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June 26, 1995
4 Min Read
Federal trademark law is the trademark system of choice both because of the supremacy of federal law and its interstate coverage. To properly take advantage of the system, a search should be made before you decide upon a trademark name. If several names are available, an abbreviated federal database search can be accomplished, without regard to class, to enable a quick comparison of which trademarks (or portions of them) are matched by other applied-for and registered federal trademarks. The cost of this abbreviated search for a small list of proposed trademarks is typically around $200. Not only will results reveal direct conflicts, they will also indicate the general popularity of proposed marks.
Proper trademarks. Proper trademarks must not be descriptive of the goods, as, for example, generic terms. Neither should they be misdescriptive, directly indicating goods other than those the mark describes. Geographic descriptions or misdescriptions are also verboten. A few other restrictions also apply.
After the abbreviated search, the best trademark is selected for a full search and opinion. Additional information, such as the expected trademark class of the goods and look-alike, sound-alike, and similarly spelled variations on the trademark, will be included in the search. Next, the attorney reviews the search to gauge how close it is to registered and applied-for federal and state trademarks and common law names. He or she will consider several parameters. For example, the proposed trademark and a discovered trademark that has a close, but inexact, spelling will be examined more critically if they are in the same class or common industry. If the lawyer renders a negative opinion, a full search should be made on the next most desirable name identified in the abbreviated search. An abbreviated search cannot guarantee that the full search will be problem-free, but it increases the probability that the trademark name selected as a result will garner a favorable opinion. A full search and opinion letter can cost three to four times that of the abbreviated search. Avoiding such a search justifies the cost.
When the trademark opinion looks good, the federal trademark application is prepared. The application requires the trademark owner's identity; the identity and capacity of the individual signing for a corporate owner; a description of the goods for which the trademark is sought; the dates of first use and first use in interstate commerce (a registration requirement); and three specimens showing the mark as it will be used with the goods.
Going public. Once filed, the Patent & Trademark Office enters the trademark application into its computer system, and the public can gain access to it
On average, the trademark examiner takes up the application between nine months to a year after filing. Unopposed, the registration will issue from three to five months after publication. For an "intent to use" application, no registration can occur until the applicant actually begins using the trademark and files a statement of use, including the dates of use and specimens. Registration begins shortly after the statement of use is accepted. Although a search cannot give a 100% assurance of discovering all prior users, it does improve your chances of finding future problems.
Q: What happens if the examiner finds someone has used the trademark after it has been filed?
A: If such is discovered in the search, an office action communication will then be sent to the applicant which invites argument or other action. What action the applicant takes depends upon the case's particularities and the results of the trademark examiner's search. For example, if the applicant's date of first use in interstate commerce is earlier than that for a registered trademark, the applicant may be able to petition to strip the registrant of registration. In a trademark office action, the applicant has six months to respond. If the trademark examiner allows the application, the trademark is published in the trademark gazetter, which gives others 60 days to oppose the registration of the applicant's mark.
Q: After the trademark is registered, is there anything else that needs to be done?
A: Yes. Assuming the trademark is used continuously after registration, two important filings should be made within the sixth year. File a Section 8 affidavit to indicate that the mark is still being used. This prevents its cancellation from the register. Then file a Section 15 affidavit of incontestability, which insulates the trademark from being cancelled by others who may have used the trademark in the past. The long time period between the selection of a trademark and the filing of the Section 15 affidavit makes a search important. Products entering the stream of commerce may flow through many unidentified channels of distribution. Often, the only way in which a consumer can contact the maker of the goods is through the use of the trademark name.
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