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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21 BENCH & BAR | A final common concern is that the client broadly but accurately describes the goods or services upon which the trademark is being associated (which you translate into goods or service listings approved in the ID Manual). e goods and services form the basis of the protection the trademark will receive, so the more listings you include, the broader the protection. However, inclusion of inapplicable listings is grounds for refusal of the registration application or subse- quent cancellation. Inclusion of superfluous goods or services listings is a very common basis by which competitors challenge trade- mark registrations and can invalidate the trademark as a whole. CONCLUSION Clients do not care about legal filing partic- ulars but want the legal protection afforded by federal trademark registration, a highly technical procedure. If the client has a unique brand, product, or service identi- fier, you should ensure the client files for a federal trademark. However, you need to balance the competing desire to get the trademark filed as soon as possible with the diligence needed to ensure registration ulti- mately issues that broadly and accurately protects your client's branding. ABOUT THE AUTHOR TED HOULEHAN is an attorney at Wolfe & Houlehan PLLC. He received his undergraduate degree from Emory University, his law degree from the University of Kentucky College of Law, and his master's degree from the University of Kentucky Pat- terson School of Diplomacy and International Commerce. His business law practice includes for-profit and non-profit startup filings, contract review and drafting, alcoholic beverage licenses, and other matters. His trademark and branding practice con - sists of registration applications, renewal filings, assignment and licensing agreements, and infringement and ownership disputes. ENDNOTES 1. In popular use, "trademark" typically connotes both that which protects goods (correctly identified as a "trademark") and services (which is properly called a "servicemark"). For purposes of this article, I stick with convention and call all "marks" simply "trademarks," even if they might apply to services. 2. United States Patent and Trademark Office, Trademark Manual of Examining Procedure § 904.03, https://tmep.uspto.gov/RDMS/ TMEP/current#/current/TMEP-900d1e636. html (last visited January 30, 2018). 3. United States Patent and Trademark Office. Protecting Your Trademark: Enhancing Your Rights rough Federal Registration, https:// www.uspto.gov/sites/default/files/documents/ BasicFacts.pdf (last visited January 30, 2018). See also e Lanham Act (commonly known as the "Trademark Act" or "trademark law"), 15 U.S.C. Chapter 22. 4. State trademark registrations are also available, but they similarly provide rights that are limit- ed geographically. See, e.g., Kentucky Secretary of State, Trademarks and Service Marks, http://apps.sos.ky.gov/business/trademarks/ (last visited January 30, 2018). 5. United States Patent and Trademark Office, Trademark Applications–intent-to-use (ITU) Basis, https://www.uspto.gov/trade- marks-application-process/filing-online/in- tent-use-itu-applications (last visited January 30, 2018). 6. United States Patent and Trademark Office, Likelihood of Confusion, http://tess2.uspto. gov/webaka/html/Likelihood/Likelihood_of_ Confusion.html (last visited January 30, 2018). 7. Because it takes the USPTO several months to evaluate the ITU application before it issues a Notice of Allowance, the client should expect to have to have placed his or her trademark in commerce within approximately one year. 8. United States Patent and Trademark Office, Trademark ID Manual, https://tmidm.uspto. gov/id-master-list-public.html (last visited January 30, 2018). 9. United States Patent and Trademark Office, Nice Agreement Tenth Edition – General Remarks, Class Headings and Explanatory Notes, https://www.uspto.gov/trademark/ trademark-updates-and-announcements/nice- agreement-tenth-edition-general-remarks- class (last visited January 30, 2018). 10. Other issues, such as opposition by another party, may delay the application further. See, United States Patent and Trademark Office, "Trademark Application and Post-Registra- tion Process Timelines," https://www.uspto. gov/trademark/trademark-timelines/trade- mark-application-and-post-registration-pro- cess-timelines (last visited January 30, 2018). 11. United States Patent and Trademark Office, Trademark Manual of Examining Procedure § 201.02, https://tmep.uspto.gov/RDMS/ TMEP/current#/current/TMEP-200d1e1. html (last visited January 30, 2018). 12. 15 U.S.C. § 1052. 13. United States Patent and Trademark Office, Trademark Electronic Search System (TESS), tess2.uspto.gov/ (last accessed February 2, 2018).

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