U.S. Trademark FAQ

Success in business may depend, to a large extent, on message conveyed and image projected. A product or service may be excellent, but if the supplier of the product or service does not stand out, it may be overlooked in favour of a company with a stronger market presence. Trademarks can provide that distinctive identity which differentiates a business’ products or services with that of a competitor.

A trademark is a word, a symbol, a design or any combination thereof used in association with wares (products) or services. It is a useful tool for distinguishing the wares or services of one entity from those of others in the marketplace. A trademark may come to represent not only wares and services, but also the reputation of the provider of such wares and services. As such, a trademark may constitute valuable intellectual property.

The nature of the terms used as a trademark is extremely important from the standpoint of:

• initial registrability; and
• lasting viability as a trademark, since the trademark must be capable of distinguishing the wares or services in relation to which it is used.

In evaluating a trademark, there are four general categories of terms:

• distinctive terms;
• suggestive terms;
• descriptive terms; and
• generic terms.

Generally, the terms that are easiest to register and to protect as trademarks are “distinctive” terms. Distinctive terms are often arbitrary or fanciful terms. They are unmistakably capable of identifying an owner’s wares or services without any likelihood of confusion, for the average consumer, with the wares or services of another party.

At the other end of the spectrum, “generic” terms will never be capable of registration. The meaning of a generic term is synonymous with the wares or services themselves (e.g., zipper, escalator, etc…). Generic terms are incapable of distinguishing the wares or services of one party from those of another.
Between these two extremes lie “suggestive” and “descriptive” terms.
A “suggestive” term is one that merely suggests the nature, quality or characteristic of the wares or services in relation to which it is used as a trademark. It is possible for suggestive terms to be registered as trademarks but they make for “weak” trademarks because they often do not provide their owner with the ability to prevent others from using marks which are very similar and used in relation to similar wares or services, or that are identical marks used in relation to different wares or services.

A “descriptive” term describes the nature, quality or characteristic, the intended purpose or function, or the end effect upon the user of the wares or services in relation to which it is used as a trademark. Descriptive terms are not registrable unless, over a period of years, the terms have acquired, in the minds of the public, a special, identifiable meaning (a “secondary meaning”) which links the wares or services to the owner of the trademark.

When choosing a trademark, you should make every effort to use arbitrary and fanciful terms. Suggestive terms make for very weak trademarks and should be avoided whenever possible. Descriptive and generic terms should never be used as trademarks. Furthermore, terms which have a specific meaning within a particular industry should be avoided in relation to wares or services pertaining to that industry as they tend to make the trademark suggestive or descriptive and therefore more difficult to register and to protect.

Generally, unless the trademark of a party has become clearly distinctive of a given party’s wares or services, a trademark will not be registrable in Canada if it is:

• the name or surname of a person (e.g., “Jane Smith”);
• clearly descriptive of the wares or services in relation to which it is used (e.g., “Perfectly Clean” in relation to dry-cleaning services);
• a word in another language which describes the wares or services (e.g., “Gelato” – the Italian term for “ice cream” – in relation to ice cream products);
• deceptively mis-descriptive (e.g., “Air Courier” in relation to ground transportation services); or
• an official symbol, coat of arms, badge, crest, emblem or name (e.g., the Canadian flag, the letters “R.C.M.P.”, the name “United Nations”, the symbol of the Red Cross).

To maximize the likelihood of registration, a trademark should therefore be either an invented mark or one that makes only oblique reference to the nature of the wares or services in relation to which it is to be used.

It should be noted that, even where a chosen trademark is not registrable for being clearly descriptive or deceptively mis-descriptive, it is possible to continue using that trademark but its owner must understand that it will not be able to enforce the exclusivity that would result from registration of the trademark.

Where a chosen trademark is a “design mark” (i.e., consists of words in combination with a design), the owner may wish to consider registering the words and the design separately. Separate registrations of the various components of the trademark give maximum protection to the trademark owner and allow for greater versatility of use of the mark in association with the trademark owner’s wares and services.

Registration is proof of ownership and therefore a key way of protecting a trademark from misuse and imitation. Registration is not obligatory but is highly recommended because it is a way of verifying the exclusive right that is established through using the trademark in relation to specific wares or services. In a dispute, a registered owner does not have to prove ownership; the onus is on the challenger. The risk in using an unregistered trademark is the greater likelihood of time-consuming and expensive legal proceedings in the case of a dispute, as well as the lack of national, exclusive protection of your trademark.

It is important to realize that, while registration affords the greatest possible legal protection against infringement or misuse of a trademark, it is, and can never be, a failsafe guarantee against all problems relating to trademark usage. For example, specific circumstances make it possible for a trademark to be expunged (removed) from the register on the basis of prior use of a confusing mark by another party.

Furthermore, registering a trademark with the Canadian Trademarks Office protects rights in that trademark in Canada only. Where an entity is providing wares or services in association with a given trademark in other countries, registration in each of such other countries should be considered

U.S. trademark applications can take anywhere from 12-18 months from time of initial filing to approval for registration. However, this timeline make take additional time depending on the specifics of each application, the timeliness of responses by the applicant and whether opposition proceedings are commenced and litigated. Below is a summary of the general steps of a filing of a U.S. trademark application with the USPTO.

US TRADEMARK APPLICATION PROCESS

There are two types of trademark registration applications in the United States Patent and Trademark Office (USPTO).

1.  Use Application. If you are engaged in “commercial use” of your trademark, a “Use Application” may be filed. “Commercial Use” means that you have sold or delivered goods, or rendered services in the United States under the trademark. The application must state the date of first Commercial Use and must include a “specimen” of the trademark. A specimen is digital image of a label, packaging, photo of the product showing the trademark or advertising of services showing the trademark and describing the services. When your application is approved, your trademark is registered and the USPTO issues a Certificate of Registration. Your trademark protection is retroactive to the date of first Commercial Use stated in your application.
2. Intent-To-Use Application. If, like most applicants, you have not yet started selling products or services in the United States at the time of application, you may file an Intent-To-Use application. It does not require a date of first Commercial Use or a specimen in the application. When your application is approved, the USPTO issues a Notice of Allowance. You must then file a Statement of Use indicating the date of first Commercial Use and providing a specimen. Upon acceptance of the Statement of Use, your trademark is registered and the USPTO issues a Certificate of Registration. Your trademark protection is retroactive to the date of the application.

   Screening and Filing
   All services before the USPTO for your trademark are conducted by our affiliated US attorneys. The Attorneys conduct a screening of the USPTO database for identical or highly similar registered trademarks that will likely block registration of your trademark and provide to you a written report. If the screening concludes that an application is not viable, the Attorneys will screen an additional trademark of your choice without additional charge. 
   When your trademark has been successfully screened, the Attorneys will prepare the application including the identification of products or services. This can be an important decision affecting approval of the application. If it is a Use Application, the attorneys will assist in selecting a specimen and date of first Commercial Use. The attorneys will electronically file the application and transmit any specimen. The USPTO will assign a Serial Number to the application. The Attorneys are the Attorneys of Record for the application and will handle all communications with the USPTO until registration or final refusal.

   Examining Attorney Review
   A USPTO Examining Attorney will review the application. It typically takes three to four months for your application to be assigned to an Examining Attorney. Registration of your trademark will be refused if the Examining Attorney concludes that there is a likelihood of confusion between your trademark and an existing registered trademark. The appearance, sound and meanings of the trademarks are considered as well as the products or services. Registration may also be refused if your trademark is deemed to be merely descriptive of your products or services. It is also common for an Examining Attorney to require minor changes to an application or request additional information. The Attorneys handle initial refusals, communications and change requests without additional charge.

   Publication
   If no refusals or additional requirements are identified, or if any refusals or other requirements are satisfied, the Examining Attorney approves your trademark for publication in the Official Gazette. Publication in the Official Gazette commences a thirty-day Opposition Period. During the Opposition Period, members of the public may file an Opposition Proceeding to oppose registration of your trademark. They may also obtain extensions of the Opposition Period. Opposition Proceedings are expensive, complex proceedings that are commenced in a relatively small number of applications.

   Final Processing

   Use Application
   Within approximately three to four months after your trademark is published in the Official Gazette, if no opposition was filed or any opposition is unsuccessful, then the USPTO registers your trademark and issues a Certificate of Registration with a Registration Date and Registration Number. We will send the original Certificate of Registration to you.

   Intent-To-Use Application 
   Within approximately three to four months after your trademark is published in the Official Gazette, if no opposition was filed or any opposition is unsuccessful, then the USPTO issues a Notice of Allowance. Within six months of the Notice of Allowance, the Attorneys must file for you a Statement of Use (fees apply). The Statement of Use states the first approximate date of first Commercial Use in the United States and provides a specimen of the trademark. If you have not yet commenced Commercial Use in the United States or cannot provide a specimen of the trademark within six months of the Notice of Allowance, the Attorneys may apply for a six-month Extension (which is routinely granted). Additional, consecutive six-month Extension Requests may be filed up to a total of the expiration of three years following the Statement of Use (fees apply).

   Upon the acceptance of a Statement of Use, the USPTO registers the trademark and issues a Certificate of Registration with a Registration Date and Registration Number. We will send the original Certificate of Registration to you.
   Once your trademark has been registered or your application has been finally refused, our affiliated Attorneys are no longer the Attorneys of Record and your contact information (as listed in the application) will be the contact information for future correspondence by the USPTO or third parties concerning the trademark.

   After Your Trademark is Registered
   Registration owner files declaration: Between the beginning and end of the 6-year period after the registration date, the registration owner must file a Declaration of Continued Use (fees apply). Failure to do so will result in the cancellation of the registration. 

   Registration owner files Declaration/Renewal: Within one year before the end of every 10-year period after the registration date, the registration owner must file a Declaration of Continued Use and Application for Renewal (fees apply). Failure to do so will result in cancellation or expiration of your registration.

   Our affiliated Attorneys are happy to assist you with these Post-Registration filings.

Although not required by law to do so, trademark owners often indicate ownership or registration of their trademark through certain symbols, namely “TM” (trademark) or “®” (registered trademark). The “TM” symbol can be used with a trademark regardless of whether a trademark application has been filed, as long as it is being used in association with goods or services. The “®” symbol, however, may only be used once the trademark is registered.

In the U.S., registration of a trademark is valid for fifteen (10) years. A trademark registration is renewable every fifteen (10) years upon payment of a renewal fee.

Government fees currently consist of a $275.00 non-refundable application fee per class for each trademark applied for and, if the application is successful, a $100.00 Statement of Use fee per class is required.