Category: Trademarks

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Responding to Trademark Cease & Desist: Priority – The I Was First Defense

TrademarkPriorityDaniel Group obtained a federal registration on service mark “ServicePerformance.” But Daniel Group failed when it demanded and then sued claiming trademark infringement to stop Service Performance Group from using that name for similar services. Why did it fail?

Because the Daniel Group was not first to use the words “Service Performance” in business for its services. Service Performance Group began using its name 9 years before Daniel Group received its federal trademark registration.

Daniel Group did not have “priority of use.” So its trademark claim failed even though it had a federal registration and Service Performance Group did not (the space vs. no space between Service and Performance had no impact in this case).

A federal trademark registration is not bullet proof against prior users. This is the case of Daniel Group v. Serv. Performance Group, Inc., 753 F. Supp. 2d 541 (E.D. NC 2010). The court there stated the rule that it is not registration of the mark, but the “actually use of the designation as a mark that creates rights….Neither application for, nor registration of, a mark at the federal level wipes out the prior non registered, common law rights of others.” McCarthy on Trademarks 16:1 (citing Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427 (7th Cir. 1999)).

The “I Was First” Defense

If you receive a cease and desist letter claiming trademark infringement, one basis to defend is that you used the mark before the plaintiff used the mark.

Priority of use provides that the party that first starts using the mark usually wins. Priority can be established by actually use or by filing an intent-to-use trademark application (constructive use).

So if you started using the mark before the plaintiff, then the plaintiff may not have the right to stop you from continuing to use the mark in your geographic area.

However, if you have not applied to register your mark and the plaintiff has, the plaintiff may not stop you from using the mark in your geographic area, but your right to expand sales geographically may be limited.

Investigating Priority

How do you know what date Plaintiffs cease and desist letter may state the date that the Plaintiff first started using the mark? If the Plaintiff has a federal registration, the federal registration will provide a first use date. If the plaintiff’s federal registration resulted from an intent-to-use application you will look to see the filing date of the application as the constructive first use date.

You can also look for general evidence of use by date. For example, you can search the Internet Archive to see if the Plaintiff’s website on a certain date shows a use of the trademark. If the Plaintiff has a Facebook page, you can view the Facebook page to find posts having the mark and look to the date of the post (but the user can modify the date of a post).

The Plaintiff’s lack of priority of use, or “I started using the mark before you,” is one way to defend against claims of trademark infringement.

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Statement of Use: Proving Use In an Intent-to-Use Trademark Application

Actual use of your trademark in commerce is a requirement to receive a federal trademark registration. When you file a section 1(a) use-based  application, you must provide a first use in commerce date and a specimen proving your use when the application is filed.

If you file your trademark application as a section 1(b) intent-to-use application, you do not provide the office with a first use date or a specimen because you have not started using your mark in commerce. However, the USPTO will not issue a registration until you provide the office with (1) the date your mark was first used in commerce for the good and/or services specified in the application and (2) a specimen proving your use. TMEP 902. You provide this information in a “Statement of Use.”

A Statement of Use is filed generally after the USPTO issues a notice of allowance indicating that your registration is ready to be granted. A notice of allowance is issued after the application is published for opposition and not successfully opposed. TMEP 1106.1.

A statement of use may be filed within six months of the notice of allowance. A certain number of additional six-month extensions of time can be obtained if additional time is necessary to use the mark for the goods/services and there is an ongoing intent to use the mark for the goods/services claimed in the application.

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Gov’t Says Prove It: Trademark Application Specimens

Proof_SpecimenProve it! The specimen requirement in a federal trademark application is the government’s way of saying “you said you are using the mark, now prove it.” The USPTO requires that you submit a specimen showing the mark as it is used on or with the goods or services at some point in the trademark application process. The specimen is simply an example of how the mark is used.

The specimen requirements for goods are different from the specimen requirements for services.

Goods

For goods, the specimen must show the mark on (1) the goods, (2) containers or the displays associated with the goods, or (3) the tags or labels affixed to the goods. Trademark Manual of Examining Procedure (TMEP) 904.03. Containers associated with the goods can be the retail packaging or shipping packaging showing the mark. Displays associated with the goods can include trade show displays or retail displays or the like. One way to obtain is specimen is to take a photo of the mark used in the manner just described.

If due to the nature of the goods placement in the manner just described is impracticable, then the specimen showing the mark on documents associated with the goods or their sale. One example of this is the sale of computer programs that are sold via electronic download. In that case, an acceptable specimen might be a printout of a display screen that creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the webpage having the mark. TMEP 904.03(i).

Advertising material is not generally acceptable as a specimen for goods. TMEP 904.04(b). So showing the mark used on a website having the goods, is not enough, unless in some cases, the website provides a manner were the user can purchase the goods via the webpage and the mark is associated with the goods on that webpage. TMEP 904.03(i).

Services

For services, advertising material that shows the mark and advertises the claimed services is an acceptable specimen. TMEP 1301.04. It is important that the specimen show the services listed in the trademark application. If all of the services listed in the application are not shown in one specimen, then multiple specimens can be used to show all the services. Examples of advertising include webpages, brochures, print advertising, etc. It is also acceptable to use materials showing the mark used or displayed as a service mark in the sale of the services, which includes use of the mark in the course of rendering or performing the services.

Specimen Agreeing with Mark as Filed

The specimen must show the mark as claimed in the mark section of the trademark application. If the application provides a special form mark, then the specimen must show the mark in substantially the same manner as provided in the image uploaded in special form mark section of the application. TMEP 807.12.

When is a Specimen Required?

A specimen is required at the time of filing for a section 1(a) use-based application. The specimen is required later at the time of filing a statement of use after the trademark application is allowed for a section 1(b) intent to use application.

This make sense because in a use-application you are saying that you are using the mark at the time the application is filed. Therefore you should be able to provide proof of use (e.g. the specimen) at the time of filing.

But for a section 1(b) intent to use application, you are saying that you are not using the mark now at the time of filing but intend to use it later. Therefore, when you later start using it, that is the time the government requires that you provide proof.

Photo credit to Frank Hebbert under this creative commons license. The photo shown here is changed to crop in tighter on “proof” than is provided in the original photo.

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What does “Use in Commerce” mean in a Trademark Application?

UseInCommerceTrainWhat if your service business has a location only in one state? What if your business sells goods only in one state? Do such business have the opportunity to obtain a federal trademark application?

The owner of a barbershop attempted to register the name of the barbershop “Shear Perfection,” but the Trademark Trial and Appeals Board refused to register the mark. The Board said that the barbershop was a purely local business and the applicant did not show that it provided services “in commerce.” In re Conti, 220 USPQ 745 (TTAB 1983).

There is a limitation on the federal government’s power to register trademarks based on the Constitution, which can impact the contents of a trademark application. In order to determine the first use in commerce date for a trademark application, it needs to be determined whether the use is “in commerce.” The “in commerce” requirement can be a difficult requirement to apply correctly.

The “in commerce” requirement exist because the source of the federal government’s power to register trademarks comes from the Commerce Clause of the U.S. Constitution. The Commerce Clause in Article I, section 8 of the Constitution, provides “Congress shall have the power … To regulate commerce with foreign nations, and among the several states, and with the Indian tribes.”

Many trademark resources don’t explain, or adequately explain, this “in commerce” requirement. The reason for this is that it is complicated and difficult to explain the boundaries of this constitutional requirement. So they just gloss over it. I won’t do that. I’ll attempt to explain it here. But, as I said, the “in commerce” requirement can be difficult to apply. In some cases it is easy and in some cases it is hard. If this is your first trademark application, or if you have not handled many trademark cases, or if you haven’t repeatedly referenced the leading trademark treatise, McCarthy on Trademarks, and the TMEP over the years, you might get it wrong. You might get it wrong in a manner that will never matter, or you might get it wrong in a manner that will result in your trademark application being refused or your trademark registration being canceled.

How could getting it wrong not matter? When the actual first use date is after the first used date claimed in the application (i.e. the claimed date is too early) but before the date of the filing of the application (for a section 1(a) use application) or filing of a statement of use (for a section 2(a) intent-to-use application), some courts and the TTAB have found the challenger failed to show the falsity was fraudulent. Health Net v. Mid-America Health Network, Inc., No. 93,163, 2000 TTAB LEXIS 40 (TTAB 2000), Travelodge Corp. v. Siragusa, 228 F. Supp. 238 (N.D. Ala. 1964); See McCarthy § 19:52. Therefore the challenge failed. Nonetheless, you don’t want to chance it. You don’t want to give any potential opponent a bone to chew on. You want to get the date right.

If the actual first used date is after the application is filed (for a section 1(a) use application) or after the filing of a statement of use (for a section 1(b) intent-to-use application), then the resulting registration can be lost. 

Before continuing with this post, first read the prior post on the uses that qualify as a “first use” in commerce.

In Commerce

What does “in commerce” mean? Section 45 of the Trademark Act (Lanham Act), 15 U.S.C. §1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.” Section 901.03 of the Trademark Manual of Examining Procedure (TMEP) discusses the commerce that may be lawfully regulated by congress. Three types of commerce under the definition: (1) interstate, (2) territorial, and (3) between the US and a foreign country.

Territorial commerce is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, or the United States Virgin Islands) or between the United States and a territory of the United States.

Whether a use is a use in interstate commerce can be difficult to determine. As explained in my prior post, a mark is used in commerce with goods when:

  • (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce. 

A mark is used in commerce with services when:

  • the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

Interstate Use: Out-of-State Sale or Shipment

Looking at the “in commerce” portion of that requirement, the easiest and clearest case of a use in interstate commerce is a sale or shipment of the goods from one state to a customer in another state. This is a use in commerce because the goods have been sold or transported between states and Congress has the power to regulate commerce between states. Similarly, in the service context, the rendering of services from one state to a consumer in another state should be a use in commerce because the services are being rendered between states.

Intrastate Use (In-State): Directly Affecting Commerce

A purely intrastate (within one state) use does not qualify as a use in commerce. However, these purely intrastate situations are probably rare. Congressional power to regulate commerce has been interpreted broadly. The trademark rules provide “if intrastate use directly affects a type of commerce that Congress may regulate, this constitutes use in commerce within the meaning of [the Trademark] act.” TMEP 901.03. Here are some examples of in-state uses that qualified as a use in commerce:

Goods
The McCarthy trademark treatise, by J. Thomas McCarthy, provides regarding the scope of activities that affect commerce so as to qualify as a use in commerce: “If Congress has the power to control racial discrimination at local establishments [under the Civil Rights Act] that (1) serve interstate travelers or (2) sell products which come from out of state [which Congress does], then Congress has equal power to control and register marks used to identify the goods sold buy such establishments.” McCarthy on Trademarks § 19:123 (2014). Further, McCarthy notes that (1) Congress sought to give trademarks the greatest protection that can be given to them, and (2) that the U.S Supreme Court said the interstate commerce coverage of the Lanam Act has a “sweeping reach.” Id.

McCarthy concludes, “there appears to be no statutory or Constitutional barrier to holding that local sales are made ‘in commerce’ for trademark registration purposes if the sales are either made to interstate travelers or the sale involves purchase of parts, materials, or products from out of state.” Id.  This is McCarthy’s opinion. But a court and the Trademark Office are not required to agree with McCarthy’s opinion. Nonetheless, McCarthy’s position appears reasonable in light of the caselaw.

Services
The Larry Harmon Pictures Corp. case noted above held that the use in commerce requirement is satisfied by the service of out-of-state customers in a single-location restaurant.

In one Supreme Court case, the court found that the Commerce Clause permitted Congress to regulate (under the Civil Rights Act) a local restaurant that was not frequented by interstate travelers, where the restaurant received about $70,000 of food from out of state.  In another case, the Court found that the activities of a private recreational club affected commerce merely by the rental of supplies from out of state, playing of photograph records from out of state, and servicing an unknown number of out-of-state customers.

McCarthy concludes that “If Congress has the power to control racial discrimination at local establishments which either (1) service interstate travelers or (2) use products, a substantial portion of which move in interstate commerce, then Congress has equal power to control and register marks used to identify the services rendered by such establishments.” McCarthy on Trademarks § 19:105 (2014). Again, this is McCarthy’s opinion and it appears reasonable.

When there’s no advertising out-of-state and no showing of out-of-state clients, it may be difficult to show a use in commerce for services. The In re Conti barbershop case, discussed at the beginning of this post, is an example where the applicant did not show out-of-state advertising and did not show out-of state clients.

It is possible that the outcome of the Conti case might have been different if the applicant showed some out-of-state advertising. In a different case, the Board found that a billiard hall was rendering services in commerce because, while it was operating only in one state, it advertised out-of-state in New York. United States Shoe Corp. v J. Riggs West Inc, 221 U.S.P.Q. 1020 (TTAB 1984).

Conclusion

If you are not making sales or shipments, or rendering services out-of-state, then you need to look closely at your in-state sales or services to be sure that they directly affect commerce.

Photo credit to Roy Luck under this creative commons license.

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When a First Use is Not a First Use in Commerce for a Trademark Application

First Use In Commerce USPTO TrademarkThe date that you first used your trademark could be, but probably is not, the correct date to use as the first use in commerce date in a federal trademark application. Why? Because in many cases the first use of the trademark was on a website or marketing material before an actual sale or shipment of the goods or rendering of the service.

First Use in Commerce

For each class of goods or services in a federal trademark, you must declare when you first used the mark in commerce for those goods or services. Use in commerce has a specific meaning under the law. It does not mean simply using the mark. The use must also be combined with a sale of goods or a rendering of the services.

Use with Goods

For goods, the law provides a mark is used in commerce when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce. Therefore the mark must be used on or adjacent the goods as just described and the goods must be sold or transported in commerce.

For example, if you are selling food goods, it is not enough that the food goods were advertised. They must also be sold (or transported in commerce). If you first advertised the food goods with a flyer or on a website on January 1 and then made a first sale on January 5 of the food goods having the mark to an out-of-state customer, then the first use date for the application would be January 5. On January 5 the mark was used on the goods and the goods were sold. January 1 is not the first use date in commerce for the trademark application because the goods were not sold on or before that date. Advertising is not enough.

Use with Services

If you mark is used with services, the mark deemed to be used in commerce when the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services. Therefore use requires (1) the mark to be used or displayed in the sale or advertising using the mark and (2) rendering the services.

For example, an architect launched a website on January 6, signed an engagement with a out-of-state client to provide architecture services on January 10, and delivered preliminary designs to the client on January 30. The use of the mark on the website on January 6 is not a use in commerce for federal trademark application purposes because services have not yet been rendered under the mark.

It is not clear if the activities on January 10 would qualify as having rendered services, because on that day only the engagement was signed and the facts do not indicate that any services were rendered on that date. On January 30 the services would likely be considered rendered because the architect delivered work product related to the services to the client on that date. Therefore, under these facts, January 30 would be the “at least as early as” use in commerce date.

There is some case law indicating that a use in commerce for services might occur before the date that services are actually rendered. However its usually best to take a conservative approach and specify a first use date when services have clearly been rendered for a customer.

What if in the above scenario, the architect met with the client on January 10 and during the consultation described the architectural options for the client’s project and suggested architectural changes to the client’s original plan. The suggested architectural changes are likely a rendering of architectural services, unless indicated otherwise by industry practice in the architectural field. Therefore, January 10 would be the “at least as early as” use in commerce date.


Preparing to Use and Advertising Alone is Not Use

Preparing to use and advertising without a sale of goods or rendering of services does not qualify as a use in commerce. In Aycock Engineering v. Airflite Inc. 530 F.3d 1350 (Fed.Cir. 2009), Aycock’s trademark registration on AIRFLITE was cancelled because Aycock had not rendered the services he claimed in the application before the application was filed. AIRFLITE was registered in 1974 for the services of “arranging for individual reservations for flights on airplanes.” The registration was renewed in 1994. In 2001 Airflite Inc. filed a petition to cancel the registration alleging that Aycock did not use the mark for the services before registration.

The court described Ancock’s plans: “Mr. Aycock did not plan on operating the chartered air taxi services himself. Instead, his goal was to develop a system where he would serve his customers by acting as the middleman, or ‘communication link,’ between the customer and one of the air taxi service operators he contracted with to provide flights on an individual seat basis.”

Aycock prepared for operations by: (1) obtained two toll-free telephone numbers that the public could use to make reservations; (2) inviting air taxi operators to join his operation with flyers providing information about the AIRFLITE service, and (3) entering contracts with some air taxi service operators were the operators agreed to participate in the AIRFLITE service and paid modest initiation fees to Mr. Aycock.

However, Aycock’s services never got off the ground. Aycock estimated that he would need 300 air service operators under contract to make his service work, but he only got 12 under contract at any one time. He never marketed AIRFLITE service to the general public and did not give the public the opportunity to use the toll free numbers to make reservation. He never arranged for a passenger to fly on a chartered flight.

The court found that Aycock never rendered services of arranging for individual reservations for flights on airplanes and therefore did not use the mark in commerce before the filing date of the application. As the original trademark application did not meet the requirements when it was filed, it was void and the registration was cancelled. The registration was cancelled in 2007 (by the Trademark Board) even though the registration was issued more than 30 years earlier in 1974.

At Least As Early As

Determining the proper at least as early as first use date is important, because declaring a first use date before the actual use can negatively impact your registration. Since the application provides “at least as early as” you can always prove up an earlier date during a dispute if needed. Therefore, when in doubt, error on the said of a later date verses an earlier date if you are uncertain if the earlier date qualifies. Or better yet, contact a trademark attorney for help.

Multiple Items in the Description

If you have multiple items listed in your description of goods/services in the same class, you should declare the date when all the goods/services listed in that class were rendered or sold. For example, say you declare the goods of t-shirts, shorts, and hats in class 25 in your application. You first sold a t-shirt having the mark on February 1, you first sold a pair of shorts having the mark on February 15, and you first sold hats having the mark on April 1. Then the first use date for all of these goods in class 25 would be the latest date of April 1. April 1 is the earliest date when on or before that date all of the listed goods in that class had been sold with the mark.

Save First Use Date Proof

The USTPO does not require that you submit proof showing the date of your first used in commerce. It does require a specimen showing the mark in use. But the specimen does not need to show the date of first use. For example, an invoice showing the date of first sale is not required by the USPTO. In many cases, the specimen (e.g. a photo of the goods having the mark, or advertising of the services) itself will not have a date of the corresponding sale of goods or rendering of services. However, you should keep a copy of such an invoice for your records. If another challenges the validity of your trademark application/registration by questioning your first use dates, having records showing the first use date will better position you to win that fight.

Providing an accurate first use date in commerce is important. In certain cases, providing an incorrect use in commerce date can result in the cancellation of the registration or denial of registration.

Photo credit to flickr user andrechinn under this creative commons license.

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How to Write a Description of Goods or Services for a Trademark Application

It can be difficult to write an accurate and complete description (identification) of goods/services in a federal trademark application. When describing the goods and services you are or want to sell/provide, you want use somewhat broad language, but not too broad.

You cannot broaden the identification after the application is filed. In some cases, if the description is not accurate and the needed changes would broaden the identification, the application may be lost without a refund. However, if the description is too narrow, you could give up valuable trademark protection that you could otherwise obtain.

So how do you draft a description that is just right? I’ll explain that below, but first, why does the application require a description of goods/services?

Why Do I need a Description Of Goods/Services?

Except for famous trademarks, trademarks rights generally do not extend to protect every product or service. If you use the trademark ACME for selling tooth brushes only, you can not use trademark law to stop someone from using ACME for selling sailing yachts. Consumers don’t expect that providers of tooth brushes also sell yachts.

Trademark rights extend to cover instances another uses your mark or something similar with goods/service that are the same or similar to goods/services as you provide under the mark. Therefore, the scope of trademark protection depends on the goods and/or service that you provide under the mark.

In order to let the public know the scope of your trademark rights based on the goods/services, the USPTO requires that you provide a description of the goods and/or services that the mark is or will be used on or with. The USPTO calls the description of goods/service the identification of goods/services.

How does the USPTO use the Description (Why is it Important)?

The description is important because it is what the USPTO will use to compare to other trademark registrations or trademark applications to determine whether there is a conflict. The comparisons occur in two types of situations.

The first comparison situation occurs when the USPTO reviews your application. There, the USPTO compares your mark to previously filed applications and registrations that are live. If the description is too broad, then the USPTO might find a conflict between your mark and a previous application or registration, which would not have occurred if your identification was not over broad. This problem can sometimes be corrected by an amendment to the identification that narrows that identification to avoid similarities with the prior application or registration that the USPTO asserts is in conflict.

The second comparison situation occurs when the USPTO is examining later filed trademark applications. If your description is too narrow then the USTPO might allow a later filed trademark application to be registered. But if your application had a proper description the USPTO would have blocked a later confusingly similar mark from being registered. Therefore, a description that is too narrow will not properly operate to block later filed trademark applications that would otherwise be in conflict. As a result, a narrow identification of goods and services will necessarily narrow the blocking effect of your application and narrow your trademark rights.

Now you know why an description is needed and what it is for. Next, we’ll see how to draft one.

List Your Goods and/or Services

Before selecting or writing a description of goods or services, start by making a list. The list should include all of the goods and services that you sell or provide (or intend to sell or provide) under the mark. If you are already using the mark, look at your product list, your advertising, and your website, among other areas, to complete this list. If you are not already using the mark, look at your business plan or product/service plan to identify the goods and services that you will provide under this mark.

You got Lucky: Selecting a Description from the ID Manual 

Now see if you got lucky. What do I mean? The USPTO provides a listing of pre-approved descriptions, which are found in the US Acceptable Identification of Goods and Service Manual (a.k.a the ID Manual). If you find a description(es) provided in the ID Manual that accurately and completely describes the goods and/or services that you provide or intend to provide, then you can select it and you’re done.

If you choose a description from the ID Manual the USPTO will not object to it. The USPTO charges lower fees for an application (TEAS PLUS form application) where the description(s) are selected from the ID Manual. Why? Because the trademark examining attorney will not need to review that part of your application, because the description is already pre-approved. Less work for the USPTO, less government fees.

However, many situations are not accurately or completely covered by a pre-approved description in the ID Manual. Many of trademark applications that I file require a custom written description because the ID Manaul does not completely and accurately describe all of my client’s goods / services. And if that’s true for your case, choosing a description that is “close” but not correct or complete is a problem. Such a “close” selection may result in the USPTO rejecting your trademark application, or if registered, a registration that is unnecessarily narrow, or one that is subject to cancelation as inaccurate.

If you can’t find accurate and complete descriptions in the ID Manual don’t try to force it by selecting the closest option. You’re going to have to do the hard work of writing a description.

Doing the Hard Work: Drafting an Identification of Good / Services

In some cases, writing your own description can be one of the most difficult parts of a trademark application to complete correctly. Here are some pointers that you should know.

Use a Portion from the ID Manual, if Possible

Even if the ID Manual does not have the exact description you need, it might have a portion of a description that you could use. You might take that useful portion and modify it and/or add to it to provide an accurate and/or complete description.

Do Not Merely Repeat the Class Heading

For each description you will need to select a corresponding international trademark class (“trademark classes”), which I explain below. Your description cannot merely repeat the class heading or title of classes of goods and/or services.

For example, class 25 has a heading or title of “Clothing, footwear, headgear. Providing a description of “clothing” is merely repeating a portion of the class heading, and would not be accepted. Instead more detail is needed, e.g. “clothing, namely, t-shirts, pants, and gloves.”

Similarly, computer software must be described with particularity. It is not sufficient to provide a description of “computer software.” The description of computer software should include the function or purpose. The description “computer game software” provides a purpose or field of use of “gaming.” Searching the ID Manual for “computer hardware” shows many examples: “computer hardware and software for setting up and configuring wide area networks”, “Computer operating software”, “Computer software platforms for {indicate function or use},” among many others.

Avoid Open Indefinite Words Leading A List

Avoid indefinite words and phrases, such as “including,” “comprising,” “such as,” “and the like,” “and similar goods,” “like services”, “etc.” Instead, you can use a broad term followed by the terms “namely,” “consisting of,” “particularly,” to list a specific set of goods or services within a broader term where more particularity is needed, e.g. “power tools, namely, drills” or “needle point kits consisting of needles, thread, and patterns” or “projectors, particularly projectors for the entertainment industry.”

Don’t Use Unqualified Broad Terminology if it would Fall Into Multiple Classes

The USPTO will object if the broad terminology used in the description would fall into multiple trademark classes. For example, an description of “blankets” would not be accepted without qualifying wording. “Blankets” fall into multiple classes. e.g., fire blankets (class 9), electric blankets (class 11), horse blankets (class 18), and bed blankets (class 24).

Trademark_IDManual_Search_BlanketsTo avoid using terminology that falls into multiple classes, search the ID Manual for the terminology you are considering using in the description. If the results show that terminology falls in more than one class, then you know you need more specific wording or you need to use different terminology that does not fall into multiple classes. Click the thumbnail image at the left of this paragraph to see a screenview of a search of the ID manual for “blanket”. In that screenview you can see under the “class” column there are results in classes 9, 10, 11, 16, 17, 18, 22, 24, 25, 29, 30, 36, 39, and 43. So, the term “blanket” alone is too broad.

Use Language Understandable to the Average Person

The language used in the identification should be that which could be understood by the average person, not having an in-depth knowledge of the relevant field. If terms of art of a particular field or industry are used in the description and those terms are not understood by the general population, the identification should include an explanation of the specialized terminology.

Use Proper Punctuation (Semicolon vs. Comma)

The use of a comma instead of a semicolon can be problematic. A semicolon should be used to separate distinct categories of goods or services within a single class. For example, in the case of In re Midwest Gaming & Entertainment LLC, No. 85/111552 (TTAB 2013), the prior registrant’s use of a semicolon rather than a comma in the description of services was key to the USPTO providing that registration with a broad blocking effect. In that case, the applicant applied to register the mark LOTUS for “bar services located in a casino.” The trademark board affirmed the trademark examining attorney’s refusal to register that mark based on a previously registered trademark LOTUS (Reg. No. 3,398,674) for “providing banquet and social function facilities for special occasions; restaurant and bar services.”

The applicant argued that “restaurant and bar services” should be limited by the preceding language of “providing banquet and social function facilities for special occasions.” Particularly, the applicant argued that the restaurant and bar services of the registration, “must be limited to a specific type of such services and to a specific trade channel and class of purchasers, i.e., to restaurant and bar services provided in connection with ‘providing banquet and social function facilities for special occasions.’”

The trademark board rejected this argument, stating “Under standard examination practice, a semicolon is used to separate distinct categories of goods or services.” The board continued, “We find that here, the semicolon separates the registrant’s ‘restaurant and bar services’ into a discrete category of services which is not connected to nor dependent on the ‘providing banquet and social function facilities for special occasions’ services set out on the other side of the semicolon.”

As the registrant’s “restaurant and bar services” were not limited to any particular location or trade channel, then it was presumed to cover all trade channels or classes of purchasers, including those in a casino. In other words, the registration’s broad use of “restaurant and bar services” stood on its own, separate from and not limited by “banquet and social function facilities” services. The use of a semi colon provided the owner of the registered LOTUS mark with broad blocking protection.

If a comma was used rather than a semi colon here, the result of this case would have been different. The LOTUS registration would not have blocked the LOTUS applicant. The use of a comma, when a semi colon should be used, would have narrow the blocking effect of the LOTUS registered trademark.  A narrowed blocking effect means that similar marks will be more likely to be registered and your ability to broadly protect your trademark rights will be reduced.

Do not include trademarks in the Description

Do not include trademarks in your description. If your product is designed to work with a particular other product, describe that other product generally rather than referring to it by its brand name. Not: “engine parts for use on Ford cars”, but instead “engine parts for use on automobiles.”

Do not include goods or services that you do not sell to the public

If you use marketing to promote your business (like most businesses), but you do not help others market their business, non-profits, etc., then you should not list marketing in your description of services. The description includes goods and/or services that you sell to or provide for others.

Reviewing other Registrations in the Field

In the same way that searching for descriptions from the ID Manual can give you ideas about how to write a description, so too can searching the descriptions provided in trademark registrations in the same field as you operate. Reviewing descriptions in issued trademark registrations can help you determine if you have missed anything in your description. However, it is always possible that such registrations could be unduly narrow or incorrect. Therefore you should look at number of registrations to get a better feel for whether one particular description is an outlier. And you should never use a description just because it is found in a registration if it does not accurately and completely reflect the goods or services you provide or intend to provide. Looking at other registrations is just a way to get ideas. But not every referenced registration will provide good information applicable to your situation. And sometimes there are no good examples, or at least not ones that are easily found, for a particular product or service.

The USPTO provides a first video and a second video that further discuss the identification of goods and services. And, section 1402 of the Trademark Manual of Examining Procedure (TMEP) provides additional information on the requirements for a proper identification of goods and services.

Why do I need to Select Class(es) of Goods and Services?

In addition to writing a description, the USPTO requires you to select one or more international trademark classes of goods and services from the Schedule of International Trademark Classes of Goods and Services (Schedule) that correspond to the goods and services provided in the description portion explained above. This step seems repetitive. If you already have a description of goods and services, why do you have to select one or more classes that this description falls into?

The answer is: so that the USPTO can determine how much money to charge you for the application. The Schedule divides all of the goods and services into 45 different classes.

The trademark classification system is an administrative system where the government determines how much work it will be to process your application and charges you filing fees accordingly. If you provide a description that covers many classes, then the USPTO will have to search a larger volume of prior trademark registrations and applications to determine whether your mark conflicts with any previous trademark registrations and applications.

For example, if you are going to use your mark ACME for the goods of toothbrushes, bath towels, and t-shirts, the USPTO will need to search for prior registrations and applications that claim use of ACME (or similar marks) on all of those goods and similar goods. But if you only claim the use of ACME for the sale of toothbrushes, then USPTO will have less work to search for the use of ACME (or similar marks) for just toothbrushes and similar goods. Not needing to search for mark used with bath towels and t-shirts, means its less work for the USPTO. There are less marks to search through when an application claims fewer goods or services.

Selecting the Right Class(es) of Goods and Services

You can read the description provided for each class here and select the appropriate one or more classes. Another way to determine which class(es) you should designate in your trademark application is to look at the classes provided for the same or similar goods or services provided in the ID Manual. For example, if you are going to sell HATS and you search the ID Manual for HATS. An excerpt of the results is shown below:

USPTOIDManualHats

If you sell Hard Hats then you would select class 9. If you are selling general use hats then you would select class 25.

Also as explained above regarding the description, you can search existing trademark registrations in your field to see what classes others have selected for your type of goods and services.

Technology Fields

Certain technologies can span across multiple classes. For example, if you provide downloadable trading software for the finance industry, such as software downloadable via a website  or through an app store, then you are providing software as goods. In that case, your application would include class 9, and may have a description of goods of: “Computer programs and computer software for electronically trading securities. ”

If instead you provide the trading software as software as a service (SaaS) available through a web interface, then instead of providing goods, you are providing services. In that case the correct class will not be class 9, but will be class 36. Class 36 covers financial services. An appropriate description might be “Securities trading and investing services for others via the internet.” If you provide a downloadable app as well as online trading then your application could include both class 9 and class 36.

In some cases, more than two classes might be needed for the broadest protection in the case that the technology component does not fit within the industry class. For example, if your services involve telecommunications, telecommunications consulting is in class 38 and telecommunications technology consulting is in class 42.

Conclusion

Sometimes providing an appropriate description of the goods and/or services and selecting the right is easy, e.g. hats. In many other cases, it is hard. Yet, providing an accurate and complete description of goods / services in one of the most important components of a trademark application. The description determines (1) whether your application will conflict with a prior registration or application, and (2) the extent to which your registration will act to block later filers from registration on similar marks. In short, the description and class selection impacts the scope of your trademark protection at the USPTO.

Lead image credit to USPTO here.

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Trademark Application Part: The Mark (Drawing)

TrademarkApplication_Mark_and_DrawingFiling a federal trademark application online looks easy. Just fill in the blanks in the online form, right? But it is not necessarily easy. Some errors are uncorrectable and can doom a trademark application. This is the first post in a multi-part series discussing the parts of a U.S. federal trademark application. In this post I’ll discuss the mark (the drawing) portion of the trademark application. Before filing a trademark application you should considered doing a trademark search.

The mark/drawing section of the application is were you specify the mark that you want to register. You will have to choose between a standard character trademark or a special form trademark. If you intend to register a standard character trademark, then you need to know the words/characters of your mark. You can enter the words/characters of your mark in the USPTO form. You don’t need to worry about section 1-4 below. You can skip straight to section 5.

If you intend to file a special form mark, you will have more work to do. A special form mark is one where a logo, font, style, color, or other graphical element is claimed as a feature of the mark in the application. First, you will need to have a JPG version of your mark having a height and a width each in the range of 250 to 944 pixels. The drawing should show the mark by itself and not together with packaging or product in the background (e.g. the STARBUCKS COFFEE drawing below does not include a coffee cup or adjacent advertising or products). A separate part of the application, called the specimen section, is were you provide evidence of the mark used on or in relation to the goods or services. The depiction of the mark in the mark/drawing section is how it will appear on the trademark registration certificate, if granted.

1. Claiming Logo, Font, or Style Elements

What if you have a logo used together with the words/characters of your mark? Or what if you have the characters of your mark provided in a stylized form or font? Should you automatically register your mark as a special form mark? No.

In many, but not all, cases the best course will be to register your mark as a standard character mark without any claim to a logo, style or font.  Claiming a logo, font, or style element may cause problems maintaining the registration if you later change/redesign the logo or style elements. In other words, are you sure you will like the style or logo elements in 10 years, or will they need a design refresh?

On the other hand, if the words/characters of your mark are weak, then you may want to include a logo or style elements to increase the chances of obtaining a registration on the Primary Register. There are several factors that you will want to consider in deciding whether to claim a logo, font, or style elements in your trademark application and whether you should pursue multiple trademark applications.

2. Including A Claim of Color or Not

Another issue that arises when claiming a special form mark is whether to include a claim of color. Generally, you probably do not want to make a claim of color, unless the color is very important. When color is not claimed, the registration will cover the mark presented in any color arrangement.

If you do not intend to claim color as a feature of your mark, then the JPG version of your mark that you submit to the USPTO in the mark/drawing section cannot contain any color. Instead the features of your mark should be shown in black. If you are claiming color as a feature of your mark, then the JPG file should show your mark in color.

3. The Drawing: A Quality Drawing

It is important that the JPG file of the Mark (e.g. the drawing) is high quality and shows the mark without noise or graininess when applying to register a special form mark. The USPTO recommends that the image be between 300 and 350 DPI. The file showing the mark will be what is used when comparing your mark other potential conflicting marks. If a feature of the mark is difficult to distinguish due to poor file quality, this may be held against you as the trademark owner who uploaded the low quality version of the mark.

4. A Description of the Literal Elements and Drawing

StarbucksCoffeeUSPTOImageIf you choose to proceed with a special form mark, the USPTO will require that you describe the literal elements in the mark that are in the uploaded JPG file. Literal elements are the character(s) of the mark appear in the Trademark Office’s standard character set, which includes letters, numbers, and certain other symbols. For example, in Starbucks’ Trademark Registration no. 3,907,157, shown at the right, the literal element is STARBUCKS COFFEE.

Also, the USPTO will require that you provide a description of the mark. The description will describe in words the design elements and the standard characters in the mark and their spacial relationship between one another. The description of the mark for Starbuck’s registration “The mark consists of the wording ‘Starbucks Coffee’ in a circular seal with two stars, and design of a siren (a two-tailed mermaid) wearing a crown.”

If color is claimed, the USPTO will require that you list the the colors that are claimed in the application in a part of the application form providing: “The color(s) [  List of Colors Here  ] is/are claimed as a feature of the mark.”

5. Changes to the Mark After Filing Rarely Allowed

Once your application is submitted changes to the mark are rarely allowed. Therefore, it is important that your mark is presented in the federal application exactly as you are (or will be) using the mark in your business. For example if your trademark has two words, will the words be used separated by a space or will they be run together? The application should include the mark in whichever way you intend to use it. Since you need to submit an example (a specimen) of the mark used on or in connection with the goods or services in addition to the drawing, the USPTO will check to see if your use of the mark matches the mark that you claimed in the mark/drawing section of the application.

Further you should use the mark consistently (e.g. with a space or without) in all of your uses of the mark. Inconsistent use can negatively impact your trademark rights.

6. Conclusion

Gathering and entering accurate information in a trademark application for a special form mark involves more work than for a standard character mark. The first decision that needs to be made in the application process is whether you should make a special form claim in the application. For more information on the mark/drawing section of the trademark application see the USPTO videos here and here.

Lead image credit to USPTO here.

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What Corporate Attorneys Should Do About Trademarks Before Forming a Corporation

StartupA client arrives at your law office and wants to start a company and form a corporation or LLC. Your client had a company name in mind. You search the Secretary of State records for other companies with the same or similar name and find nothing. You also search the state trademark database and find nothing. You prepare an engagement agreement for the work of forming the corporation. Is your client in the clear to use the name? Not necessarily.

The formation of almost every company implicates trademark law. Every new company needs a name. That name will often be used with the relevant group of purchasers or suppliers. Therefore, in addition to counseling on whether the chosen name is protectable as a strong trademark, an attorney’s process forming a corporation, LLC, or other entity should include a trademark search or an informed waiver by the client of the trademark search. Below I explain the reasons why a search or waiver is necessary and provide an example client waiver.

Searching Secretary of State Corporate Records is Insufficient

Searching the corporate, LLC, and DBA records of the relevant secretary of state is not enough. Trademark rights, e.g. the right to use a name or other indicia to identify a source of goods or services, is controlled by federal law under the Lanham Act. As federal law trumps state law, approval of the name of the new corporation by the Secretary of State cannot be used to defend against claims of trademark infringement. The decision of the secretary of state does not authorize your client to use a name, if that name would infringe a third party’s prior trademark rights.

Obtaining a State Trademark is Insufficient

Moreover, an Illinois state trademark registration provide few benefits because they are subordinate to federal and common law trademark rights. Burger King of Florida Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968) demonstrated that an Illinois state trademark registrations is subordinate to a federal trademark registration. Steak & Brew Inc. v. Beef & Brew Restaurant, Inc., 370 Supp. 1030 (S.D.Ill. 1974) demonstrated that an Illinois state trademark registration does not grant the owner rights throughout the state. Therefore obtaining a Illinois state trademark will not insulate your client from claims of trademark infringement.

Searching USPTO Trademark Database is Insufficient

Still further, searching the trademark database at the U.S. Patent and Trademark Office is not sufficient to fully clear a name for use. This is true because in the United States trademark rights can be obtained by use alone. A registration is not necessary for a person or entity to obtain trademark rights. Therefore, searching the U.S. Patent and Trademark Office (USPTO) trademark database is not sufficient to determine whether your use of a mark is clear. Someone could have gained superior rights in the mark by use without registering.

U.S. common law provides rights based on use alone because trademarks are designed to prevent consumer confusion. Therefore, in one example, the law grants rights to trademark users where the relevant purchasing public has come to recognize a particular trademark as representing a source of particular goods/services, even if that trademark is not registered. This rule protects consumers, but increases the search burden on companies because searching the USPTO database may not find all relevant uses of a mark.

Receiving a Federal Registration is Insufficient

Further, even if the USPTO grants a trademark registration on the mark, that is no guarantee that your client can use your mark. This is true because, as stated above in the U.S. trademark rights can be generated based on use alone without any registration. The USPTO will only check the USPTO database and will not check state databases, the Internet, or common law usages to see if someone else has previously used the same or similar mark for the same or similar goods / services as your client plans.

If a prior user has superior rights, in some circumstances, the prior user can seek to have your client’s trademark registration canceled along with demanding your client stop using the mark. For example, 15 USC 1052(d) provides that a mark may not be registered if it “so resembles a … mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, or to cause mistake, or to deceive….” See TBMP 309.03(c).  Therefore, if a third party was first to use the same or similar mark on the same or similar goods, that third party might be able to oppose your client’s trademark application or seek to cancel your client’s trademark registration.

In other circumstances, the prior user might have trademark rights in the geographic area that they were operating in before your client registered. Such rights might prevent your client from expanding to market and sell in that area. The way to know that your client is clear to use the mark throughout the U.S. is to have a comprehensive trademark search performed. Therefore, you cannot rely on the USPTO’s approval of the mark as clearance.

Comprehensive Searching

The comprehensive search should include direct hits (identical wording/characters) as well as marks that are similar or might lead to consumer confusion. This search frequently includes searching for homonyms, synonyms, phonetic equivalents, alternative spellings, anagrams, marks with similar components, and marks that start or end the same, or that have any other similarity.

A comprehensive search may look in federal and state trademark databases, online databases, trade directories, product catalogs, internet domain names, and the like. The goal is to find an actual use of the proposed mark, or a similar mark, whether or not it is officially registered. Third party search services may be able to provide such raw comprehensive search results. Then the search results will need to be analyzed to determine whether any of the search results present a risk.

 Client Acknowledgement / Waiver

Many times a client may decide to forgo the comprehensive trademark searching due to the expense. If the client decides to skip searching, the lawyer should include a written acknowledgement of the risks and the client’s decision in the lawyer’s engagement agreement or in a separate writing. One sample acknowledgement could be:

This engagement does not include undertaking any trademark searching. This engagement does not include advising whether or not the use of the above listed Mark/corporate name would infringe another’s trademark rights. The (1) approval of a trademark application by the U.S. Patent and Trademark Office or (2) acceptance of the articles of incorporation by the Secretary of State does not guarantee you can use the Mark/corporate name and does not guarantee that the use of the above listed Mark/corporate name will not infringe another’s trademark rights.  Only a comprehensive trademark search can reveal information sufficient to provide advice regarding whether the Mark/corporate name is clear to use. Comprehensive searching and related analysis is not included within the scope of this engagement.

Name changes are disruptive and can be expensive. The client should know what risks they are taking when skipping a comprehensive search. Including a written explanation of the risks in the client engagement letter can avoid problems between you and your client down the road if valid claims of infringement are made by a third party.

Photo credit to flickr user dierken under this creative commons license.

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Trademark Conflict? Found My Trademark Registered for Different Goods or Services

If during preliminary trademark searching you find a mark that is registered at the U.S. Patent and Trademark Office, you may wonder whether that will block your ability to obtain a trademark registration or to use your trademark with your particular goods and services. If the goods or services provided under the registered mark are sufficiently different from the goods or services that you intend to provide under your mark, then there might not be a conflict between the registered mark and your proposed mark.

Trademark rights usually don’t extend to all goods and services. But instead trademark rights extend to the goods and services for which the mark is registered or used and similar goods and services. There is an exception to this rule for famous marks, such as McDonald’s or Nike. Famous marks have a broader protection that guards against uses by others even in very different fields. Therefore even though Nike provides athletic gear you cannot start a software company using the Nike mark because it will dilute Nike’s famous brand.

LexisNexisYet many marks are not famous. Therefore the scope of trademark protection will be limited to the goods and services for which the mark is registered or used and similar goods and services. For example, Reed Elsevier operates an company that provides legal research databases among other information services. Reed Elsevier owns the mark LEXIS and LEXISNEXUS for  “computer assisted legal research services.”

LexusAn unrelated company, Toyota, owns the mark LEXUS for automobiles. LEXIS and LEXUS are very similar in sound and appearance, differing only by one letter. However, the differences in the services/goods provided by the respective owners is substantial. An argument can be made that consumers don’t–or at least at the time these marks were first used–consumers didn’t expect a company that provides legal information services to also make cars. This may be changing as cars have more consumer electronics and data integration. But at the time these marks were first used, the service/goods were sufficiently different to avoid a conflict. Therefore, in certain circumstances similar or even identical marks can co-exist when they are used on goods/services that are sufficiently different.

On the other hand, whether there is a conflict between two marks considers, at least in part, focusing on the similarities and does not require that the marks or the goods/services be identical to find a conflict. If Toyota did not provide cars under the LEXUS mark, but instead provided legal information services, then the services provided under each mark would be  similar. It is unlikely that the difference of an “I” in LEXIS and an “U” in LEXUS would avoid a conflict in that circumstance.

There are many instances where a consumer might encounter the mark spoken orally, such as in a radio advertisement or in an discussion among customers. Therefore, all other things being equal, small differences in the marks, which create substantially the same sound when pronounced, are unlikely to avoid a conflict when the goods/services are similar.

Determining whether there is a conflict between marks is very circumstance dependent and often involves the weighing of several factors. However, merely finding a similar or even the same mark registered at the USPTO does not necessarily mean you are blocked from using that mark on different goods or services. Sometimes it does, sometimes it doesn’t. Check with an attorney for guidance on your circumstance.

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Obtaining Foreign Trademark Protection through the Madrid International Trademark System

WIPO-MP2The Madrid System provides a means for trademark holders to protect their marks in multiple countries through the filing of one application in a single office, in one language, with one set of fees, in one currency. This post will explain the advantages, disadvantages, process, and example costs when using the Madrid System.

The Madrid System is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks, and the Protocol Relating to the Madrid Agreement (the Madrid Protocol (MP)).  As of February 2024, 114 countries were members or contracting parties of the MP. While most industrialized countries are members, Canada is not. The International Bureau of the World Intellectual Property Organization (WIPO), in Geneva, Switzerland administers the international registration system of the MP.

Advantages
The benefit an MP application are especially apparent when seeking trademark protection in more than one foreign country. The benefits of an MP international application is that it is easily filed in one location (e.g. at USPTO) and you do not need to hire local attorneys in each country were you seek protection in order to file an application. Further if protection is approved in a particular country without objection by that country’s trademark office then there is no need to hire a local attorney at any point in the process. Renewals paid to one place (WIPO) at one time (every 10 years), so keeping track of differing renewal periods and requirements of various countries is not required.

Disadvantages
The international application and registration depends on a corresponding U.S. (basic) trademark application for the first five years. If within the first five years, the US trademark application/registration expires, is cancelled, or abandoned then the International Bureau will cancel the international registration. Yet, after five years, the international registration is independent of the basic application or registration. In many cases, when seeking protection in multiple countries, the advantages outweigh the disadvantages.

The Process at the USPTO
MP applications must be filed in a receiving office and cannot be filed directly at WIPO. The U.S. Patent and Trademark Office (USPTO) is a MP receiving office.

For a person or entity to file an MP application in the USPTO, the applicant must first file or have already filed a U.S. trademark application (or have received a U.S. Trademark registration) on the mark(s) before an MP application can be filed on that mark(s). Such a U.S. trademark application/registration is called a basic application/registration under the MP. The list of goods or services in the international application must be identical or narrower than the list of goods or services in basic application/registration.

A person or entity is eligible to submit an international application at the USPTO if the person or entity is trademark owner (1) having an application filed in or a registration issued by the USPTO and (2) who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States.

When to File?
If you file your international application within six months of filing your U.S. trademark application, your international application will be given the filing date of your earlier filed U.S. trademark application. You can file after the six month time period has expired, but in that case you will not receive the benefit of your U.S. application filing date.

Fees
The filing fees for a Madrid protocol application comprise two parts fee: (1) the International Bureau fees and (2) certification fees charged by the USPTO. The USPTO charges a certification fee of $100.00, per class, if the international application is based on a single U.S. application or registration, and a certification fee of $150.00, per class, if the international application is based on more than one U.S. application or registration.

International Bureau (IB) charges fees based on (1) whether the mark is in black and white or in color, (2) the countries designated in the international application for trademark protection, and (3) the number of classes of goods and services provided in the international application. WIPO provides a fee calculator for determining in advance the International Bureau fees that a particular international application requires. The calculator provides two letter country codes [PDF] for selecting countries for protection.

For example, to file a international application under the MP through the USPTO based on one U.S. trademark application or registration showing the mark in black/white, having one class and designating the European Union (Office for Harmonization in the Internal Market (OHIM)) the government fees would be (as of July 2024):

USPTO Certification Fee: 100 USD
Basic International Application fee: 653 CHF (Swiss Francs)
European Union Fee paid to IB: 789 CHF
Total government fees due at time of filing: ~1,736.58 USD (at a 1:1.135 exchange rate of CHF to USD)

Certification By USPTO
After the MP application is filed at the USPTO, the USPTO will check the application to ensure the filing requirements are met (37 CFR 711(a)). If all of the filing requirements are met, the USPTO will certify that certain information in the international application is the same as the information in the basic application or registration. Then the USPTO will forward the international application to the International Bureau. If application does not meet the filing requirements, the USPTO will not certify the application and will notify the applicant.

Review by International Bureau
After the USPTO certifies the international application, the International Bureau will review the application to ensure it meets all the requirements of the Madrid Protocol. If the requirements are met and appropriate fees are paid, the IB will issue a certificate to the applicant, publish the registration, and notify the respective trademark offices of the countries that the applicant designated for trademark protection in the international application.

Review by Designated Countries
Each county where the applicant sought protection by designating that country/jurisdiction in the international application will review the contents of the international application under the local law of that country. If no objection is raised by the reviewing office of the respective country, the applicant will receive protection in that country. If an objection is raised by the reviewing office of a respective country, then a local attorney will need to be hired in those countries to evaluate and respond to the objection. Each designated country has 18 months to issue a refusal/objection to grant protection in that country. If a refusal is not issued within that time frame, then protection is automatically granted in that country.

Adding Countries
An owner of an International Registration can add countries to its registration by filing a subsequent designation request at the USPTO.

Term and Renewal
Protection under the international registration, in countries where protection was not finally refused, continues for 10 years from the date of registration. The registration can be renewed in subsequent 10 year periods by payment of a renewal fee to the International Bureau.

Conclusion
Filing a international trademark application under the Madrid Protocol may save money over hiring local attorneys to file in each local country directly, especially when seeking protection in multiple foreign countries. The centralized renewal fee feature of these application reduces the cost and complexity of maintaining foreign trademark protection making it a smart decision in many cases.