Business counsel are aware of the value of brand recognition and the exclusivity it creates in the marketplace. Since a good trademark can serve as a clear designation of the source of a product or service, the value of a trademark can be immense. Registering a trademark can add significantly to its value to the business. So, if a company holds a valuable trademark and in-house counsel wants to protect it, what are the next steps?
Why bother to register a trademark? In the United States, businesses acquire trademark rights by use. Securing a U.S. trademark registration enhances and expands those rights. A federal trademark registration provides nationwide constructive notice of the owner’s trademark rights. The common-law trademark rights that arise automatically with use generally are effective only in limited market areas and do not provide the nationwide reach that comes with a federal trademark registration.
Even though a business may possess common-law trademark rights, the savvy in-house lawyer will realize the additional benefits of a federal trademark registration and prepare to file a U.S. trademark application. He may decide to handle the process himself. He looks at the U.S. Patent and Trademark Office website (www.uspto.gov) and the Trademark Electronic Application System (TEAS). It all seems simple enough, and therein lies the first pitfall.
A U.S. trademark application is deceptively simple, almost too easy, to complete. The few fillable form pages, which are annotated with helpful instructions, do not look overly intimidating. A do-it-yourself in-house attorney may be tempted to simply insert names, dates and trademark details; declare it’s all true; and send it off. Filed — now just to wait.
Unfortunately, potential problems may not come to counsel’s attention until the trademark office examines the application in three or four months. By that time, it may be too late or quite costly to change certain items. Worse, the lawyer may not recognize some problems with the application until after receiving a notice of allowance or the registration certificate from the trademark office. Worse still, he may not recognize a mistake until a competitor challenges the validity of the registration. At the very least, these problems can cost time and money; at worst, a company could lose its trademark registration altogether.
The good news is that such dire results almost always can be avoided. Let’s take a look at common pitfalls frequently encountered by trademark filers and the relatively simple steps to avoid them.
There is a lot of information a filer must submit to the trademark office in the preparation and filing of a trademark application, but five areas most frequently cause problems.
1. Should the application allege existing use or an intent to use the trademark? “Use” under federal trademark law is the presentation of the trademark with the offering of goods and services to the public in interstate or international commerce. A common mistake is the belief that the formation of a business entity or the registration of a domain name qualifies as trademark use. Some preparatory use can qualify as trademark use, but in general, the business must be in a position to immediately provide the promoted goods or services.
Filing a federal intent-to-use trademark application is a great mechanism for essentially reserving a trademark for future intended use. But what should in-house counsel file if she is not sure the company has begun its qualifying use?
File an intent-to-use application anyway. Two misconceptions are that one can’t file an intent-to-use application if use of the mark already has begun and that the filer must allege specific dates of first use. In fact, a business may allege dates of first use that are prior to the filing date of the intent-to-use application. Also, the dates of first use may omit the specific day or even month, because the applicant always alleges dates of first use “at least as early as” and may provide evidence of earlier dates, if later necessary.
2. Who should be the named applicant? The applicant on a trademark application preferably is a single entity and the owner of the trademark rights. Accuracy is important because the applicant’s name generally cannot be changed. Although a business typically can assign its trademark and an application that alleges existing use, an intent-to-use application is more difficult to transfer and cannot be assigned apart from transferring ownership of the business as a whole.
3. What form of the trademark should be covered? In deciding what to identify for the form of the mark in the application, counsel should recognize how the business is using or will use the trademark. It is sometimes advisable to file multiple trademark applications: one directed only to the words in the mark, one to the design elements and one to the compound mark.
However, it would be a mistake to file a descriptive-word mark application when the simple addition of design elements could provide the required distinctiveness for trademark protection. Even if the words in the mark are not descriptive, it may be more cost-effective to protect the words and the design elements in a single compound-mark application.
4. What are the goods and services that should be listed? It is critical for in-house counsel to decide which goods and services to include in a trademark application. This list cannot be expanded after the initial filing. On the other hand, there is a danger in creating too long a list of goods and services with an intent-to-use application. The problem occurs when a business summarily alleges use on all the goods and services, when in fact it has begun use with only some.
5. What are appropriate trademark specimens of use? Filers often make mistakes by providing inappropriate trademark specimens of use. An appropriate specimen of use depends on the goods and services covered. Whereas an advertising specimen of use is typically appropriate for services, it is generally unacceptable in an application covering products. An exception to this is point-of-sale advertising for goods. The most appropriate specimen of use for goods, however, is product packaging.
Although obtaining registrations to enhance the protection of a business’ trademarks can add significantly to their value, seemingly minor inaccuracies or mistakes in preparing a trademark application can jeopardize the strength or even the validity of the resulting registration. In addition, because the trademarks of a business can evolve and change over time, it is important to monitor the business’ portfolio of registrations to ensure that changes in the form of the marks, as well as changes in the goods and services, are accurately reflected.
Linda W. Browning and Mark A. Kammer are registered patent attorneys and co-founders of Kammer Browning in San Antonio. A registered nurse, Browning earned a master of business administration degree and worked as a health-care management consultant before attending law school, while Kammer previously served as a research scientist and a math and science teacher.