Although courts have discretion to award attorneys’ fees in unusual cases, they are required to award treble (or triple) damages—and order the defendant to disgorge any profits caused by the infringement—in cases where willful trademark infringement is proven. Willful infringement cases consequently have the potential to generate a considerable sum of money over and beyond what the true trademark owner actually suffered from the infringement. Since the goal in most cases is to stop the infringing use—which will happen if the court finds that infringement occurred— the trademark owner can use the damages to pay whatever legal fees are incurred.
Trademark FAQ
Trademark FAQ
Sanders Law Group answers common questions about trademarks, including registration, enforcement, and protection against infringement. Learn how trademarks safeguard your brand identity and what legal steps to take if your rights are violated.
How do I check the status of my application?
The easiest way to monitor your application for trademark registration is to (i) visit this link, [INPUT LINK], (ii) enter theserial number we sent you when we filed your mark, (iii)_find the “status” indicator on the resulting pageand (iv)click on the “documents” tab to review your application information in detail.
When should I expect to hear back about my trademark?
The Examining Attorney is assigned to your application usually after two to three weeks, thereafter it usuallytakes 2-6 more months for the Examining Attorney to take any kind of action. As your attorney of record, ourfirm will alert you of any questions or concerns issued by the Trademark Office.
What if I want to make changes to the mark after it is filed?
We can make changes to the address of your company, however, many other changes to your application can be difficult to make depending on your time of the registration process, and most changes are not accepted by the Trademark Office. Minimal application revisions, such as a new phone number or address change, can be emailed to our firm. Otherwise, please reach out to our firm to schedule an appointment with an attorney to discuss your particular options.
What is a trademark?
Trademarks can be categorized as a mark that identifies the source of either a good or a service. Generally, a trademark is a word, phrase, symbol, and/or design that identifies anddistinguishes the sourceof the goods of one party from those of others. Likewise, a service mark is a word, phrase, symbol, and/or design thatidentifies and distinguishes the source of a service, rather than goods.
Why register a trademark?
A registered trademark gives you exclusive nationwide rights to a word, phrase, symbol, or design in connection with specific goods or services. It also gives you access to federal courts, a streamlined statutory system in disputes, and the ability to more easily expand your protection internationally.
What is the trademark application process?
First, you should make sure no one else is using a similar mark in the same “stream of commerce”. A trademark search can be done by a professional company, and an attorney can review the results. Second, prepare and file a United States trademark application with the Trademark Office. Third, monitor the progress of the application as it gets reviewed by the Trademark Office, and respond to any questions the Office has during the review process.
Should I have a trademark search completed prior to filing?
Yes, always. While conducting a preliminary search using Google or the Trademark Office, an attorney can also conduct a more detailed search, examining any phonetic equivalents and marks under the DuPont Test. The Trademark Office uses the DuPont Test to determine whether your mark can be registered, and is therefore a more precise way to examine your mark.
What is “use in commerce”?
For goods, “interstate commerce” generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involves providing a service to customers in another state or rendering a service that affects interstate commerce(e.g., restaurants, gas stations, hotels).
Do I have to have products or services offered for sale before I file?
No – in fact, many applicants take advantage of the Trademark Office’s “intent to use” application (or“1bApplication”).This allows a mark to be filed without showing use at the time of filing. This preserves your rights on the trademark register as the first filed mark, and gives you time to plan the proper marketing and branding of your mark. The firm will file a “statement of use” application once you begin using the mark. This supplements your initial application with an example of how you are using the mark. The “intent to use” application can be extended by filing extension requests every six (6) months, up to five (5) times (for a total of thirty-six (36)months) before the application pendency runs out.
What do the ® and ™ symbols mean?
The “®”symbol signifies that a trademark has been registered with the USPTO. Registering with the USPTO gives you benefits of national registration,notice and other benefits of that registration. You may not legally use the ® until your mark is registered.
A “TM” or “SM” symbol means that a company is solely claiming common law rights. Common law rights are limited to the geographic region where you use your mark. Note, however, that “TM” and “SM” can be used right away to claim ownership of some basic common law rightswhile your mark is pending registration.
How long do trademarks last?
As long as you pay the maintenance fees for the first five (5) years, after the ninth (9) year, then every ten (10) years after that the mark can last forever. We can handle these maintenance requirements, and trademark enforcement monitoring, relieving you of the burden to remember or manage these payments.
Does my trademark protect my brand across the entire world? Is there such a thing as an “international trademark”?
No. A United States trademark protects your brand in the United States and its territories. For international protection, you must file an application in the particular countries where you would like such protection. Contact us for information on how we can help you do this, and visit our webpage on international trademarks at [LINK].
How do I get international protection?
File a trademark in the country where you would like protection. We can file in any country for you, and even file a unified application under the Madrid Treaty in more than 90 countries with one application and one legal fee (however each country requires their own filing fee and docketing fee). Please visit [LINK].
What is a “specimen”?
A “specimen” is a real-world example of how you are using your trademark on goods and/or in your services. For goods (products), a specimen shows the mark on the goods themselves, or the packaging material of the product. For example, to show brand, it would be the label in the collar, a hang tag, or the wrapper in which the clothing is sold. For services, an acceptable specimen includes the advertising and/or marketing materials for the service, such as website screenshots showing the mark on the same page as a description of the services
Office Actions
What is a Trademark Office Action?
“Office Action” is the term for any kind of question the Trademark Office might have while reviewing your application. These can range from questions regarding your mark and another mark in the system, to editing the language used to describe the goods or services in your application. Because Examiners receive bonuses for initial Office Actions, it is very common (more than 70% of all trademarks in the US) to get a first Office Action. Contact us for help with responding to your Office Action.
What is a disclaimer?
A “disclaimer” is language you put on file with your application acknowledging that you will not possess exclusive rights to a term or design used in your mark, apart from your mark as shown. It states that the disclaimed words or designs must be freely available for other businesses to use in marketing comparable goods or services. For example, would in the fictional mark “Kidrite Shoes”, the owner would disclaim the word “shoes” if they were selling shoes, as that word merely describes the goods sold and, therefore, could not be exclusively owned by the trademark owner.
What is the deadline for my Office Action?
You ordinarily have six (6) months from the date the Office Action issues to provide a response.
Types of Trademark Office Actions
Disclaimer Required
A disclaimer will be requested if the Examining Attorney feels that a portion of the mark cannot be approved. This is usually a very minor issue that is easy to overcome. Most often, the disclaimer will be of a portion of a mark that is descriptive of what you do or sell. For example, if you want to register the trademark, “FroYo Paradise” for a frozen yogurt shop, you must disclaim the term “FroYo” because it describes what you are selling. Receiving a disclaimer requirement does not necessarily hurt your overall chances for approval. Usually, simply disclaiming the disputed portion of your mark will overcome the issue. However, if the challenged term is critical to your brand, you may want to refuse the disclaimer and present arguments that the term should not be disclaimed. We usually recommend accepting a disclaimer unless the term is critical to the brand. If you accept the disclaimer, the trademark will not be altered, and the application will typically be approved with the disclaimed portion still included. However, there will be a note added to the application stating which portion of the term is disclaimed. This means you would not be able to use the trademark to challengeother companies’ use of just the disclaimed term.
Amendment to the Identification of Goods/Services or International Class Number
An Examining Attorney may request a“Goods or Services Description Amendment” if they feel that a portion ofthe listed goods or services is unclear, overly broad, or would fit better in a different group. This is typically a very minor issue that is easy to overcome.Most times, we recommend accepting a proposed amendment unless doing so would adversely impact the scope of your rights, orwould inaccurately describe your products or services.
Submission of a substitute specimen/ Drawing
This is a moderately complex issue, but one that can often be overcome. A substitute specimen or drawing will be requested if the Examining Attorney feels that the specimen or drawing is not compliant with technical requirements, or if the specimen does not clearly show the applied-for mark used in connection with the applied-for goods or services. Submitting a replacement drawing or specimen may remedy this issue. However, the replacement specimen must have been in use as of the time that the original specimen was filed.
Significance of the mark / Request for Additional Information / Translation Statement
This is a moderately complex issue, but one that can often be overcome. The Examining Attorney will request additional information about the meaning of a term in the trademark or about your goods or services if she feels that there may be a potential issue if the term is interpreted in a certain way. Responding with more information is easy, but we usually want to consider the ramifications of the additional information on the application before determining the best way to respond. Sometimes, saying too much or responding in the wrong way can cause bigger issues to arise.
Amendment to description of the mark
This is usually a very minor issue that is easy to overcome. A mark description amendment will be requested if the Examining Attorney feels that the verbal description of a design mark is unclear or incomplete. Accepting a proposed amendment is usually recommended, unless doing so would not accurately describe the design.
Likelihood of Confusion (§2(d))
A “§2(d)” or “Likelihood of Confusion” refusal will issue if the Examining Attorney feels that there is a likelihood of confusion with a prior-filed trademark registration. This is a complex issue that may be difficult to overcome. Two marks do not need to be identical for a likelihood of confusion issue to arise, nor do they need to be used in connection with identical products or services. If the marks are too similar and are being used in connection with related products or services, the Examiner may find a likelihood of confusion. The inquiry is therefore highly subjective, and reasonable minds often will differ about whether two marks are confusingly similar. In order to overcome a §2(d) Office Action, you need to submit a defense of your mark that analyzes all of the relevant likelihood of confusion factors, as they apply to the marks at issue.
Advisory Refusal (Prior Filed Pending Application)
An advisory §2(d) refusal will issue if the Examining Attorney feels that there is a likelihood of confusion with a prior-filed application that is still being reviewed. Because that prior application has not yet registered, the issue is only advisory and does not require a response. Nonetheless, you can submit a response. If you decide not to respond to this advisory issue (and assuming you have addressed any other non-advisory issues), your application will be suspended until a final decision is made to register the cited application or until that application is cancelled. If you decide to respond to this advisory issue, to avoid the additional delay of a suspension, an available argument may be that the prior application does not create a likelihood of confusion. If those arguments are successful, the application will proceed. If not, the application will be suspended, as discussed above.
Ornamental Use Refusal
This is a complex issue that may be difficult to overcome. An “ornamental use” refusal will issue if the Examining Attorney feels that you are using the mark in a merely ornamental or decorative manner. For example, an “ornamental use” exists if the mark is displayed on the front of at-shirt. Because a trademark must serve as an indicator of the source of a certain product or service, displaying the name on the front of a shirt does not typically indicate who made the shirt. While there are a few different ways to respond to such a refusal, we typically recommend filing asubstitute specimen showing the mark being used in a more signifying manner.
Merely Descriptive/Generic/Deceptively Misdescriptive
Refusal of a descriptive or generic mark refusal will issue if the Examining Attorney feels that the mark describes some aspect of your products or services, or if the term is entirely generic as applied to your products or services. For example, “hoppy” would be descriptive in relation to beer, whereas “beer” is generic in relation to that same product. This is a complex issue that may be difficult to overcome, but there are different ways of approaching it. Marks can also be refused as geographically descriptive, which often occurs when a geographic place name is included as part of the mark (as in the case of “New York Pizza”).In addition, a mark that is seen as primarily a surname is basically treated the same as a descriptive term. A company can overcome an Office Action regarding refusal of descriptive mark in three ways..First, you can trademark a descriptive term if you have established “acquired distinctiveness.” The most effective means of establishing acquired distinctiveness is through five years of substantially exclusive use. Second, you can argue that the mark is not actually descriptive because, for example, consumers in that industry might understand the term in a different way. Third, you can amend your application to seek registration on the Supplemental Register. While a registration on the Supplemental Register does not provide all the protection of a registration on the Principal Register, it has the following advantages:
- You can use the registration symbol ®
- Your mark will be protected against future registrations of a confusingly similar mark;
- You can bring an infringement suit in federal court; and
- The registration can serve as the basis for a filing in a foreign country under international treaties.
We typically recommend amending to the Supplemental Register if the mark is clearly descriptive and you havenot been using it for five (5) years.
Failure to function as a trademark
This is a moderately complex issue but one that can often be overcome. A trademark must serve as an indicator of the source of a certain product or service. Occasionally, the specimen submitted will show the mark presented in a different context, for example, not referring to it asa brand name or displaying it in a very insignificant manner. In those cases, we recommend trying to submit a substitute specimen that better shows the mark being displayed to the public as a brandname or source signifier.
Renewals: §8 &§15
After the 5th anniversary of your registration, you must demonstrate that you are still using the mark to preserve the registration. We recommend filing both the §8 and §15 affidavitsat this time, which gives the additional benefit of “incontestability” to your mark. After that, you willneed to file renewals every ten (10) years.
Post Registration Actions
When do I have to renew my trademark?
To keep your trademark, you must file a Declaration of Use and/or Excusable Nonuse under between the 5th and 6th years after the registration date. Subsequently, you must file a Combined Declaration of Use and/or Excusable Nonuseon or between the 9th and 10th-year anniversaries after the registration date, and every 9th and 10th-year period thereafter.
How do I transfer my trademark to my company or another person?
During the examination of a pending trademark application, or after a trademark is registered, the owner may change or some owners transfer their ownership from themselves as individuals to an entity (like their own LLC). This should be done by filing an “Assignment” with the USPTO with the Assignments Recordation Branch. Click here [LINK] to file an Assignment now.
How do I register my trademark with US Customs and Border Protection?
U.S. Customs & Border Protection (CBP), a bureau of the Department of Homeland Security, maintains a trademark recordation system for marks registered at the United States Patent and Trademark Office. Parties who register their marks on the Principal Register may record these marks with CBP, to assist CBP in its efforts to prevent the importation of goods that infringe registered marks. The recordation database includes information regarding all recorded marks, including images of these marks. CBP officers monitor imports to prevent the importation of goods bearing infringing marks, and can access the recordation database at each of the 317 ports of entry.
Litigation
Can You Recover Attorneys’ Fees for an Infringement Case in Federal Court?
If your mark is used across state, territorial, or international boundaries, it is likely you will end up in federal court. Federal law occasionally permits an award of attorneys’ fees to a victorious plaintiff, but only when the trademark infringement is exceptional, or, obviously intentional. Unless you are dealing with a clear case of bad intentions by the infringer, do not count on attorneys’ fees in federal trademark litigation. Most courts follow the “American Rule,” whereas each party pays its own attorneys.