What to Expect in Applying for a Federal Trademark After Yr. 2000
By Curtis L. Harrington

Federal trademark law is the trademark system of choice both because of the supremacy of federal law and its interstate coverage. To properly take advantage of the system, a FULL search & opinion should be made before a trademark name is decided upon (to avoid a charge of "negligent adoption") . If several names are available, an abbreviated federal database search can be accomplished, without regard to class, to enable a quick comparison of which trademark or portions of the trademark are matched by other applied for and registered federal trademarks.  The results of this search correlate closely with the lack of ability to find your proposed mark on computer search engines.

Of course, the marks to be searched should be otherwise proper. The trademark must not be descriptive of the goods, as in the case of a generic term; nor misdescriptive, directly indicating goods other than the goods described by the mark; nor geographically descriptive or misdescriptive. Other restrictions prevent the filing of flags, coats of arms, insignia of the United States, or any state or municipality, or immoral, scandalous matter.

After the abbreviated search, the trademarks which have a low incidence of use are identified, and the best one is identified and selected for a full search and opinion. The full search will be accomplished with additional information, including the expected trademark class of the goods to be used with the trademark, and as many look alike, sound alike and similarly spelled variations on the trademark as possible.

Once the full search is performed, it is carefully reviewed by the attorney drafting the opinion to gauge the closeness of the registered and applied for federal trademarks, as well as the state trademarks and common law names. They are compared with respect to several parameters, both separately and in combination with each other. For example, a comparison between the trademark being searched and a discovered trademark which is not an exact spell alike will nonetheless be viewed critically if it is in the same class, or if the goods are within a common industry.

If the trademark opinion is such that federal filing is hopeful, the federal trademark application is prepared. If the opinion resulting from the full search is negative, a full search should be made on the next most desirable name identified in the abbreviated search. Although the abbreviated search cannot guarantee that the full search will not uncover problem areas, performing the abbreviated search will increase the probability that a trademark name selected for the full search will be appropriate and can garner a favorable opinion. Since the cost for most full search and opinion letters are about three to four times the cost of the abbreviated search, the savings from not having to do a single extra full search and opinion justify the cost of the abbreviated search.

After a favorable opinion is had, the federal trademark application is prepared. Necessary information includes: the identity of the trademark owner; the identity and capacity of the individual signing for a corporate owner; a description of the goods for which the trademark is sought; the dates of first use and first use in interstate commerce (the trademark must be used in interstate commerce to obtain registration); and three specimens showing the mark as it will be used with the goods.

The specimens seem to cause the most problems to applicants. A trademark should be used as closely with the goods as possible. Preferably, the trademark is formed with or stamped directly onto the goods, or printed on tags or labels attached directly to the goods. Only with regard to service marks are specimens related to advertising allowed. Flyers, catalogs, and other advertising matter which are not directly related to the goods are not proper trademark specimens.

In addition, and in cases where the trademark has not actually been used, an applicant can file an "intent to use" application. This application is examined similarly with respect to the regular application, except that there is no date of use, no specimens are included, and the applicant states an intent to use the trademark in interstate commerce.

Once the trademark application is filed, the application will be entered onto the Patent & Trademark Office computer system, and the public will have access to the application. On average, the application will be taken up by the trademark examiner in from nine months to a year after filing. The trademark attorney will then check the file for problem areas and perform a search to see if there are any registered marks or applications which have a date of use in interstate commerce before the date indicated on the applicant's papers. If such is discovered in the search, an office action communication will than be sent to the applicant which invites argument or other action.

The action to be taken by the applicant will depend upon particularities of the case, and the results of the trademark examiner's search. For example, if the applicant's date of first use in interstate commerce is earlier than that for a registered trademark, the applicant may be able to petition to strip the registrant of their registration. The applicant, in a trademark office action is given six months to respond.

Where the trademark examiner's examination results in allowance of the application, the trademark is published in the trademark gazette, and a 30 day period is established for others to oppose the registration of the applicant's mark if the opposer will be harmed by such registration. If an opposition is filed, a small lawsuit is in effect created between the applicant and the opposer over the narrow issue of whether the applicant's mark should be registered. Within this opposition there can be document inspection and depositions, and there are time deadlines for the closure of discovery, testimony and briefs.

If no opposition occurs, the registration will issue from three to five months after publication. Of course, for an "intent to use" application, no registration can occur until the applicant actually begins using the trademark and files a statement of use, including the dates of use and specimens. Once the statement of use is accepted, registration will shortly occur.

Once registration occurs, and assuming the trademark is used continuously thereafter, two important filings are made within the sixth year after registration. A section 8 affidavit is filed to indicate that the mark is still being used, in order to prevent its cancellation from the register. A section 8 & 15 affidavit of incontestability is filed, in order to insulate the trademark from being canceled by others who may have used the trademark previously to the applicant's use.

It is the particularly long time period between the selection of a trademark and the filing of the section 8 & 15  affidavit which makes a search so important. Products entering the stream of commerce may flow through many unidentified channels of distribution. Often, the only way in which a consumer can contact the maker of the goods is through the trademark name. When the manufacturer is forced to stop using or changes the trademark name, either because of a lawsuit, an opposition, or a petition to the Commissioner of Patents and Trademarks to cancel the product maker's trademark, whole segments of the market will be lost. The loss of sales is also a loss of goodwill, the portion of a businesses value above their asset value. Thus, the change of a trademarked name is a disaster, the effect of the disaster increasing with time. Although a search cannot give a 100% assurance of discovering all prior users, a better search will yield a better probability of finding future problems.

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