The Wild, Wild PTO
Understanding Trademark Registration

By Stacy C. Friends

?So you want to protect your band or company name, but you’re not quite sure how to go about it? Names for products or services such as sound recordings or entertainment services are called trademarks or service marks (from now on, we’ll just call them trademarks, or “marks”). Trademarks are protected under a federal law which exists to prevent consumer confusion in the marketplace. The idea is that consumers should be able to associate a trademark with a particular company as the source of the goods or services in question. If two marks are too similar for similar goods or services, the public may be confused between the two.
You can establish trademark rights simply by using your mark in commerce in connection with your goods or services. However, if you are using your mark in more than one state, you may be able to federally register your mark with the US Patent & Trademark Office (PTO). This gives you more rights and benefits, such as notice to the public of your rights, the right to pursue infringers in federal court, the right to pursue counterfeiters by using the US Customs Service, the right to base a foreign application on your US application, and a presumption of validity of your trademark rights. However, this process is expensive and fraught with difficulties. This article is not meant to constitute legal advice or give you false confidence to apply yourself, but to provide a basic understanding of the process and costs involved for your planning and budgeting purposes.

The Two Golden Rules for Trademarks:
1. The Mark Must Be Distinctive. You cannot register a descriptive mark, i.e. “Hip Hop Records” for hip-hop music (there are some exceptions to this, but this is complicated and really, best avoided). So be creative when choosing your name. The best marks are invented, such as XEROX(tm), or arbitrary — a real word that has no relation to the goods — for example, Apple(tm) for computers. Suggestive marks are also protectable: for example, Nike(tm) (goddess of victory) for athletic gear or Coppertone(tm) for sunscreen.

2. The Mark Cannot Be Similar to an Existing Mark for Similar Goods or Services. As mentioned above, trademark law does not allow the existence of marks that would create a “likelihood of confusion” for consumers as to the source of the goods or services. For example, if someone already registered “Moon Rock” for CDs and you wanted to register “Moon Stone” for sound recordings, this would probably not be allowed because consumers might confuse the two. This means that before you make a final decision about your mark and apply to register it, you should do a search to make sure there is no one already using it and nothing similar already on the PTO Register. You can check simply and inexpensively by searching the PTO database and the internet, or you can order a professional search report from a company that specializes in this, which is expensive but more comprehensive. You are looking for people using the mark before you, because here in the US, in general, the senior user wins.

Understanding the Process and Terminology
Almost all trademark applications these days are filed electronically using the PTO’s online filing system — but beware! Although this looks easy, the PTO has many, many rules and peculiarities, a complicated process and a lot of special terminology that no non-trademark attorney could possibly be expected to understand. You should consider hiring an experienced trademark attorney to help you navigate the process. There are many attorneys who specialize in this area; you can search the internet or contact your local bar association or other attorneys for a referral. (See Directory, next page.)

The Application: You first need to decide what your “filing basis” is. If you are already using your mark in interstate commerce, you will file a “Use” application. To file this type of application, you will need to file specimens of use (in .jpg format) and your dates of first use. Specimens could be digital photographs of the goods themselves or for services, snapshots of your website. There are many other kinds of acceptable specimens. If you are not using the mark yet, but want to “reserve” it, you can file an “Intent to Use” application. This gives you some time to actually use the mark and submit your specimens to the PTO.

Application Requirements: Applicant name, address and type and state of entity (i.e. a Massachusetts corporation), the mark (if it is a logo you will need a .jpg), the class of goods or services (all goods and services are assigned a specific number), the description of the goods or services, the dates of first use and specimens of use for a “Use” application, the name, title and email address of whoever is signing the application, and of course, the filing fee. There are rules governing all of these items — for example, .jpgs of logos must be of a certain size, goods and services must be described in certain ways, etc.

Time Involved: Filing the application usually takes less than an hour depending on how organized you are. However, once you file, it will take approximately seven months for the PTO to either approve your application for publication or tell you that something is wrong with the application by sending you an office action (see below).

Office Actions: Again, this is what the PTO sends you if they find a problem with your application or mark. Common problems cited by the PTO are descriptiveness, and a likelihood of confusion with another registration or application. These are difficult problems to overcome, which is why these two issues were mentioned earlier in the “Golden Rules” above. Other problems can be less serious, such as an issue with your logo, or with your classification or description of goods or services. The PTO will give you six months to respond to the office action or your application will be abandoned. (If you do not already have a trademark attorney, right about now is when you would need one.) Simple problems usually take less than an hour to resolve, more serious problems can take hours of time and therefore can be very expensive.
Publication for Opposition: Once your application has gone through the examination process, your mark will be published in the PTO’s Official Gazette for the entire world to see. The publication period is 30 days and gives others a chance to oppose your application. An opposition is an expensive adversarial process, which is another reason why you want to search before you start so you can try to avoid this problem.

Proving Your Use: If no one opposes your application and you have filed an “Intent to Use” application, you will receive a Notice of Allowance, which gives you six months to file your Statement of Use (SOU) (your specimens and dates of first use). You can extend your time to file the SOU by six months, for a cost of $150 per class in filing fees and roughly $100 in attorney/paralegal fees. You can extend up to five times, which means you really have two and a half years to establish use of your mark in interstate commerce.

Registration Once your application has gone through the above processes, your mark will register. You will not have to do anything else until the five years has passed, then again at ten years, and then every ten years after that. If you have a trademark attorney, he or she will usually docket the dates when you need to file documents with the PTO to help you not miss those dates.

All in all, if you file a “Use” application and have no problems whatsoever, you could receive your registration in approximately a year. If you have any problems such as an office action or opposition, or if you have filed on an “Intent to Use” basis, it will obviously take longer.
Costs
So what does the process cost? Here is a basic outline of the filing fees and approximate attorney fees involved in obtaining a federal registration:
Obtaining a federal trademark registration can be very difficult, time-consuming and expensive. Before undertaking this process, you should be as sure as possible that no one else was using a similar mark for similar goods or services before you. Make sure that your mark is distinctive enough to qualify for protection so you do not waste your time trying to register a descriptive mark. It is advisable to retain a trademark attorney to handle the application for you, but if you do decide to file on your own, be aware of all the possible issues and understand that you will probably receive an office action, which you will probably need help to resolve. Budget enough for the entire process so you are not taken by surprise by the various obstacles and tasks, and be patient!

Stacey C. Friends is a trademark, copyright and entertainment attorney with Ruberto, Israel & Weiner, P.C., in Boston.