STEPS TO A  STRONG TRADEMARK

Trademarks are any word, term, name, symbol, or device, or any combination thereof  that are used in commerce as brand names, tag lines, slogans, non-functional and distinctive packaging and labeling designs, etc. to indicate the source of a product or service. The basic steps are shown below that Not Just Patents® Legal Services recommends for getting a strong trademark. It is a longer process than is often seen on internet pages. This process is more complete because it considers issues like inherent distinctiveness, right to use, right to register, protection after registration and other issues that link a strong trademark to success. A quick and dirty application process that does not take trademark law and pertinent facts into account may lead to a mark that is abandoned, a mark that cannot be claimed exclusively by the registrant or ends up on the Supplemental Register, a mark that is opposed, a mark that is canceled, a mark that is not protectable, a mark with a fraudulent application that is void, or other problems that businesses should want to avoid.


WHY TAKE THE TIME AND MONEY TO GET HELP ON MY TRADEMARK REGISTRATION?

Purchasing decisions are continually influenced by trademarks by distinguishing products from one another and indicating a level of authenticity and quality about products and services. The International Trademark Association calls a trademark the most efficient commercial tool ever devised.

Creating and protecting an earned legal right should be a very important goal for all businesses. Being able to associate a product or service with ®  to designate a federally registered trademark is a strong marketing tool. Not Just Patents® Legal Services incorporates strategies for success into trademark registrations. The answers to these questions should be considered before applying for a trademark registration if a strong trademark is desired as a result of the registration.

  • Can I claim exclusive rights to use this trademark?
  • Does this trademark meet the qualifications for being registered on the USPTO Principal Register?
  • Is this trademark strong enough that others would want to license it from me?
  • Does this trademark have potential to extend to other product lines?
  • Is this mark inherently distinctive?
  • Are there others users of this mark that could prevent me from using this mark or would sue me or prevent me from getting federal registration because they can prove they are prior users?
  • Are there valid reasons for someone to oppose or cancel the mark because the mark doesn’t qualify for protection or because they have superior rights?
  • Would the USPTO find a likelihood of confusion with someone else’s registered or pending trademark and prevent my registration of this mark?
  • Would a court enforce the use of this trademark?
  • Do I have to somehow acquire distinctiveness for this mark before it would be recognized as being protectable or be registered on the Principal Register?
  • Does this mark use such common terms that it would be called a weak trademark?
  • Is this mark descriptive or deceptive or geographically descriptive?
  • Do I use the mark in a way that increases my rights or am I using it in a way where it does not function as a trademark?

The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, 189,687 applications were abandoned in 2009 (about 44% of disposals). All of the above questions involve fact-related answers. Knowing the rules is really important, being able to apply the rules to facts is even better. Call us, we can help you to create and register a strong trademark.


Not Just Patents® is a registered trademark of Not Just Patents LLC, R/N 3556868 on the Principal Register.



Aim Higher®--Plan for a Strong Trademark

STEP 1 CREATE A VALID MARK

(we suggest a strong mark) to indicate the source  of goods (trademark) and/or services (service mark).

There are several different Types of Trademark Registrations

    * Trademarks associated with goods or products;

    * Service marks associated with the delivery of services;

    * Certification marks associated by the characteristics of someone’s goods or services; and

    * Collective marks indicated by membership in an organization.

There are usual types of trademarks: Word Marks (standard character format), Design Marks (stylized format, 2- or 3-dimensional); and Composite of Words & Design (words in stylized format protected only as shown with a design).

There are also unusual types of trademarks including:

    * Shape (example: Bottle shape for wine, cola);

    * Color (example: Pink color for insulation);

    * Sound (example: TiVo-The mark consists of a synthesized vibraphone-like sound playing the musical note middle B, just below middle C, and the musical note B, just above middle C simultaneously);

    * Scent (example: Medicated transdermal patches where the mark is a scent mark having a minty scent by mixture of highly concentrated methyl salicylate and menthol.); and

    * Motion (example: Flying pegasus for movie studios).

Note: The general terms ‘trademark’ or ‘mark’ are often used to represent all categories of trademarks. BUT when applying for USPTO or state trademark registration, the applicant should know which category (trademark, service mark, certification mark, collective membership mark, collective mark) is being claimed so that the right type of specimen can be submitted.


What is a Strong Trademark? Distinctiveness is the measure of the inherent strength of a mark. A distinctive mark is one that does not describe the product or service directly, is not used by competitors to describe their product, and is unique. Words/terms that are created rather than pulled from dictionary use or words/terms that are used outside of their normal meaning can be the most distinctive. See inherentlydistinctive.com for more information.

The stronger the trademark the greater protection received from the USPTO and courts.


STEP 2 VERIFY THE ‘RIGHT TO USE’  The right to use a a mark is determined by verifying no prior owner has acquired the superior rights by use or by registration in federal, state or common law markets (registered and unregistered). Common law rights for unregistered marks are geographic in nature and belong to the first user of a non-conflicting mark in commerce. A trademark applicant has a legal duty to select a mark which is totally dissimilar to trademarks already being used.


STEP 3 THE RIGHT TO REGISTER  a mark with the USPTO is determined by the Trademark Act and USPTO rules and guidelines. Verifying that you have the right to register before you apply may avoid or reduce refusals & office actions, and can avoid investing time and good will in a name or use of a name that cannot be federally registered on the Principal Register. One example of a potential trademark that will cause problems at the USPTO because of the right to register is geographically descriptive or geographically misdescriptive trademarks. Other examples of marks that are difficult or impossible to register are descriptive trademarks or words or designs that do not function as a trademark.


STEP 4 USE THE MARK IN COMMERCE to gain common law rights and as a precursor to registration. State registrations require bona fide use in commerce before registration (an extension of common law rights). The USPTO’s most common filing basis-1A (about 50%) is for marks already in use in the U.S. If the mark is not yet in use but soon will be in use, one can file an application for an ‘INTENT TO USE’ IN COMMERCE.





STEP 5 SPECIMEN SELECTION & REVIEW

Specimens must show the mark as it is seen by the purchasing public; show the mark functioning as a mark; and provide evidence for registration. Many applications are refused because the specimens do not show a trademark used correctly, do not show the same mark that was submitted in the drawing or show an ® on the label before the trademark has actually been registered.


STEP 6 IDENTIFICATION OF GOODS AND SERVICES. The identification of goods and services must be specific, definite, clear, accurate, and concise. Misidentification of goods and services is the most common issue in trademark rejections.


STEP 7 APPLY FOR TRADEMARK REGISTRATION ®

As a business grows, success in the marketplace may depend on how well the creativity that fostered that growth is protected. Federal Trademark Registration ® is an important way to protect brands, logos, tag lines, slogans and designs.


Not Just Patents® Legal Services can help you plan a registration strategy that takes into account the facts of your business to help ensure success. Rushing or zooming through a trademark application using fill-in-the-blank services may result in a refusal that could have been avoided. Unfortunately, these form filling services do not use their own names on applications so it is impossible to track their success and failures. A reputable trademark attorney’s record can be verified in moments at the USPTO.gov web site.


STEP ? RECEIVE OFFICE ACTION(S) FROM USPTO (we try to avoid this step!)

There are two basic possibilities: No Objections- the Trademark examiner allows the mark (no Office Action) and it is Published for Opposition (see below); or Refusal-examiner refuses the mark for not meeting requirements for federal registration and issues an Office Action giving the applicant a chance to respond to issues raised.

Not Just Patents® Legal Services can help you avoid office actions and get a faster registration. We have registered marks start to finish in as fast as 7 months. We have successfully answered office actions for applicants who submitted their own applications that were refused or were zoomed by a filing service and refused and have answered office actions on the same day requested. We cannot guarantee same day service 365 days a year so try to plan ahead!


STEP 8 APPLICANT’S RESPONSE TO OFFICE ACTION   Applicants (or their representatives) must address each issue raised by the examining attorney and responses to office actions must be received within 6 months from the mailing date on the office action. If applicants (or their representatives) do not submit a timely response to an office action, their applications will be declared abandoned. See more . . .


STEP 9 PUBLICATION FOR OPPOSITION or PUBLISHED FOR OPPOSITION

Marks that have been approved for the Principal Register are published in the Trademark Official Gazette. An OPPOSITION is a proceeding in which one party is seeking to prevent registration of another party's trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, he/she can file an opposition. For more information, see TTAB Facts and Questions.  

(A CANCELLATION is a proceeding in which a party seeks to cancel an existing registration of a mark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel.)


STEP 10 CERTIFICATE OF  REGISTRATION (for actual use) or NOTICE OF ALLOWANCE (intended use). If there is no opposition, the trademark will register and the applicant will receive a Certificate of Registration. If the filing was for an Intent-to-Use, the applicant will receive a Notice of Allowance and has 6 months to file a Statement of Use (or Amendment) or an extension or the application will be declared abandoned. The USPTO does NOT currently require an issuance fee (like some other countries).


STEP 11 TRADEMARK MARKING

The ® symbol can only be used (for the U.S.) after a USPTO registration has been issued and only for the goods or services for which it was registered. Note that the ® symbol cannot yet be used after the Notice of Allowance, the mark must first finish the registration process.


STEP 12 ENFORCEMENT/MAINTENANCE

The USPTO does not enforce rights to a trademark. It is up to the owner of a mark to monitor and protect their own rights through civil or criminal means. Trademarks may be protected from imported counterfeits. See Anti-Counterfeit Enforcement for more information.

A trademark owner must maintain a trademark by continuing to use the trademark in commerce and by filing for Continued Use or Excusable Nonuse and Renewal at the appropriate times.


STEP 13 (optional for Principal Registrations, not available for Supplemental Registrations) RECORD TRADEMARK OR TRADE NAME (OR TRADE STYLE) WITH U.S. CUSTOMS AND BORDER PROTECTION

Trademarks that have been registered on the USPTO Trademark Principal Register can be recorded and protected through U.S. Customs and Border Protection and through the International Trade Commission.


PublishedForOpposition.com


Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC, PO Box 18716, Minneapolis, MN 55418  1-651-500-7590    WP@NJP.legal


Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us