Bench & Bar

MAR 2018

The Bench & Bar magazine is published to provide members of the KBA with information that will increase their knowledge of the law, improve the practice of law, and assist in improving the quality of legal services for the citizenry.

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| MARCH/APRIL 2018 20 Features: ART LAW, COPYRIGHT & TRADEMARK registration and to prepare for the regis- tration filing itself. While the USPTO allows for "free form" entry of goods or service categories covered by a trademark, this could pose a problem if the entry is not described with the specificity that would allow likelihood of confusion to be deter- mined against other filings. e USPTO lists its recognized goods and services list- ing in its "ID Manual," and precise listings from that database should be used when- ever possible. 8 Each individual goods and services listing is found in one of 45 trademark "classes" which are, broadly speaking, categories of goods or services. 9 A single trademark can span multiple classes if it is affixed to several different types of products. Trade- mark filing fees of at least $225 are paid per trademark, per class. Clients will frequently request registration across goods or services that span multiple classes, so you should be prepared to offer class suggestions that take into consideration filing costs and most properly identify the goods or services covered by the trademark. WHEN WILL I GET THE TRADEMARK? Clients are often anxious to know whether and when their trademark application has been approved. For a standard Use in Commerce application, it typically takes about nine months from the date of filing until the date of registration. is time is extended if there are certain flaws or uncertainties in the application, causing the USPTO examiner to issue an "Office Action," requesting further information or amendment before the application may move forward to possible registration. 10 Ideally, communication with the client allows you to avoid any potential Office Actions. However, some Office Actions cannot be avoided given the informa- tion the client has available at the time USPTO filing is appropriate. It is import- ant to file for trademark protection as soon "use" occurs to establish rights against any other would-be registrant. A savvy trade- mark attorney therefore files as soon as information is available that would allow registration to ultimately issue, even if it means the USPTO issues an Office Action that must be addressed, causing a slight delay in ultimate registration. Finally, it is important to note that the federal trademark registration system is in fact a "first to use" system, but one that provides advantages to those who file early. e application filing date provides con- structive use of the mark and establishes nationwide priority over others who might begin use after that date. 11 e only caveat is that it is possible for a competitor to file for registration several months or years after putting its own trademark in use, and alleges its "use" date was before your client's use or filing date. ough rare, this possi- bility cannot be avoided, because you have no control over whether or when a third party will demonstrate its use via federal application. Fortunately, the system places such a lackadaisical competitor at the dis- advantage of having to prove earlier use to secure its own trademark rights and curtail or cancel those of your client. Accordingly, your client should feel some sense of secu- rity upon the date of filing, irrespective of how long it takes the USPTO to ultimately issue registration, so long as the application ultimately results in registration. ANY CHANCE I DO NOT GET THE TRADEMARK? Any experienced lawyer knows the value of properly setting clients' expectations. You should properly advise if there are concerns with the trademark the client wants filed that might delay or prevent ultimate reg- istration. e following are some common filing pitfalls. e first common consideration is whether the trademark the client wants filed is "trademarkable subject matter," meaning the matter itself is capable of registration. e Trademark Act lists several forms of content that are not legally entitled to trademark protection. 12 Of key concern: MERELY DESCRIPTIVE. So as not to foreclose opportunities for others, you cannot trade- mark words that are descrip- tive (or generic) for products or services to which they relate (at least not without a showing of "secondary meaning," a sep- arate analysis). ORNAMENTATION. You can- not trademark an item that primarily serves a decorative function (Example: logo on a t-shirt that appears to be part of the t-shirt's design, rather than designating a brand origin). SURNAME. You cannot trade- mark someone's last name (again, at least not without a showing of "secondary mean- ing" that the trademark has an established meaning in the rel- evant industry). e most common reason a filing does not turn into a registration is a "likelihood of confusion" with an existing registered trademark. e entire premise of trademark protection is to secure exclusive rights to the trademarked matter as filed as against anyone who might subsequently use a "con- fusingly similar" trademark. For this reason, it is critical to conduct a proper search of the federal trademark database prior to filing to ensure the client's trademark is available for registration. e USPTO makes its trademark database searchable online, 13 and given our famil- iarity with Google, clients often make use of such database to let you know, "No one has my trademark." While the presence of conflicting trademarks means registration is likely foreclosed, the absence of conflict - ing marks upon initial inquiry does not mean registration is available. What con- stitutes "likelihood of confusion" is a topic that cannot be addressed in a trademark overview, but suffice it to say the USPTO examiners are inclined to presume the aver- age consumer is readily confused, meaning your search must be very comprehensive. A trademark attorney needs to develop a search approach akin to that taken by the examiners, which is informed by case law and considers the industry in which the trademark is being filed. ird party ser- vices can be purchased to search additional databases and give your client greater peace of mind before filing, but keep in mind no search is infallible. Various search meth- ods, including those conducted by the filing attorney, should be seen as providing a con- fidence interval-type estimate of trademark availability, rather than absolute assurance. 1 2 3 See Page 22 for Convention Details THE WAIT IS OVER!

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