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Trademark FAQ

  1. What is a trademark?
  2. What is intellectual property?
  3. What is the “USPTO”?
  4. What sources of law govern trademarks?
  5. What prerequisites must a mark satisfy in order to serve as a trademark?
  6. How do you acquire rights in a trademark?
  7. What type of trademark filings are there?
  8. When may I use the r in a circle mark?
  9. When may I use the TM mark?
  10. Do I need to do a trademark search before filing an application?
  11. What is the difference between a trademark and a service mark?
  12. When may I use my trademark or service mark?
  13. Why should I file a trademark?
  14. How long does it take to register a trademark?
  15. How long does a trademark registration last?
  16. Can trademark rights be lost?
  17. What constitutes trademark infringement?
  18. What constitutes trademark dilution?
  19. What other potential causes of action are there?
  20. What defenses are there to trademark infringement or dilution?
  21. What remedies are there for trademark infringement and/or dilution?
  22. How are characters like a hyphen treated in a trademark. For example if “i-name” is registered could I register “iname”
  23. At what point is the application considered abandoned?
  24. If the TM application is officially abandon 8 months after last correspondence than I could file an application and not be refused?
  25. How does one find out the status of a dead trademark & how to take ownership if available?
  26. Having submitted a TM application to the USPTO for the US, I now want to use the Madrid Protocol application to apply in other countries. If I mark Russia as one of the countries in which I want to register, will I (1) have coverage for translation of my mark into Russian, (2) have coverage in English only, or (3) both?
  27. I have a mark that I am not using yet in commerce, can I file a trademark application with the USPTO now or should I wait until I am actually using it?
  28. Can an individual apply for a United States trademark? Or do I have to incorporate a company first, before applying for a trademark?
  29. While researching trademark names for a new product, I found several companies with live and dead trademark names that are identical. First, what is the difference between a live and dead trademark name? Secondly, can I still trademark my name if the product is in a different category
  30. We want to apply for a trademark, but a trademark and a service mark already exist with the same name, but with a space in between the two words. They are both in different classes compared to the class we wish to file the service mark. What is the probability of getting it approved?
  31. Does the US Trademark Office have a similar class registration system as they do in Europe? For example, say I registered JAMES as the name of a drink could somebody come and register it in another class as they can in Europe?
  32. Can anyone trademark something I have already begun and am using in commerce? Can’t I oppose them so they cannot take away my business?
  33. When fighting an opposition to a TM application, should you have an independent company perform a survey to show there is no likelihood of confusion? Is it OK to conduct a survey yourself? Is a survey necessary at all?
  34. Which is the best to file right away, a trademark, a service mark or an intent to use the service mark and/or the trademark?
  35. Is there a link where we can get the status of a US trademark application?
  36. How can I report someone who fraudulently represents the usage of a TM that is not registered or has any form of a corporate presence in any US jurisdiction?
  37. Can I report someone infringing my trademarked domain to a search engine? If so, how?

What is a trademark?

A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another. 15 U.S.C. 1127. For example, the trademark “Nike,” along with the Nike “swoosh,” identify the shoes made by Nike and distinguish them from shoes made by other companies (e.g. Reebok or Adidas). Similarly, the trademark “Coca-Cola” distinguishes the brown-colored soda water of one particular manufacturer from the brown-colored soda of another (e.g. Pepsi). When such marks are used to identify services (e.g. “Jiffy Lube“) rather than products, they are called service marks, although they are generally treated just the same as trademarks.

Under some circumstances, trademark protection can extend beyond words, symbols, and phrases to include other aspects of a product, such as its color or its packaging. For example, the pink color of Owens-Corning fiberglass insulation or the unique shape of a Coca-Cola bottle might serve as identifying features. Such features fall generally under the term “trade dress,” and may be protected if consumers associate that feature with a particular manufacturer rather than the product in general. However, such features will not be protected if they confer any sort of functional or competitive advantage. So, for example, a manufacturer cannot lock up the use of a particular unique bottle shape if that shape confers some sort of functional advantage (e.g. is easier to stack or easier to grip). Qualitex Co. v. Jacobson Products Co., Inc., 115 S. Ct. 1300 (1995).

Trademarks make it easier for consumers to quickly identify the source of a given good. Instead of reading the fine print on a can of cola, consumers can look for the Coca-Cola trademark. Instead of asking a store clerk who made a certain athletic shoe, consumers can look for particular identifying symbols, such as a swoosh or a unique pattern of stripes. By making goods easier to identify, trademarks also give manufacturers an incentive to invest in the quality of their goods. Trademark law furthers these goals by regulating the proper use of trademarks.

What is intellectual property?
Intellectual property consists of property created through human creativity. It includes, for example, literature, the visual arts, music, drama, compilations of useful information, computer programs, biotechnology, electronics, mechanics, chemistry, product design, and trade identity symbols. Intellectual property law is designed to promote human creativity without excessively restricting dissemination of the fruits of such creativity. Intellectual property rights are embodied in patents, trade secrets, copyrights, and trademarks.

What is the “USPTO”?

The “USPTO,” sometimes shortened to “PTO” or simply “Patent Office,” is another name for the U.S. Patent and Trademark Office. This office is the governing authority for granting patents and trademarks in the U.S.

What sources of law govern trademarks?
Trademarks are governed by both state and federal law. Originally, state common law provided the main source of protection for trademarks. However, in the late 1800s, the U.S. Congress enacted the first federal trademark law. Since then, federal trademark law has consistently expanded, taking over much of the ground initially covered by state common law. The main federal statute is the Lanham Act, which was enacted in 1946 and most recently amended in 1996. 15 U.S.C. 1051, et seq.. Today, federal law provides the main, and by and large the most extensive, source of trademark protection, although state common law actions are still available. Most of the discussion in this summary focuses on federal law.

What prerequisites must a mark satisfy in order to serve as a trademark?
In order to serve as a trademark, a mark must be distinctive — that is, it must be capable of identifying the source of a particular good. In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within.

An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product. For example, the words “Exxon,” “Kodak,” and “Apple” bear no inherent relationship to their underlying products (respectively, gasoline, cameras, or computers). Similarly, the Nike “swoosh” bears no inherent relationship to athletic shoes. Arbitrary or fanciful marks are inherently distinctive — i.e. capable of identifying an underlying product — and are given a high degree of protection.

A suggestive mark is a mark that evokes or suggests a characteristic of the underlying good. For example, the word “Coppertone” is suggestive of sun-tan lotion, but does not specifically describe the underlying product. Some exercise of imagination is needed to associate the word with the underlying product. At the same time, however, the word is not totally unrelated to the underlying product. Like arbitrary or fanciful marks, suggestive marks are inherently distinctive and are given a high degree of protection.

A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions, or ingredients). For example, “Holiday Inn,” “All Bran,” and “Vision Center” all describe some aspect of the underlying product or service (respectively, hotel rooms, breakfast cereal, optical services). They tell us something about the product. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired “secondary meaning.” Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage.

A descriptive mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product. Thus, for example, the term “Holiday Inn” has acquired secondary meaning because the consuming public associates that term with a particular provider of hotel services, and not with hotel services in general. The public need not be able to identify the specific producer; only that the product or service comes from a single producer. When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term’s use; (4) results of consumer surveys. Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).

Finally, a generic mark is a mark that describes the general category to which the underlying product belongs. For example, the term “Computer” is a generic term for computer equipment. Generic marks are entitled to no protection under trademark law. Thus, a manufacturer selling “Computer” brand computers (or “Apple” brand apples, etc.) would have no exclusive right to use that term with respect to that product. Generic terms are not protected by trademark law because they are simply too useful for identifying a particular product. Giving a single manufacturer control over use of the term would give that manufacturer too great a competitive advantage. Under some circumstances, terms that are not originally generic can become generic over time (a process called “genericity“), and thus become unprotected.

How do you acquire rights in a trademark?

Assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of two ways: (1) by being the first to use the mark in commerce; or (2) by being the first to register the mark with the U.S. Patent and Trademark Office (“USPTO”). 15 U.S.C. § 1127(a). Remember, however, that descriptive marks qualify for protection (and can be registered) only after they have acquired secondary meaning. Thus, for descriptive marks, there may be a period after the initial use of the mark in commerce and before it acquires secondary meaning, during which it is not entitled to trademark protection. Once it has achieved secondary meaning, trademark protection kicks in.

The use of a mark generally means the actual sale of a product to the public with the mark attached. Thus, if I am the first to sell “Lucky” brand hot dogs to the public, I have acquired priority to use that mark in connection with the sale of hot dogs (assuming that the mark otherwise qualifies for trademark protection). This priority is limited, however, to the geographic area in which I sell the hot dogs, along with any areas I would be expected to expand into or any areas where the reputation of the mark has been established. So, for example, if I sell pizza in Boston under the name “Broadway Pizza,” I will probably be able to prevent late-comers from opening up a “Broadway Pizza” within my geographic market. But I will not be able to prevent someone else from opening a “Broadway Pizza” in New Orleans.

The other way to acquire priority is to register the mark with the USPTO with a bona fide intention to use the mark in commerce. Unlike use of a mark in commerce, registration of a mark with the USPTO gives a party the right to use the mark nationwide, even if actual sales are limited to only a limited area. This right is limited, however, to the extent that the mark is already being used by others within a specific geographic area. If that is the case, then the prior user of the mark retains the right to use that mark within that geographic area; the party registering the mark gets the right to use it everywhere else. So, for example, if I register the mark “Lucky” in connection with the sale of hot dogs, the existing “Lucky” hot dogs in New Orleans retains the right to use the name in New Orleans (assuming that they do not have a preceding registered mark), but I get the right to use it everywhere else.

What type of trademark filings are there?
The primary concern for most people is whether they are filing their mark as an intent to use or an use based mark. Intent to use marks are marks which you wish to preserve as your own, but which you have not begun using in interstate commerce. Use based marks are marks which you have already begun using in inter state commerce. There are other types of trademark filings, which include: certification marks, collective trademarks, defensive trademarks and configuration marks.

When may I use the r in a circle mark?
You may only use the “R” in a circle mark if you have a federally registered trademark.

When may I use the TM mark?
You may use the TM mark next to any trademark or service mark which you are claiming in association with goods or services you are currently providing to third parties.

Do I need to do a trademark search before filing an application?
A trademark search is not required, it is however very advisable. A trademark search is less expensive then the application and it will tell you if you have a chance of having the application approved. In trademark litigation proof of a search which does not show a previously registered mark can lower possible damages if you are found to be infringing on another entities mark.

What is the difference between a trademark and a service mark?
A trademark protects a mark that is associated with the sale of goods. A service mark protects a mark associated with the offering of services.

When may I use my trademark or service mark?
As soon as the search comes back positive you may begin using your mark in commerce. You do not want to use the mark before the search as you might be infringing on some one else’s rights.

Why should I file a trademark?
Federal trademark registration has several benefits:

  • Constructive notice nationwide of the trademark owner’s claim.
  • Evidence of ownership of the trademark.
  • Jurisdiction of federal courts may be invoked.
  • Registration can be used as a basis for obtaining registration in foreign countries.
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

How long does it take to register a trademark?
It is difficult to predict exactly how long it will take an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately three weeks after filing, which will include the serial number of the application. The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.

How long does a trademark registration last?
Technically, if you follow all of the requirements and continue to use a mark it can last forever. For a trademark registration to remain valid, an Affidavit of Use (Section 8 Affidavit) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration.

The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. The registrant must also file a Section 9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.

Can trademark rights be lost?

The rights to a trademark can be lost through abandonment, improper licensing or assignment, or generic use. A trademark is abandoned when its use is discontinued with an intent not to resume its use. Such intent can be inferred from the circumstances. Moreover, non-use for three consecutive years is prima facie evidence of abandonment. The basic idea is that trademark law only protects marks that are being used, and parties are not entitled to warehouse potentially useful marks. So, for example, a recent case held that the Los Angeles Dodgers had abandoned rights to the Brooklyn Dodgers trademark. See Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993).

Trademark rights can also be lost through improper licensing or assignment. Where the use of a trademark is licensed (for example, to a franchisee) without adequate quality control or supervision by the trademark owner, that trademark will be canceled. Similarly, where the rights to a trademark are assigned to another party in gross, without the corresponding sale of any assets, the trademark will be canceled. The rationale for these rules is that, under these situations, the trademark no longer serves its purpose of identifying the goods of a particular provider.

Trademark rights can also be lost through generic use. Sometimes, trademarks that are originally distinctive can become generic over time, thereby losing its trademark protection. Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938). A word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer. So, for example, the term “thermos” has become a generic term and is no longer entitled to trademark protection. Although it once denoted a specific manufacturer, the term now stands for the general type of product. Similarly, both “aspirin” and “cellophane” have been held to be generic. Bayer Co. v. United Drug Co., 272 F.505 (S.D.N.Y. 1921). In deciding whether a term is generic, courts will often look to dictionary definitions, the use of the term in newspapers and magazines, and any evidence of attempts by the trademark owner to police its mark.

What constitutes trademark infringement?
If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement. 15 U.S.C. 1114, 1125. The standard is “likelihood of confusion.” To be more specific, the use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. In deciding whether consumers are likely to be confused, the courts will typically look to a number of factors, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant’s intent.

So, for example, the use of an identical mark on the same product would clearly constitute infringement. Using a very similar mark on the same product may also give rise to a claim of infringement, if the marks are close enough in sound, appearance, or meaning so as to cause confusion. On the other end of the spectrum, using the same term on a completely unrelated product will not likely give rise to an infringement claim.

What constitutes trademark dilution
In addition to bringing an action for infringement, owners of trademarks can also bring an action for trademark dilution under either federal or state law. Under federal law, a dilution claim can be brought only if the mark is “famous.” In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered. 15 U.S.C. 1125(c). Kodak, Exxon, and Xerox are all examples of famous marks. Under state law, a mark need not be famous in order to give rise to a dilution claim. Instead, dilution is available if: (1) the mark has “selling power” or, in other words, a distinctive quality; and (2) the two marks are substantially similar. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989).

Once the prerequisites for a dilution claim are satisfied, the owner of a mark can bring an action against any use of that mark that dilutes the distinctive quality of that mark, either through “blurring” or “tarnishment” of that mark; unlike an infringement claim, likelihood of confusion is not necessary. Blurring occurs when the power of the mark is weakened through its identification with dissimilar goods. For example, Kodak brand bicycles or Xerox brand cigarettes. Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark. Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. So, for example, in a recent case, ToysRUs successfully brought a tarnishment claim against adultsrus.com, a pornographic web-site. Toys “R” Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996).

What other potential causes of action are there?
Although likelihood of confusion and dilution are the two main trademark-related causes of action, there exist a number of additional state-law causes of action under state unfair competition law: passing off, contributory passing off, reverse passing off, and misappropriation. Passing off occurs when the defendant tries to pass off its product as the plaintiff’s product. Contributory passing off occurs when the defendant assists or induces another (typically a retailer) to pass of its product as the plaintiff’s product. Reverse passing off occurs when the defendant tries to pass off the plaintiff’s product as its own. Finally, misappropriation is a highly unstable, but potentially fruitful source of additional trademark-related claims.

What defenses are there to trademark infringement or dilution?
Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody. Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary, meaning, and no consumer confusion is likely to result. So, for example, a cereal manufacturer may be able to describe its cereal as consisting of “all bran,” without infringing upon Kelloggs’ rights in the mark “All Bran.” Such a use is purely descriptive, and does not invoke the secondary meaning of the mark. Similarly, in one case, a court held that the defendant’s use of “fish fry” to describe a batter coating for fish was fair use and did not infringe upon the plaintiff’s mark “Fish-Fri.” Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). Such uses are privileged because they use the terms only in their purely descriptive sense.

Some courts have recognized a somewhat different, but closely-related, fair-use defense, called nominative use. Nominative use occurs when use of a term is necessary for purposes of identifying another producer’s product, not the user’s own product. For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers to vote for their favorite member of the music group New Kids on the Block. The New Kids on the Block sued USA Today for trademark infringement. The court held that the use of the trademark “New Kids on the Block” was a privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement or sponsorship by the group. The basic idea is that use of a trademark is sometimes necessary to identify and talk about another party’s products and services. When the above conditions are met, such a use will be privileged. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

Finally, certain parodies of trademarks may be permissible if they are not too directly tied to commercial use. The basic idea here is that artistic and editorial parodies of trademarks serve a valuable critical function, and that this critical function is entitled to some degree of First Amendment protection. The courts have adopted different ways of incorporating such First Amendment interests into the analysis. For example, some courts have applied the general “likelihood of confusion” analysis, using the First Amendment as a factor in the analysis. Other courts have expressly balanced First Amendment considerations against the degree of likely confusion. Still other courts have held that the First Amendment effectively trumps trademark law, under certain circumstances. In general, however, the courts appear to be more sympathetic to the extent that parodies are less commercial, and less sympathetic to the extent that parodies involve commercial use of the mark.

So, for example, a risqué parody of an L.L. Bean magazine advertisement was found not to constitute infringement. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. 1987). Similarly, the use of a pig-like character named “Spa’am” in a Muppet movie was found not to violate Hormel’s rights in the trademark “Spam.” Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996). On the other hand, “Gucchie Goo” diaper bags were found not to be protected under the parody defense Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y. 1977). Similarly, posters bearing the logo “Enjoy Cocaine” were found to violate the rights of Coca-Cola in the slogan “Enjoy Coca-Cola”. Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). Thus, although the courts recognize a parody defense, the precise contours of such a defense are difficult to outline with any precision.

What remedies are there for trademark infringement and/or dilution?
Successful plaintiffs are entitled to a wide range of remedies under federal law. Such plaintiffs are routinely awarded injunctions against further infringing or diluting use of the trademark. 15 U.S.C. 1116(a). In trademark infringement suits, monetary relief may also be available, including: (1) defendant’s profits, (2) damages sustained by the plaintiff, and (3) the costs of the action. 15 U.S.C. 1117(a). Damages may be trebled upon showing of bad faith. In trademark dilution suits, however, damages are available only if the defendant willfully traded on the plaintiff’s goodwill in using the mark. Otherwise, plaintiffs in a dilution action are limited to injunctive relief. 15 U.S.C. 1125(c).

The symbols ®, TM and SM provide notice to the world that you are claiming trademark rights in any mark using these symbols. You may use the TM on marks identifying goods, and the SM on marks identifying services. You need not have a federal or state registration to use the TM or SM symbols. However, the ® symbol, which provides “statutory notice” can only be used if your mark is federally registered on either the Principal or Supplemental Registers maintained by the United States Patent and Trademark Office (USPTO).

You do not need to use the ® symbol in order to provide notice of your trademark rights. You may also use the phrase, “Reg. U.S. Pat. & Tm. Off.” or “Registered in the U.S. Patent and Trademark Office.” Or, you may place the phrase at the bottom of a page when using an asterisk next to the mark that refers the reader to the phrase at the bottom. Thus the NutraSweet Company could put an asterisk next to their red & white swirl logo, and a phrase at the bottom or side of a page that read: “Reg. U.S. Pat. & Tm. Off.” or “NutraSweet is a registered trademark of NutraSweet Co.”

Advantages providing notice:
There is no requirement that you use any of the symbols, however there are two important advantages to using them. First, the symbols provide notice to the world that you are claiming the symbols as trademarks, and this will deter others from attempting to use the name for their own business. Second, if you ever find yourself in a lawsuit for infringement of your mark, and you haven’t used the statutory notice (i.e. the ® symbol), then you won’t be able to sue for damages or profits unless you can prove that the infringer had actual notice of your trademark rights.

Unauthorized use of the ® symbol
Unauthorized use of the ® can result in penalties, unless you can show that the unauthorized use was a good-faith mistake. Inadvertent unauthorized use can occur when the USPTO cancels your mark without your knowledge. It is quite likely that your labels and materials will still display the ® when the cancellation issues, thereby leaving you vulnerable to an attack that you were acting in bad faith and should be penalized for unauthorized use.

How are characters like a hyphen treated in a trademark. For example if “i-name” is registered could I register “iname”
The pronunciation of the trademark is the most controlling factor. So whether or not similar marks have dashes separating elements of one or the other mark wouldn’t make much difference in deciding whether there would be a likelihood of confusion in the market place.

I’ve searched the USPTO site and came across an existing application for the same TM name. My question is at what point is the application considered abandoned?
A trademark application is considered abandoned when there is no response to an office action within the statutory six-month response period. However, the application is not noted as abandoned for approximately 2 months following the expiration of the response period. This is done to allow a response that was filed on the last day of the response period time to be associated with the file. It appears that this application should be noted as abandoned but until that is posted as the official status you cannot assume that is correct. You may check the status of this application on the TARR system at the USPTO website. Since you are not the applicant in this application you may not contact the Examining Attorney assigned to the application for further information.

So if the TM application is officially abandon 8 months after last correspondence than I could file an application and not be refused?
That’s much too broad a statement to say “yes” to. There are many factors that go into allowing or refusing registration of a mark. It is also possible for an abandoned application to be revived. You can submit your application at any time but, of course, you take the chance of refusal. If your application is refused because this prior-filed application was revived and the Examining Attorney finds there is a likelihood of confusion between it and your application, you will be refused registration until prosecution of the prior-filed application is complete.

How does one find out the status of a dead trademark & how to take ownership if available?
You can find the status of a trademark application at the USPTO website using TARR. A dead or abandoned status for a trademark application means that specific application is no longer under prosecution within the USPTO, and would not be used as a bar against your filing. It does not necessarily mean that there are not other marks that the trademark examining attorney would cite. It is also possible to revive an abandoned application (for example, if the USPTO declared the application abandoned for failure of the applicant to respond to an Office action, but the applicant later proved that a response was sent and the USPTO simply failed to match it with the file in a timely manner, then the case could be revived). Also, regardless of the status of an application within the USPTO, the owner may still claim common law rights, i.e, the mark may still be in use in commerce.

Having submitted a TM application to the USPTO for the US, I now want to use the Madrid Protocol application to apply in other countries. If I mark Russia as one of the countries in which I want to register, will I (1) have coverage for translation of my mark into Russian, (2) have coverage in English only, or (3) both?
The mark will appear in Russia (or any other country to which you extend your application) in the language that it appears in your underlying US application or registration – in this case, English. The mark itself is not translated into the language of the receiving country.

I have a mark that I am not using yet in commerce, can I file a trademark application with the USPTO now or should I wait until I am actually using it?
You can file an intent to use (ITU) application at any time – provided you have a bona fide intent to use the mark in the application in commerce and that use will happen within about four years of filing your application. While there is an extra step with an additional cost if you file an ITU application, you have the benefit of being “in line” before you would be if you waited until you were actually using the mark in commerce.

Can an individual apply for a United States trademark? Or do I have to incorporate a company first, before applying for a trademark?
An individual may apply to register a trademark. You do not have to be a corporation or other formally organized legal entity to apply. While researching trademark names for a new product, I found several companies with live and dead trademark names that are identical. First, what is the difference between a live and dead trademark name? Secondly, can I still trademark my name if the product is in a different category (i.e. computer goods versus clothing)?
A live trademark registration means that the registrant has filed all necessary maintenance documents and the trademark remains viable. A dead trademark registration means that the registrant has not filed the necessary documents and the registration has lapsed. It does not necessarily mean that the trademark owner is no longer using the mark – it’s simply not registered.

To answer your second question, similar trademark registrations can co-exist on the register so long as the goods or services identified in the registration are adequately different so as not to raise a likelihood of confusion in the purchasing public. That means, the public wouldn’t think that those goods and services are emanating from or sponsored by the same commercial entity. The class has no impact on this – it’s the actual goods or services recited in the registrations that control this determination.

We want to apply for a trademark, but a trademark and a service mark already exist with the same name, but with a space in between the two words. They are both in different classes compared to the class we wish to file the service mark. What is the probability of getting it approved?
The standard used by the USPTO when examining marks is whether the marks have a similar sound, look or meaning and whether the goods or services are similar or related to each other. Also, keep in mind that marks approved by the USPTO attorneys are then published for opposiion. Any party that believes the mark should not register can bring an opposition proceeding. The decision whether or not to apply under these circumstances is up to you, and consulting with a trademark attorney for an opinion is recommended.

Does the US Trademark Office have a similar class registration system as they do in Europe? For example, say I registered JAMES as the name of a drink could somebody come and register it in another class as they can in Europe?
The USPTO uses the Nice Classification system which is the same classification system used in Europe and in many other countries in the world. However, classification does not control one’s right. The actual language of the goods or services in the registration defines the parameters of the scope of protection of a registration. Therefore, in the US, a similar mark could register in more than one class or even in the same class if the goods or services are different enough to avoid confusion in the marketplace.

Can anyone trademark something I have already begun and am using in commerce? Can’t I oppose them so they cannot take away my business?
Someone can apply to register a trademark that you may already be using particularly if they have no knowledge of your use. You may oppose the registration of that mark after it publishes for purposes of opposition. For further information, please send us an email at bambi@bfwpc.com or call us toll free at 1-888-388-9614.

When fighting an opposition to a TM application, should you have an independent company perform a survey to show there is no likelihood of confusion? Is it OK to conduct a survey yourself? Is a survey necessary at all?
Whether or not to have a survey done is a huge legal question with many ramifications. It’s a question that you should discuss with a trademark attorney. For further information, please send us an email at bambi@bfwpc.com or call us toll free at 1-888-388-9614.

Which is the best to file right away, a trademark, a service mark or an intent to use the service mark and/or the trademark?
You can file them all at the same time. There’s no order requirement or advantage.

Is there a link where we can get the status of a US trademark application?
Yes, go to http://tarr.uspto.gov/.

How can I report someone who fraudulently represents the usage of a TM that is not registered or has any form of a corporate presence in any US jurisdiction?T
he TM indication is just a notation by the user that he or she believes that this mark is their exclusive property. However, it does not indicate that there has been any approval or recognition of the terminology as a valid trademark or service mark under the US Trademark Act. For further information, please send us an email at bambi@bfwpc.com or call us toll free at 1-888-388-9614.

Can I report someone infringing my trademarked domain to a search engine? If so, how?
Yes, you can report the infringement to the search engine. Again, this is a complex area and you should consider discussing this with a trademark attorney. In regards to the second part of your question, here is an example of how one might report alleged trademark infringement to Google:

Google: Trademark Complaint Procedure
Information on how to file a trademark infringement notice/report with Google, what Google requires, the steps involved, and more. See also: Google AdWords Trademark Complaint Center and Google AdSense for Domains Complaint Center. [Web site part of Google Terms of Service (TOS).]

For further information, please send us an email at bambi@bfwpc.com or call us toll free at 1-888-388-9614.

Last Modified: December 13th, 2009