Most business or general attorneys regard intellectual property (IP) as an enigma. This is especially true when it comes to patent practice. After all, there is a separate “patent bar” required for representing patent applicants in the U.S. Patent & Trademark Office (“PTO”). By contrast, a trademark applicant can be represented by any lawyer. Accordingly, all lawyers can potentially file trademark applications. For those who want to venture into trademark law, and in particular for those who want to perform trademark searches and/or file trademark applications, I am writing this article to help you spot important issues before it is too late. Due to the Internet, filing trademark applications can be a fairly simple matter, especially once you have done one or two. This is especially true for trademark applications because the PTO recently created a system called TEAS (Trademark Electronic Application System), which enables preparing and filing applications via the Internet. In fact, to encourage electronic filing, effective June 24, 2003, if you file a trademark application by express mail (the current typical manner), you will no longer get the benefit of the date of deposit in express mail as the filing date. The PTO will only give you the date of actual receipt.
The PTO’s web site for trademarks is at www.uspto.gov/main/trademarks.htm. To electronically file, you select TEAS. The steps for filing are relatively easy and you can even pay by credit card. However, due to the simplicity of electronic filing, critical determinations can readily be overlooked. The danger of electronically filing trademark applications is that one might take actions prematurely, e.g., before a full investigation of other prior marks. Client do-ityourselfers can save themselves attorney’s fees, but end up with an application of little or no value.
The most important work comes before an application is even filed. Searching, clearing and selecting the mark are critical. In addition, describing the goods and/or services, selecting the type of application, (i.e., intent-to-use or use based), and whether to file state and/or Federal trademark applications. One must also understand the difference between specimens and drawings. The PTO, in the case of any conflict between the drawings and specimen and/or description of the mark, considers the mark to be what is shown in the “drawing.” For example, when the drawing is simply a typed form of the mark (known as “block letter form”) the application is for the broadest protection. Alternatively, the drawing may include words with a logo or stylized words (e.g., written in script such as the famous Coca-Cola® mark). The registration that will issue will be on the words plus logo as shown in the drawing. Accordingly, all specimens, i.e., examples of how you use the mark, must contain the words and logo as shown in the drawing. When you file in block letter form, the specimens can use those words in any form, including with a logo, coloring, script, etc.
The protection you obtain from a trademark registration may last forever, or at least many years. One Coca-Cola® registration is about 110 years old. It makes sense to file on the right mark upfront. In addition, the time invested from the date of filing a trademark application or from the date of first use, is critical in determining your client’s rights. The importance of use and selection of the right trademark is thus evident. Every five years after registration, use of the mark as shown in the drawing must be proven in order to maintain the registration. If the client changes the style of the mark, the registration may become worthless if it is not in block form.
Trademarks can be searched on the same PTO web site by selecting “TESS” (Trademark Electronic Search System). First and foremost, understand that the TESS database is limited to federal trademark applications and registrations. It does not include many other trademarks, including state trademark registrations, “common law” users (those who use marks but never applied for registration), and domain names. These search areas can find users with prior rights, which it is best to do before filing an application. A small change to the mark before filing (and before launching the product or service) could avoid serious problems later.
A TESS search is an excellent “screening” tool in an ideal trademark selection process, as follows: create a list of potential trademarks; search each on TESS; pick the safest trademark; then perform a “full search,” i.e., a search of state registrations, common law users and domain names on that mark.
When searching, look for marks that are close in spelling and sound, and sometimes in meaning. Look for marks in related goods or services, not just the goods or services with which the client will use the mark. For example, if searching GOTCHA for hats, search all clothing, helmets and headbands. If the hats are sports-style caps, you may also want or need to search sporting goods. You may need to search for just “GOT” and just “CHA” so you get similar marks. You would not want to miss “GOT CHA” (as two words) or even “GOT YOU.” If the word or phrase is not that common, it may be useful to search for a close word or phrase without any restriction on the goods or services.
You may need to adjust the search strategy depending on the results. For example, if no one is using “GOT” in clothing, you may need to search “GET.” You would not want to stop searching at “GOT”, then find out that there is someone using “GET YAH” on caps after you have invested not only in a federal registration, but also in a national roll out. There are many more considerations in searching, but the point is simply that careful search and mark selection can save a lot of headaches down the road. There are also important factors to consider in preparing the trademark application itself.
It is important in any trademark search and selection process to understand how infringement is determined. Trademark infringement is determined by considering eight factors (in some circuits the factors vary). The usual, most important three factors are the similarity of the marks in appearance, sound, meaning or otherwise; the relation of the goods and/or services of the marks; and the strength of the first mark. For example, Xerox® will obviously get much greater protection than an internet business named E- Shoppe opened last week due to long use, extensive sales, and advertising of Xerox® is also strong because “Xerox” has nothing to do with the goods (copiers).
Remember: the most important part of preparing a trademark application is the search and selection process prior to filing.