Miami, Florida based patent and intellectual property attorney assisting clients throughout the State of Florida in matters related to the procurement of registered trademarks and trademark infringement

A trademark or service mark is a distinctive word, phrase, logo, or graphic symbol that allows consumers to identify the manufacturer, merchant, or service provider responsible for providing the goods or services. Domain names and 800 numbers are also candidates for registered trademark or service mark registration. There is no express basis in the U.S. Constitution for trademark protection. Instead, trademark protection through the grant of federally registered trademarks by the U.S. Government is grounded in the commerce clause of the U.S. Constitution. This clause provides Congress with the power to regulate interstate commerce. The Lanham Act is the federal statute governing federal trademark registration. The United States Patent & Trademark Office (USPTO) is the federal agency in charge of trademark registration.

States, including Florida, also allow registration of trademarks and service marks.  However, marks used within only one state (i.e., have not been registered with the USPTO) are generally limited to relying only on available state law protections.

Whereas patent, copyright, and trade secret protections are focused on protecting the rights of the IP owner, trademark protection is intended to protect both the owner of trademark and the consumer. The objective is to prevent consumer confusion as to the source of the goods and to prevent “palming off” where one goods or service provider attempts to pass of its goods as originating from another producer.

For example, the consumer of a new patented over-the-counter (OTC) medication is generally interested only in whether the medication is going to address his/her medical problems with minimum/tolerable side effects. The OTC’s novel aspects, as specified in the issued patent, will generally be of no concern to the consumer.

Now, let’s say that this new OTC is sold under the brand name “Feelin’ Better” and that the name is a federally registered trademark (Feelin’ Better ®) and manufactured by a well known company by the name of XYZ. Assume that the OTC is a home run during the lifetime of the patent (about 20 years from the application’s filing date).

Fast forward to the post-patent period. Once the patent expires, anybody will be free to operate in the field occupied by the patent, and generic versions of the OTC will surely be forthcoming based on the patented OTC’s success. XYZ decides to keep selling the Feelin Better® product because market research shows that a substantial part of its customer base will purchase this product rather than switch to a generic product (brand name loyalty). Now, let’s say that a generic company starts selling the product under the name “Gettin’ Better.” Under trademark law, XYZ will have various legal remedies available to it to try and prevent the generic company from selling its product under this name. Why? Because the name is confusedly similar to XYZ’s registered trademark, thereby leading to the likelihood of confusion that the consumer could presume that the “Gettin’ Better” product was manufactured by XYZ. This would be especially true where the same product (the OTC) is involved.

Registered Trademark Protection

Registered trademark protection will be available where the product or service is protected under other types of IP, providing that the product/service is offered in interstate commerce and the proposed mark meets the USPTO’s requirements for registration.

Registered trademark and service mark protection can be sought by anyone who is providing goods and/or services in interstate commerce.  That is, patent, copyright, and/or trade secret protection is not a prerequisite for receiving a registered trademark.

Applying for a Registered Trademark/Service Mark (1A and Intent-to-Use Applications)

Applications are filed with the USPTO and will be examined by a USPTO examining attorney. The examining attorney will conduct a thorough search to determine if the proposed mark is sufficiently different from existing marks so as to meet the important objective of trademark law: to prevent confusion by the consumer as to source.

If the proposed mark is already being used in interstate commerce, the applicant may file what is known as a 1A application. If the mark is not being yet used in interstate commerce, the applicant may file what is known as an intent-to-use application (1B application). The 1B application provides a way for the applicant to “reserve” the proposed mark while the good/service is being commercialized with the bona fide intent of eventually introducing the mark/service into interstate commerce.

With a 1B application, if the examining attorney opines that the proposed mark should be allowed, the 1B applicant will be required to complete certain steps in order to actually obtain the registered mark. Failure to complete the steps to the satisfaction of the examining attorney in the time period required will result in an abandonment of the mark.

If the proposed mark, in either a 1A or 1B application, receives preliminary approval by the examining attorney, the proposed mark will be published in the Official Gazette for opposition purposes. The Lanham Act permits any party who may be damaged by the registration of the mark to challenge the registration in a formal opposition proceeding before the Trademark and Appeals Board.

If the examining attorney rejects the proposed mark, the applicant will have the right to appeal the decision.

If the mark is registered after the applicant has complied with the requirements under the law, only then can the mark owner begin using the ® on the goods and/or service for which registration was granted. The use of the ® before the mark’s actual registration date constitutes fraud and may result in penalties.

The Importance of Trademark Searches

It is highly recommended that a thorough mark search be conducted before applying for a registered trademark or service mark for two important reasons:

  • To avoid infringing an existing registered mark and the possibility of a lawsuit;
  • To save the time and expense of developing and promoting a business name, service, or good only to learn that the proposed mark will not be approved for registration by the USPTO because it does not meet the likelihood of confusion test.

Applicants are often surprised to learn that their proposed mark is “close” to existing registered marks for similar goods/services or proposed marks in applications which have already been filed. Remember that the first-filed application for a mark similar to your own proposed mark will be “first-in-line” to receive registration providing that the earlier applicant meets all of the requirements for securing a registered trademark.

Registration-Related Legal Services Provided by Troy & Schwartz

Trademark/service mark applications with the USPTO do not need to be filed by an attorney. Indeed, many marks have been successfully registered with the USPTO without the participation of an attorney. We emphasize, however, that an attorney can help ensure that the applicant has a clear understanding of the assertions under penalty of perjury that it is making in various correspondence with the USPTO, and that the provided information is indeed true and accurate.  Of particular concern is the description of goods and/or services and issues related to the provided specimens. The USPTO may well invalidate a registered mark if it learns that a registered mark is not being used according to information provided to the USPTO as part of the registration process or in later required documentation for maintaining the registration.

An attorney can also keep track of the deadlines required for responding to an office action by the USPTO’s examining attorney. Failure to respond by the required deadline(s) will result in abandonment of the mark.

An attorney can evaluate search results and give an opinion as to the merits of seeking registration of the proposed mark and/or potential infringement problems with existing marks owned by others.  Attorneys can also present formal written legal arguments to the USPTO examining attorney as to why the proposed mark should be registered if the examining attorney rejects the mark; represent the applicant before the Board of Patent and Trademark Appeals if the mark is opposed, etc.  Of course, the objective of a thorough search is to minimize registration problems in the first place and thereby minimize the costs associated with legal disputes pertaining to registration.  

Therefore, if you are developing a good and/or service which will be sold/offered in interstate commerce (including via website) and want to establish a brand presence through a valuable registered trademark or service mark, we encourage you to call us at (305) 279-4740 or contact us online for a FREE consultation. Remember that a registered mark can be a very valuable business asset!

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