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TRADEMARKS

A trademark identifies the source of particular goods or services, preferably without describing or suggesting the goods or services themselves. Most marks are words or logos. But there have been cases in which color and sound have been used as a mark.

Common law trademark rights arise just from use of the mark. But for marks used in interstate commerce, there are many advantages to Federal registration. These include a presumption of nationwide notice, and access to Federal courts.

Federal jurisdiction for trademarks arises from the Lanham Act, which is intended to suppress unfair competition in the marketplace. The general idea is that when two parties sell similar goods using similar marks, the public will be confused as to which goods are sold by which party. This creates the possibility of one party passing off his goods as being those of the other party.

To acquire a Federal trademark registration, one describes the goods and services that the mark is to be used for and submits them, together with a specimen of use, to the US PTO. The filing fee depends on the number of classes of goods and services for which the trademark will be used.

If the examiner has no objections, the mark will publish for opposition. During the brief opposition period, anybody who believes they will be harmed by registration may oppose registration. If the opposition period passes without incident, the US PTO will issue a trademark registration.

If the examiner has objections, he will issue an office action setting forth his objection.

Some objections are relatively easy to address. A particularly common one is an objection to the way the goods and services are described. Another objection may arise because a portion of the mark is regarded as descriptive of the goods or services. These can be addressed by amendment or suitable disclaimer.

Other objections are more serious.

One such objection arises from the nature of the mark itself. The examiner may regard the mark as offensive or scandalous in some way. Or, more commonly, the examiner may regard the mark as too descriptive of the goods and services. The mark, after all, is intended to identify the source of goods, not the nature of the goods. A mark that describes or suggests the nature of the goods or services would generally not be very good at identifying the source of those goods or services. Thus, the mark preferably has nothing to do with the nature of the goods themselves.

Another common objection arises when the examiner finds another mark that he regards as similar enough to your mark to cause a likelihood of confusion. This kind of objection can be difficult to overcome, and is best avoided by carrying out a good trademark search before filing.

A trademark has a potentially infinite term. However, after registration, the US PTO will periodically want to see evidence that the mark is still in use. This avoids tying up a mark that is no longer in use so that other people can use it. In addition, it is necessary to periodically pay renewal fees to maintain a registration.

Two other administrative procedures arise in the context of trademarks: an opposition and a petition to cancel. These are procedures are adversarial and conducted in a manner similar to litigation. An opposition occurs during an opposition period between the publication of a mark and its registration. In an opposition, an opposing party presents evidence concerning why registration of the mark would be harmful to that party.

A petition to cancel arises after registration when someone with appropriate standing asserts that the mark violates the Lanham Act.

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