAB proceeding are required to use a U.S.-licensed attorney for filing any trademark-related submissions to the U.S. Trademark Office.  

Previously all trademark filings could be made directly by a foreign individual, or by a member of a foreign limited corporation, a partner of a foreign partnership, or an officer of a foreign corporation.  Under the prior rules, foreign counsel could “ghost write” filings which foreign trademark owners could submit directly.  This will no longer be possible. 

The Madrid system does not allow for designation of a U.S. attorney for applications submitted through WIPO’s International Bureau.  Consequently, initial applications filed through the Madrid system need not be filed by a U.S.-licensed attorney.  However, any further submissions to the U.S. Trademark Office related to a Madrid application, such as responses to office actions or registration maintenance filings, will require the foreign trademark owner to have a U.S. attorney.

Other than an initial application filed under the Madrid system, foreign trademark owners must be represented by a U.S.-licensed attorney for all U.S. trademark filings after August 3.

For more information see the USPTO Website or give us (or David) a shout. 

Which symbol do I use for my trademark?

™? ®? ℠? ©? Ever wonder what all those brand name symbols mean? Here is the simple lowdown.

The ® indicates that a trademark is registered with the United States Patent and Trademark Office (USPTO). It should only be used after you have received confirmation from the USPTO that your mark has been registered.

The ™ and ℠ symbols can be used when a trademark is not registered (whether or not an application for registration is pending). These symbols are a way for a trademark owner to claim proprietary rights in a mark even though the mark is not registered. The difference between the two is that ℠ stands for “service mark” and indicates that the trademark identifies a service, as opposed to a good, whereas the ™ symbol, which stands for “trademark”, is commonly used for both goods or services.

The © symbol is for copyrights, not trademarks.

Proper Trademark Use Can Be Tricky

It is important to use your trademarks properly. Improper use can lead to loss of trademark protection. The first and easiest step in proper use is to always use the correct identifying symbol after your trademark. If the trademark is not yet registered, use the ™ symbol to put the public on notice of your trademark. The ™ symbol can be used at any time, even if you have no intention of ever applying for a federal trademark registration. It should also be used after you apply for federal registration up through the time of actual registration. Once the trademark has been granted federal registration, you may begin to use the ® symbol. The ® indicates that the trademark is registered with the United States Patent and Trademark Office. Therefore the ® symbol should not be used prior to registration.

The second step is trickier, but is just as important. It has to do with grammar, so it might be time to brush up on those grammar rules you learned in school. A trademark must only be used as a proper adjective to identify the particular brand of product or service that your company is selling. It should never be used as a descriptive adjective, a noun, or a verb, or used in the possessive or plural. Examples of the proper use of a trademark are: “Protect your cuts with Band-Aid® brand adhesive bandages” and “Xerox® copiers produce great color copies”. In both these cases, the trademark brand name is used as a proper adjective and with the ® symbol. Examples of improper uses of trademarks are: “Protect your cuts with Band-Aids” (here it is being used as a noun and in the plural form, both big no-no’s); “Xerox this document” (verb); “Xerox copies are the best” (descriptive adjective); “Xerox’s high quality” (possessive noun). All the aforementioned uses are improper and put the trademark at risk of losing its protection. You should have your company’s website, advertising materials, and packaging reviewed for proper trademark use and marking. You should also monitor third party uses of your trademark to ensure that others use your mark properly. Many companies have Trademark Use Guidelines posted on their websites that provide instruction to third parties as to permissible uses of the company’s trademarks.

Ironically, the more successful and widely-known a trademark becomes, the more at risk it is of becoming “generic” and losing its protective registration. As mentioned in my previous post, many product words that we commonly use, such as granola and trampoline, were once protected trademarks. The owners of such trademarks lost their protection due to wide-spread use of the trademarks to identify the product rather than the brand. Once the Patent and Trademark Office determines that a trademark has become generic, the trademark loses its protection and can thereafter be used by anyone to describe the type of product associated with the brand name. If your brand name becomes generic through improper use, a competitor can petition the Patent and Trademark Office to cancel your registration, and your brand name could suffer the same fate.

Protecting and Maintaining Your Trademark Registration

The battle to protect your trademark does not end with federal trademark registration. Once registered, you have to be vigilant about protecting the trademark from misuse, or risk losing the trademark’s protected status. The better the brand name, the easier it will be to protect it from improper use by others.

Protection begins with your own use of the mark. In order to maintain a federal registration, you have to actually use your mark in commerce; you cannot simply register it and keep it for possible future use. If you don’t use it, a third party (e.g. a competitor that thinks you came up with a great brand name and wants to use it for their own products) can seek to cancel your registration for non-use and then register it as their own brand name. It is important that you not only continue to use your trademark, but that you use it properly. I will discuss proper trademark use in a later post.

Additionally, certain documents must be filed periodically with the Patent and Trademark Office (the “USPTO”) to maintain a trademark registration. These documents essentially provide a mechanism of proof to the USPTO that you have been continuing to use the trademark in interstate commerce. If the deadline for filing a maintenance document passes, you will lose your registration. If you buy or sell a trademark (e.g. pursuant to the sale of a business or an inter-company agreement between related companies) or grant or take a security interest in a trademark or change the name or address of your company, you should update the ownership records with the USPTO. It is important to keep the trademark registration’s contact information up to date with the USPTO. However, the USPTO will not send you reminders about filing deadlines, so it is incumbent on the trademark owner to keep track of filing deadlines.

It is also important that you prohibit others from using your trademark improperly and without your consent. You should actively pursue any third parties who infringe your trademarks. Sometimes you will find out about an infringement in an ordinary Google search or because one of your customers tells you that they found a competitor’s website when they were looking for yours. There are also trademark watchdog services that will send you notices about potentially infringing marks. If you have a valuable trademark that is frequently infringed, a watchdog service may be a worthwhile investment.

If you are lucky enough to have a brand name that becomes extremely well-known, it may be eligible for status as a “famous” mark. Famous marks come with their own set of privileges as well as challenges. While afforded certain special protections against infringement, famous marks are sometimes vulnerable to becoming generic (and losing their registered status) through unchecked misuse. Examples of once-famous trademarks that lost their trademark registrations are aspirin, cellophane, thermos, escalator, zipper, and yo-yo. All of these once-famous trademarks are now generic names used to describe the product. Most of these were lost as a result of under-policing the misuse of the name by third parties and probably by the owners (and their employees) themselves. But while under-policing can lead to loss of the registration, over-policing can be costly too in terms of legal fees, watchdog service fees, and public image. Finding the right balance is important to ensure long-lasting protection while keeping costs to a minimum.

The Importance of Registering Brand Names with the USPTO

Federal trademark registration is not required to establish rights in a brand name. So why bother? In short, because registering a brand name with the United States Patent and Trademark Office (“USPTO”) affords it many advantages, and considering how valuable brand names are to a business, federal registration of trademarks is a relatively inexpensive and straightforward process and one that every owner of a brand name should consider.

A brand name, also know as a mark, can generally be registered with the USPTO as long as two conditions are met: (1) the mark does not conflict with a pre-existing mark and (2) the owner of the mark uses it in interstate commerce to identify a product or service. (Use in interstate commerce means that the mark is advertised to the public in more than one state. State registration is also available as an alternative to federal registration if the mark is only being used in one state.)

There are many benefits of federal trademark registration. The following is my top 10 list of reasons to apply for registration.
1. Notice to others of claim of ownership, which helps to discourage others from using the same or confusingly similar marks.
2. Nationwide protection, even if the mark is only used in a couple of states.
3. Evidence of ownership and validity of the trademark, which grants the owner the exclusive right to use the trademark in commerce in connection with the goods or services identified in the trademark registration.
4. After five years of continuous use following registration, the mark becomes eligible for broader protection through the granting of “incontestable” status.
5. Presumption of the date of first use of the mark. Although the first person to actually use a brand name in commerce is the rightful owner regardless of whether the mark is registered, demonstrating first use without registration can be difficult.
6. The right to bring an action for infringement in federal court under the Lanham Act. The Lanham Act allows the trademark owner to seek to recover its attorneys fees and treble damages. Without federal registration, a trademark owner is limited to bringing a state common law action.
7. The right to use the ® symbol. (Prior to registration, owners may use the ™ or ℠ symbol to claim common law rights of ownership.)
8. Protection against the registration with the USPTO of confusingly similar marks.
9. Registration can be used as a basis for registering the mark in other countries, which can facilitate world-wide protection as the business expands globally.
10. Registration may be filed with the US Customs Service to prevent importation of infringing foreign goods.

Choosing the Right Brand Name

For the next few weeks I will be reviving a series I did several years ago on some trademark basics and common issues. This series is meant to familiarize business owners with the basics of US trademark law and the important role that brand names and trademark registration play in the success of a business.

Choosing a good brand name is the first step in identifying your unique product or service and protecting your business against competitors using confusingly similar brand names. Not all brand names are created equal. Successful brand name protection begins with choosing a “good” brand name.

The best brand names are those that are words that were unknown prior to their use with the goods or services. These are known as “coined marks.” Examples of well-known coined marks are Xerox, Exxon, and Kodak. Coined marks are the easiest to register and enjoy the broadest protection.

The next best brand names are known as “arbitrary marks.” Arbitrary marks are real words that have no connection to the product or service it is identifying. Examples of well-known arbitrary marks are Apple for computers, Shell for petroleum products, and Amazon for online bookstores.

Next in line are “suggestive marks,” which are real words that suggest certain features or qualities about the product or service, such as Coffee-mate creamer and Airbus airplanes.

A descriptive mark (i.e. one that very obviously describes the product) is the least desirable and, unfortunately for many businesses, one of the more popular kinds chosen. Descriptive marks often prove difficult to register. Even when they are successfully registered, they offer the least amount of protection.

Last in line are generic terms, which are terms that refer to the class of product (such as “cola” or “software”) rather than a particular brand. These terms cannot be granted federal registration and enjoy no protection.

It is also important to remember that a company’s business name is not a trademark unless it is also (and separately) used to identify products or services. If a name merely identifies the company, it is not a trademark and cannot be registered with the federal trademark office. That said, for many companies, their company name is also the brand name of the company’s main product or service. Accordingly, when choosing a name for your company that you intend to have double as the company’s brand name, you want to make sure it does not infringe someone else’s brand name. As with any brand name, before selecting a name for your company, it is a good idea to conduct a comprehensive trademark search to make sure there are no potential conflicts.