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.

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.


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).


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.

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.

Difference between a Trademark and a Service Mark

Tradmark_or_ServicemarkTrademarks are used to identify a source of goods. Service marks are used to identify a source of services.

If your business provides services to customers, then the names, logos, and other marks used to provide services are considered service marks. For example, when you goto a Marriott hotel, the Marriott mark is being used as a service mark related to the hotel services (e.g. providing hotel rooms for customers). When you rent a hotel room goods are not necessarily sold, instead the service of a place to stay is provided.

If your business sells goods to customers then your names, logos and other marks used to provide goods are considered trademarks. The Coca-Cola mark is being used as a trademark when it is used to sale beverages.

If your business provides goods and services to customers then your business name and logo may be considered both a trademark and a service mark. If you goto Starbucks and purchase a coffee and then sit down in the coffee shop to drink it, the Starbucks mark is being used as a trademark and as a service mark. The Starbucks mark is used as a service mark because Starbucks is providing you with retail store services by providing a coffee shop location where you can purchase and consume their coffee. The Starbucks mark is also used as a trademark because Starbucks is selling you the actual goods of coffee, which you consume.

You can use “TM” in superscript next to your trademarks and you can use “SM” in superscript next to your service marks. If you have a mark that is both a trademark and a service mark, TM is commonly used , but either TM or SM can be used. If your mark is registered, you can use the circle R – (R) – in superscript next to the mark when using the mark with the goods or services listed in the registration.

Often the term trademark used to refer to both trademarks and service marks. The distinction between a trademark and a service mark is important when selecting the proper trademark/service mark class in a federal trademark application.

Registration Priority: I Have Many Trademarks, Which Should I Register First?

CircleR_RegisteredTMBusinesses often have many trademarks, such as, the business name, product names, service names, logos, slogans, tag lines, etc. The question arises which of those trademarks should be registered and what is the priority order for registering of those trademarks? Trademark registration carries a cost. Therefore, the decision to register is a balancing between the importance of the trademark and the cost of obtaining a trademark registration, when allocating a limited budget for trademark registration. Assuming other factors are equal, the question you should ask with respect to each of your trademarks is: how important is this trademark to my business as compared to other trademarks of my business?

Below is an example priority order for registering trademarks (e.g. a registration priority). The list is a generalized example and your circumstances may indicate a different priority order is appropriate for you. The following list assumes that each trademark is equally registerable and protectable. However, this is not always the case because some trademarks are weak and some trademarks may conflict another party’s trademark. Therefore, sometimes the weak nature of a mark, or its conflict with another mark, or other factors will reduce the trademark’s registration priority or remove the trademark from the possibility of registration or protection.

1. Business Name
Generally the most important trademark a business has is the business name with which the business uses to sell it goods or services. Because your business name is used with all of the goods and services you provide, your business name may be the most important trademark that your business owns. If that’s the case, then seeking a federal trademark registration on your business name may be the first priority. However some businesses do not use their business name when selling, rendering service, or interacting with customers, suppliers or others, in which case a trademark registration on the business name may not have a high priority. Instead product names, service names, or taglines, may have a higher priority.

2. Products and Service Names
Following business names, product and service names tend to be the second most important in a business. Product and service names are those that the customers deal with directly when purchasing your goods or services. Some businesses have many different products and services, so it may be necessary to prioritize which product and/or service names should be registered. You may use whatever measures your business uses to evaluate the importance of a particular product, service, or line of products or services. Some factors which may indicate an importance are: (1) the volume of unit sales of a given product or service, (2) the gross revenue or a net profit realized from the sales of a given product or service, (3) the amount of advertising and marketing dollars allocated or spent for a particular product or service, (4) the amount of customer or media recognition received for a particular product or service, and/or (5) the technological features of a particular product or service that provide advantage over the competition. The bottom line is that it’s a business decision on evaluating the importance of a particular mark.

3. Taglines and Slogans
Taglines and slogans can function as a trademark to identify a source of goods or services. Therefore a trademark registration can be sought for them. Certainly there are cases where slogans are very important to the owner. However when starting out, slogans probably have a priority that is lower than a company name and the company’s product and service names. Therefore seeking a trademark registration over a tagline or slogan may be prioritized behind registering a business name and important product and service names. However in some cases the tagline or slogan will be as important as the business name.

4. Logos
Logos or graphical elements may be used with a business name, with a product or service name, or with taglines or slogans. Again it depends on how important your logo is to your business. See this article for more on deciding whether to include a logo in your trademark application.

The priority order listed above is generalized. Individual business circumstances will help rank the appropriate priority order of trademark registration for your business. The question that should be asked is: how important is this trademark to my business as compared to other trademarks of my business? Once you have ranked each trademark based on an answer to that question and considered other factors such as trademark strength and trademark conflict, you have an example priority order from which you can make trademark registration decisions. Then you can place that priority order against the funds available for trademark protection to determine how many registrations to seek when allocating a limited budget for trademark registrations.

Should I Claim Color In My Trademark Application?

FedExIf your trademark or logo includes color, then you may wonder whether your federal trademark application should include a claim of color. If this is your first trademark application, then likely you should not make a claim for color. When no claim of color is made and the trademark is presented in black and white then the registration is presumed to cover the mark when presented in any color.

However, if color in your mark is very important so that you would want the best chance of stopping others using your color scheme with different words/characters, then you may want to make a claim for color in your trademark. For example, Federal Express has a trademark application and various registrations on the mark FedEx with “Fed” claimed in purple and the “Ex” claimed in orange. Therefore, it might be possible for FedEx to claim that the use of “LadFx” infringes its trademark, if LadFx was presented in the same color scheme where “Lad” was in purple and “Fx” was in orange. This claim is not guaranteed, but FedEx would have a better chance if they have a registration claiming color, than if they did not.

However, these registrations claiming color where not the first trademark registrations that Federal Express filed. Instead, one of Federal Express’ first trademark registration, filed in 1984, did not make any claim for color. This registration from 1984 provides a standard character claim to “FEDEX,” alone without any claims to style or color. Standard character marks cover the words/characters presented in any font stylistic arrangement or color. Therefore standard character marks can be considered broader than special form marks claiming style elements, logos, or color.

If you look at other brands you’ll find the same pattern. When a company files a trademark application claiming color, often this is not their first application. Many times the company first files a trademark application claiming only standard characters or a logo without color and then later they file a subsequent trademark application(s) claiming color:

  1. Startbucks, first standard characters, later a color logo;
  2. Google, first standard characters, later claims of color;
  3. Subway, first standard characters, later claims of color;
  4. Apple logo, first the logo with no claim of color, later claims over apple logo with horizontal color stripes.

MSNBC filed a trademark application claiming standard character mark on the same day that it also filed a separate application claiming color (Why companies have multiple trademark registrations on the same mark?).

According to a search of the USPTO records, other brands have not bothered to claim color in trademark registrations on their names, such as, T-Mobile, IBM, and Harley-Davidson Motorcycles.

Generally the words / standard characters of the mark are more distinctive (if the words / standard characters are not distinctive, consider combining the words with style or logo elements as a special form mark). So the words/characters of the mark tend to be more important than the color elements of the mark. Therefore, for your first federal trademark application you should probably not make a claim for color, unless color is very important. And if color is very important, you may want to consider filing two applications, one as standard character and one claiming color.

What is a Trademark: Usual and Exotic

CircleR_RegisteredTMA trademark includes almost anything that is used by a person or entity to identify a product or service. This includes product names, company names, logos, slogans, service names, slogans, taglines, colors, product packaging, product shapes, symbols, sounds, fragrances, flavors, and domain names. A trademark functions to identify and distinguish goods and services from those manufactured, sold, or provided by others and to indicate the source of the goods or services, even if the source is unknown. Trademark registrations can be renewed forever as long as they are being used with the corresponding goods or services in commerce.

Below are several types of trademarks. First are the standards word and logo marks and the more exotic marks like sounds, product shape, and fragrance, among others, follow. Click here to skip straight to the exotic stuff.

Standard Character
A standard character mark is one where the mark has word(s), letter(s), and/or number(s) with no design element and no claim to any particular font, style, size, or color. The character(s) of the mark must appear in the Trademark Office’s standard character set. The character(s) or word(s) of the mark are provided in standard text without any style, font, or graphics. For example, U.S. Trademark Reg. No. 1,452,359, is for the mark “STARBUCKS” as a standard character mark. A standard character mark is sometimes known as a word mark.

Special Form
Special form marks cover marks presented in a variety of ways and make a claim to the stylistic elements included with the mark. Below are a few examples.

IBMLogo1Mark with a Particular Font or Stylized Text
This type of mark does not have a logo outside of the styling/font of the text of the mark. IBM’s U.S. Trademark Registration No. 1205090 is an example where the mark “IBM” is represented in the now widely recognized horizontally striped style.

NikeSwooshLogo Mark Alone
This type of mark has no standard characters in it. Nike’s U.S. Trademark Reg. No. 1,232,243 is an example of the Nike “swoosh” logo mark that has been registered alone without any standard characters.

Logo with Adjacent Text
NikeSwooshWordsThis type of mark has standard characters adjacent to the logo. Nike’s U.S. Trademark Reg. No. 1,325,938 is an example where the word “NIKE” is combined in the registration and adjacent to the swoosh logo. However, the combined adjacent elements must present a unitary commercial impression, which this mark does.

StarbucksLogoLogo Mark with Embedded Text
This type of mark has standard characters embedded in the logo. Starbucks’ U.S. Trademark Reg. No. 1,815,937 is an example of a registration where the text “STARBUCKS COFFEE” is embedded in the Starbucks logo.

For factors to consider when determining whether to seek a trademark registration on a word mark or a logo mark, see this post.

Color as an element of the Mark
MobileColorClaimThis type of mark claims color as an element of the mark. Exxon Mobil’s U.S. Trademark Reg. No. 3,787,476 is an example of a registration where color is claimed as a feature of the “MOBIL” mark. In that registration, the letters M B I L are claimed in blue and O is claimed in red.

A sound or sounds can function as a trademark. Sound marks function as trademarks when they are arbitrary, unique, or distinctive and create in the hearer’s mind an association of the sound with a good or service. One example of a registered sound mark are the NBC chimes.  U.S. Trademark Reg.  No. 916,522 on the NBC chimes describes the mark as:

a sequence of chime-like musical notes which are in the key of C and sound the notes G, E, C, the “G” being the one just below middle C, the “E” the one just above middle C, and the “C” being middle C, thereby to identify applicant’s broadcasting service.

Below is a Youtube clip of the NBC Chimes.


Motorcycle Exhaust Sounds
HarleyDavidsonHarley Davidson attempted to obtain a trademark registration over the exhaust sound of its motorcycles in Trademark Application No. 74/485,223, but the application was ultimately denied by the Trademark Trial and Appeals Board.

DucatiItalian motorcycle manufacturer, Ducati, also attempted to obtain a trademark registration over the exhaust sound of its motorcycles in Trademark Application No. 76/330,675, but gave up on the application after an initial refusal by the Trademark Examining Attorney.  These cases do not mean that motorcycle exhaust sound could never be a registered trademark, but only that the exhaust sounds in these particular cases did not qualify or that the applicant did not pursue further appeals to contest the these rulings.

Owens Corning Corporation’s Pink Insulation

Color Marks
Color marks are mark that consist solely of one or more colors used on particular objects. Therefore a color mark is different from the “MOBILE” example above were color is claimed as an element of a special form mark. With a color mark for goods, the color can be used on the entire surface of the goods, on a portion of the goods, or be used on all or part of the product packaging. Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services.

It is more difficult to show that color functions as a trademark as compared to other types of trademarks. This is because color cannot be inherently distinctive. Which means that an applicant must prove that the color has acquired distinctiveness such that customers associate the color with a single source of the goods or services.

The Owens Corning corporation owns U.S. Trademark Reg. No. 2,380,742 over the color pink as applied to building insulation.

Tm. Reg. No. 1,057,884

Trade Dress: Product Shapes and Product Packaging
The shape of a product and the packaging of a product or service can act as a trademark. When a product shape or product packaging functions as a trademark it is known as trade dress. One example of product packaging trade dress is the classic Coca Cola bottle shape. Coca Cola has a registered trademark (Trademark Reg. No. 1,057,884) over the shape of the classic Coca Cola bottle.

Tm. Reg. No. 3,457,218

An example of product design trade dress is the configuration of the iPhone being rectangular with rounded corners as shown in Trademark Reg. No. 3,457,218.

For a more detailed discussion of trade dress see this article.

Scent, Fragrance, or Flavor
It is possible to gain trademark protection over a scent, a fragrance, or a flavor as long as it is not functional. Scents that serve a functional purpose, such as perfume or air freshener, are not registrable. A showing that the scent, fragrance, or flavor has acquired distinctiveness must be made such that customers associate the scent, fragrance, or flavor with a single source of the goods or services. The showing is necessary because generally scent, fragrance, or flavor is seen as a functional characteristic of the goods/services by the public and not as a trademark. In other words, more evidence is needed of acquired distinctiveness with these types of marks than with distinctive word marks.

One example of a trademark registration over a scent is U.S. Trademark Reg. 2,463,044. In the ‘044 registration, an individual operating as Manhatten Oil has a registration on a cherry scent used with “synthetic lubricants for high performance racing and recreational vehicles.” This registrant has another registration on the supplemental register over a strawberry scent for “lubricants and motor fuels,” and this appears to be the commercial product.

A Placement Mark
NorthFaceShoulderWhen you see a logo on the right shoulder of the back exterior of a garment, even if you can’t make out the details of the logo, do you recognize that logo placement to be associated with North Face? If so, North Face may have developed trademark rights in the placement of any logo in that location. Yet, in 2008 the USPTO was not satisfied that North Face met the requirements for registered trademark protection over such logo placement.

North Face Apparel Corp. attempted to obtain a registration on the “placement of a stitched logo affixed to the right shoulder of the back exterior of [any] garment” in Trademark Application No. 78/622,759. North Face was seeking a trademark registration that would allow it to prevent others from placing of any stitched logo on the right shoulder of the back exterior of any garment.

In refusing the application, the Examining Attorney asserted that the placement mark did not function as a trademark and was merely ornamental. North face responded by noting that the USPTO has granted other placement marks. For example, Registration No. 2,058,448 consists of “the placement of a single stone in a center setting positioned at the bottom of the ring” and Registration No. 3,106,789 consists of “the placement of two iterations of a paw design on the bottom of a pet shoe.” (Both of these registrations are now expired because the applicants failed to renew them). Further, North Face argued that it was the only company that provided the placement of a logo on a right shoulder of the back exterior of apparel and that it had been doing so for 17 years. Therefore, North Face argued such placement is widely recognized as associated with North Face and deserved registered trademark protection.  The Trademark Examining Attorney maintained the refusal of the application and North Face later dropped its appeal to the Trademark Trial and Appeals Board.

Almost anything that indicates a source of goods or services can act as a trademark. Above are some examples of the various types of items that can achieve trademark protection.

What is Trade Dress?


Trade dress recognizes that product/service packaging or the product appearance itself can act as a source identifier in the same manner as more traditional trademarks, like names and logos. In other words, in some circumstances the product packaging or the product appearance can be so uniquely tied to one company or source of goods/services that the packaging or the product appearance indicates to the customer the source of the goods/services. Many times the trade dress of a product allows the consumer to recognize the source of that product from the product packaging or the product appearance alone without any brand or logo appearing with it.

Product and Service Packaging
One example of product packaging trade dress is the classic Coca Cola bottle shape. Coca Cola has a registered trademark (Tm. Reg. No. 1,057,884) over the shape of the classic Coca Cola bottle, as shown at the top of this post. The Coca Cola bottle shape has been used since 1916. Given the unique shape and Coca Cola’s long and exclusive use of this shape for packaging cola, the purchasing public has come to recognize the shape of that bottle as associated with Coca Cola, even if the Coca Cola name is not on the bottle. Product packaging can also cover traditional box package styling. However, aspects of a service “packaging” can also be protected, such as the appearance and decor of a restaurant.  This is not an exhaustive list, basically any packaging or “dressing” of a product or service might qualify as trade dress.

Tm. Reg. No. 2,511,360

Product Design
Trade dress rights can be generated in the design of the product itself, separate from the product packaging. Generally it takes a longer amount of time and/or more marketing efforts to generate trade dress rights in the shape of a product. One, somewhat controversial example of registered product design trade dress is that of the Navy Chair by Emeco Industries (Tm. Reg. No. 2,511,360). The Emeco Navy Chair is an example where a company has had a long period of use of the product shape. Emeco claims to have sold the Navy Chair since 1978.

An other example of product design trade dress is the configuration of the iPhone being rectangular with rounded corners as shown in Tm. Reg. No. 3,457,218 (“the ‘218 registration”). Apple used this design since 2007 and it was registered in 2008. This is a very short time for a product design to achieve trade dress protection. However the Trademark Office was convinced that the shape had become distinctive .

Tm. Reg. No. 3,457,218

In Apple’s application to register this trade dress, Apple claimed that the extensive media coverage of the launch of the iPhone, including front page coverage on national newspapers and lead stories on TV news broadcasts, amounted to about $400 million in free advertising. Further, Apple claimed 1 million iPhones were sold in the first 74 days after the product was launched. Apple cited leading trademark scholar Thomas McCarthy’s treatise McCarthy on Trademarks for the proposition that no minimum amount of time is necessary for a mark to achieve distinctiveness in the marketplace. Massive TV and print advertising campaign can promote a trademark or trade dress to distinctiveness within a matter of days or weeks in certain circumstances. Currently Microsoft is challenging the validity of this ‘218 registration at the trademark office.

Tm. Reg. No. 3,470,983

Apple has a second trade dress registration (Tm. Reg. No. 3,470,983, “the ‘983 registration”) that is more narrow in that it includes more elements than is shown in the ‘218 registration. The ‘983 registration includes color and various elements of the iPhone home screen, whereas the ‘218 registration claimed only the exterior shape of the product. In the Apple v. Samsung lawsuit, in response to Questions 12 and 15 of the Verdict form, the jury found that the trade dress of the ‘983 registration was valid and infringed by some of Samsung’s products.

Trade Dress and Patents
Patents traditionally protect product designs. However, in some cases the product design in not patented. In such cases, trade dress rights might be used to prevent copying of the product design. Therefore trade dress rights can sometimes be used as a quasi-substitute for patent protection. In other cases, when a patent exists over the product design at issue, both trade dress and patent rights might be asserted to prevent copying.

The packaging or the product itself can be protected under trademark law if such packaging or product becomes distinctive in the minds of the consumers so that it is associated with a single source (e.g. your company). Often it can take a period of time for such trade dress rights to develop. However, there is no set period of time, and recognition can be achieve in a short time depending on the extent to which customers have been exposed to the trade dress.

Use Based v. Intent-To-Use Trademark Applications

There are at least two types of federal trademark applications. The first is a use-based trademark application, also known as a section 1(a) application corresponding to the section of the law that authorizes the application. The second type is an intent-to-use application also known as a section 1(b) application.

A use-based application is one where the applicant is already using the mark in commerce at the time when the application for federal trademark registration is filed. Use of the Mark in commerce can include shipping or selling the goods with the mark or rendering services after advertising those services with the Mark.

Intent-to-Use Based
An intent-to-use application is one where the applicant has not used the mark in commerce or business at the time that the application is filed. The intent to use application allows the applicant to reserve a trademark that they intend to use before actually using it.

This allows the applicant to stake a claim to rights in a name (or other mark) while doing the work that is required to bring the product or service to market. Many preliminary matters such as purchasing supplies, designing logos, designing graphics, designing packaging, and so forth may need to be completed before the product or service can be put on the market. Such activities might require a substantial lead time between the time when the trademark is selected and the time when the products or services are provided. Therefore an intent to use application allows an applicant to reserve a mark so that they do not have a problem running into others who are attempting to register the same or similar name while there working on their product/service start up activities.

A use-based application is for those already using the mark and an intent-to-use application is for those who plan to but are not yet using the mark.

What Happens After A Federal Trademark Application is Filed?

TrademarkApplicationFiled-001Generally an applicant should not be too concerned with how long it takes to obtain a federal trademark registration at the United States Patent and Trademark Office. Once your trademark application is filed, later filed applications by others are less of a concern. Further, in the United States, trademark rights accrue based not only on registration but also on use. Therefore simply by using your trademark in commerce you can begin to generate common law rights which you can assert even before you obtain a registration. This article will explain the process and the general timing of events after an application is filed.

Trademark Office Approval Is No Guarantee of Freedom to Use Mark
Approval of a trademark application by the U.S. Patent & Trademark Office (USPTO) does not guarantee that the use of the mark is clear, e.g. that your use will not infringe another’s trademark rights. This is true because, as mentioned above, a trademark user can generate common law rights by use alone, and the USPTO will not search for common law trademark usages that are not registered. Only a comprehensive trademark search can reveal information sufficient to provide advice regarding whether your use of a mark is clear.

If you’re concerned about another filing a trademark application before you begin using your trademark, you can file an intent-to-use trademark application. After the intent to use application is filed, you can begin using your mark without waiting for the trademark registration to issue. In fact there is almost no trademark reason to wait, after an application is filed, for a trademark registration to issue before using your mark. This is true because the USPTO’s granting a registration, as provided above, is not a bulletproof clearance for you to use your Mark. In certain circumstances a court can reverse the trademark office’s decision to grant a trademark registration if a prior trademark user has superior rights. If you need clearance assurance you should have a comprehensive trademark search conducted.

Filing to First Office Action or Allowance
After your trademark application is filed you should expect to hear back from the trademark office whether there is an objection or refusal to your application or whether it will be allowed within three to six months. Current USPTO stats provide the average time to first office action (first response from the USPTO) or allowance after filing is about three months.

Refusal or Objection
If there is a refusal or objection the USPTO will provide that to you in writing in the form of a Office Action. The Office Action will explain the time period in which a response is required. Generally a six-month time frame from the date of the Office Action is allowed for filing a response. A response can be filed earlier.

Refusals or objections provided in an Office Action maybe due to relatively simple formalities, such as the USPTO requiring a change to the description of goods/services provided in the application. In other cases refusals are based on an allegation by the Trademark Examining Attorney that your mark conflicts with another prior registered mark. Refusals based on an alleged conflict with another mark tend to require more involved responses than those regarding application formality issues.

If you receive a refusal or a rejection, the time until you receive a registration, if you’re successful in overcoming the refusal or objection, depends on how long you wait to file a response and how long the Trademark Office takes to consider and reply to your response. Further, in some cases it may be necessary to reply to multiple Office Actions issued by the trademark office or occasionally to pursue an appeal, all of which take more time.

If the USPTO does not issue a rejection or refusal or if you are successful in overcoming a rejection or refusal, then the USPTO will take an action based on the type of trademark application you have filed (use v. intent-to-use). If you filed a section 1(a) use-based application for registration on the primary register, then the USPTO will provide you with a notice that they will publish the application for opposition. Once the application is published for opposition anyone who believes they would be damaged by you receiving a registration has the opportunity to object to your application by filing an opposition. If no opposition is filed then the US PTO will take one of two courses depending on the type of application that is filed.

Registration or Notice of Allowance
If the application is a used based section 1(a) application then the USPTO will issue a certificate of registration within a few months after the end of the 30 day opposition period, if no opposition is filed. If the application is a section 1(b) intent-to-use application, then the USPTO will issue a notice of allowance within a few months after the end of the 30 day opposition period. The applicant will be given six months after the notice of allowance to file a statement of use proving that they are using the trademark in commerce. Extensions of time can be requested in six-month increments if the applicant cannot file a statement of use showing use of the mark within six months after the notice of allowance.

Currently it takes on average 10 months for a typical use-based trademark application to register and for a intent-to-use application to receive a notice of allowance. Your application could take longer or less time depending on if there is a refusal or objection or if the USPTO processes your application at a quicker or slower rate than average.