Trademark/Copyright

Trademark

The terms “trademark” and “mark” refer to both product and service trademarks. Trademarks can be used under common-law or registered with the U.S. Patent & Trademark Office (USPTO) for stronger enforcement of trademark rights. The marks can be a brand name, a logo, a shape, letters, numbers, sound, smell, color or characters which identify a product or service that comes from a particular source.

Examples of product marks: Coca-Cola (soft drinks), Ford (automobiles), Microsoft (software), Apple (computer), Nike (shoes).

Examples of service marks: McDonald’s (restaurant services), Rock of Gibraltar (service mark of Prudential Insurance Co.), Wal-Mart (retail business) and AT&T (telecommunications) and Greyhound (service mark of a bus line).

Benefits of Federal Registrations:

Trademark registration is not required, as the right or ownership of a mark is established by the legitimate use of the mark. But registration is recommended to give one additional protection. The main benefits of a registered trademark are:

• National scope and protection to the mark and its usage
• Grants the right to use the ® symbol that may deter potential infringements
• Acts as a public notice and offers a legal presumption on the ownership as well as the exclusive rights to use the mark
• Gives the right to sue for infringement in federal courts
• Helps to obtain trademark registration in foreign countries
• Helps to prevent importation of infringing foreign goods by filing the U.S. trademark registration with the U.S. Customs Service

TM, SM and ® – Trademark Symbols:

TM can be used both for product and service trademarks. The TM is used with goods or services while SM can only be used with services. Some advertiser will use the SM for service trademarks and it has essentially the same legal effect as the TM. By using this mark, the owner puts the entire world on ‘notice’ that the mark is unique and owned by him or her. It is commonly used prior to registration with the United States Patent and Trademark Office [USPTO].

The R in a circle symbol, ®, stands for “Federally Registered Trademark” and can be used only if the mark is registered by the USPTO. A trademark is an intellectual property and it can be bought, sold, leased, lost, or destroyed, like any other piece of property. The registered trademark symbol ® should always be used in conjunction with the mark and the failure to do so may result in the loss of rights.

You can start using the TM and SM from the moment you decide to claim your rights on a mark. However, the federal trademark registration symbol “®” can only be used after the USPTO actually registers the mark, and not even while the application is pending. The trademark registration symbol can be used with the mark only on or in connection with the goods and services listed in the federal trademark registration.

How to Register a Name – The Trademark for A Product or Service

Trademark applications can be filed under two basis. If the trademark is already in use for a product or service, then the application will be filed as an “In Use” application. If the product or service is in the planning stage, an application can be made based on “Intent to Use”. If the application is filed based on “Intent to Use”‘, then applicant will have to file the “Allegation of Use” form to establish the usage of the mark in commerce before the USPTO registers the mark.

Examination: All applications are reviewed by a Trademark Examining Attorney and can be rejected for various reasons. The following are examples of some of the reasons cited in the communication received from the Trademark Office called an “Office Action”:

• The mark or a similar mark is part of a pending application for registration.
• The mark is generic – The mark uses the words that generically identify a product or service e.g. ‘Pen’ for a pen manufacturer.
• The mark is merely descriptive or mis-descriptive :
  • Descriptive of the goods or service – e.g. ‘Small’ for a compact computer
  • Descriptive of quality or feature of goods or service – e.g. ‘Fast’ for a super fast car
  • Geographically descriptive – California for a software company
  • Descriptive of an individual by using merely a surname – Jones Repair Shop
• The Mark is deceptive – The trademark attempts to mislead or deceive people as to the nature, quality, feature or geographic origin of the goods or services. e.g. Marketing a completely chemical based hair shampoo with a trademark that shows pictures of fruits and herbs may be rejected, as the consumers may be misled to consider the product as ‘herbal’ or ‘natural’.
• Immoral or Scandalous Marks – The mark with words or illustration that goes against the commonly accepted standards of public order, morality and religion

Though these are the some of the possible reasons for rejection, this is not a comprehensive list. An applicant has six months to respond or the application will be abandoned by the Trademark Office and there is no refund of the filing fee.

Publication: Once the Trademark Examining Attorney has approved your mark, it will get published in the Official Gazette, a weekly publication of the USPTO.

The USTPO allows 30 days from the date of publication for any party to file an appeal against the approval for registering the mark, if it may damage their interests. The appeal is heard by the Trademark Trial and Appeal Board of the USPTO.

If there is no opposition or if the opposition is unsuccessful then the application enters the next stage of the registration process. A Certificate of Registration will be issued for applications based on use, or a Notice of Allowance will be issued for intent-to-use applications.

Notice of Allowance: After the Notice of Allowance is received, the applicant then has six (6) months from the date of the notice of allowance to either:

• Use the mark in commerce and submit a statement of use along with a filing fee and the required specimens, OR
• Request a six-month extension of time to file a statement of use, along with a filing fee. An applicant can request up to five (5) six-month extensions before the application is considered abandoned.

Importantly, the USPTO will issue the registration certificate only after the statement of use is filed and approved.

Although the registration process can take 12 to 18 months at a minimum, the registrant’s rights will be effective from the filing date of the application

General Trademark Services:

• Federal Trademark Searches with opinion letter
• Preparation and Filing of Federal Trademark Applications
• Responses to Office Actions/Communications Issued by the Trademark Office
• Requests for Reconsideration of Final Refusals Issued by the Trademark Office
• Appeals to the Trademark Trial and Appeal Board (TTAB)
• Oppositions in the TTAB
• Cancellations in the TTAB
• Filing renewals and section 8 & 15 (5 year) affidavits

Other Trademark Legal Services:

• Maintenance and Renewals of Trademark Registrations
• Trademark Registration Amendments and Corrections
• Sending and Responding to Cease and Desist Notices
• Preparation of Assignments and Contracts involving trademarks
• Recording Trademark Assignments
• Trademark Licensing Agreements

General Copyright Services:

• Preparation and filing of Copyright Applications
• Preparation of copyright assignments and contracts
• General consultation on copyright issues

Copyright

General Copyright Information

Copyright is a form of protection provided by U.S. Copyright law to authors of “original works of authorship.” The original works of authorship must be fixed in a tangible form of expression and can be published or unpublished. The following are the various categories of copyright works:

• literary works – examples include books, poems, training manuals, catalogs etc.
• musical works, including any accompanying words
• dramatic works, including any accompanying music
•  pantomimes and choreographic works
• pictorial, graphic, and sculptural works
• motion pictures and other audiovisual works
• sound recordings
• Computer programs
• Advertising and marketing materials

The Copyright Law generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

• To reproduce the work
• To prepare derivative works based upon the work
• To distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending
• To perform the work publicly or in sound recordings
• To display the copyrighted work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work

Copyright rights are established by the act of creation. However, in order to enforce ones right, the work must be registered with the United States Copyright Office. The copyright law provides several advantages to encourage copyright owners to register their original works of authorship. Among these advantages are the following:

• Registration establishes a public record of the copyright claim.
• Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin.
• If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
• If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.
• Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.

International Copyright Protection: Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions which the United States is a party to.