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What is a trademark and how does one protect a trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies a source of goods and services and may also distinguish such goods and services from those of others.  When a mark identifies a service rather than a good it is termed more precisely a “service mark”.  Nonetheless, the term “trademark” is often used also to refer to both trademarks and service marks.  Finally, the term “mark” is also used collectively to refer to both trademarks and service marks.

Trademarks are protected on either a common law or statutory basis.  On a common law basis, trademarks are generally protected by merely using the mark in commerce prior in time to others.  In addition to common law protection, certain laws and statutes provide for trademark protection by way of registration of a trademark.  To register a trademark one is required to file a trademark application.  One may file an application on a state, national, or international basis, depending on the breadth of coverage needed for one’s business circumstances.  In this article, we briefly address the process of protecting a trademark only a federal basis.

With respect to federal trademark applications, trademark applications are filed with the United States Patent and Trademark Office (“USPTO”) and may be filed on either an intent-to-use (“ITU”) or actual basis.  An actual use application is filed when the trademark has actually been used in commerce.  An ITU application is filed when a trademark has not yet been used in commerce.  An ITU application requires the additional step of filing a document called a “Statement of Use” (“SOU”) within six (6) months of a Notice of Allowance (“NOA”).  The SOU identifies the first date of use of a trademark ever, and a first date of use of a trademark in commerce for each category of goods and services listed in the application.

Specimens of use to prove use in commerce are filed along with the SOU.  For service marks a specimen may be a website, advertisement, brochure, or other such evidence proving use of the mark in commerce in connection with the services listed in the application.   For goods, a specimen may be labeling, packaging, or other such evidence proving the mark being used in connection with the goods.  When filing an actual use application no SOU is necessary because specimens are submitted at the outset.

The USPTO uses the international system of categorizing the source of goods and services associated with a trademark. Each mark is filed within one or more categories of goods and services.  For each category of goods and services, one must provide examples of how the mark is being used as a trademark in direct connection with the goods and/or services you are marketing.  It should be clear to the trademark examiner from looking at the specimen that the mark is being used in direct connection with the goods and/or services being claimed.

In the prosecution phase of the filing, the USPTO trademark examiner will examine the mark and may or may not allow the mark to publish for registration.  If the trademark examiner has objections to registering the mark then he or she will issue an “office action” stating the objections to the application.  The objections must be addressed within the timeframe provided in the office action, generally six (6) months from the date of the office action.  If the objections are overcome, the mark will be published in the Trademark Gazette, a USPTO publication for trademarks, for a period of thirty (30) days.

During this period of time, others may try to object or extend the period of time to object to the mark if they believe they will be damaged as a result of the mark’s registration.  If there are objections then further proceedings, including proceedings before the Trademark Trial and Appeal Board (“TTAB”) may be initiated to resolve the outstanding issues.  On the other hand, if there are no objections the trademark will eventually register and the trademark application will receive a certificate of registration.  

The trademark application process generally takes about between twelve (12) to eighteen (18) months from start to finish. The exact time depends on many factors including the trademark examiner’s docket, whether any office actions are issued, and whether any objections are filed.

At McConnell & Sneed, we assist clients in trademark protection.  If you need assistance with protecting your trademark on a federal or state (Georgia/North Carolina only) basis, please contact us for assistance.