Trademark Law (in Plain English)

By Jill M. Goldman, Esq.

Ever wonder what lawyers really mean when they break into “legalese?” Allow me to convert all that fancy language into plain English.

Here’s the simple version of what bank marketers need to know about trademark.

Q: What is a trademark?

A (Legal): A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.

A (Plain English): In short, a trademark is a brand name for goods.

Q: What is a service mark?

A (Legal): A service mark includes any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

A (Plain English): In short, a service mark is a brand name for services.

Q: What is a certification mark?

A (Legal): A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

A (Plain English): A mark used by someone other than the owner to show a known standard (i.e. WiFi, UL, Good Housekeeping, etc.)

Q: What is a collective mark?

A (Legal): A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.

A (Plain English): Shows membership status—for example, as “CPA” indicates a member of the Society of Certified Public Accountants.

Q: What constitutes interstate commerce?

A (Legal): For goods, “interstate commerce” generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g., restaurants, gas stations, hotels, etc.).

A (Plain English): Used in more than one state. This is now accomplished simply by use via the Internet.

Q: What does “USPTO” or “PTO” stands for?

A (Legal): The “United States Patent and Trademark Office” or simply the “Patent and Trademark Office.”

A (Plain English): See above.

Q: Do I have to register my mark?

A (Legal): No, but federal registration has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

A (Plain English): No, but it’s a good idea in order to protect your brand name from others.

Q: Who may file an application?

A (Legal): Only the owner of the mark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

A (Plain English): If it’s yours, you can. If it’s not yours, you can’t.

Q: What are the benefits of federal registration?

A (Legal): Some of the benefits to federal registration are as follows: (i) constructive notice nationwide of the mark owners claim; (ii) evidence of ownership of the mark; (iii) jurisdiction of federal courts may be invoked; (iv) registration can be used as a basis for obtaining registration in foreign countries; and (v) registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

A (Plain English): Puts others on notice of your rights, lets you protect marks in the United States, with customs and foreign countries.

Q: Can the USPTO refuse to register a mark?

A (Legal): Yes. The PTO will refuse to register matter if it does not function as a trademark/service mark. Not all words, names, symbols or devices function as registerable marks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.

A (Plain English): While a company was able to register “Apple” for “computers” it would not have been able to register the same word for “fruit.”

Q: How long does it take to register a mark?

A (Legal): Typically, the process from filing to registration will take 13-18 months unless extenuating circumstance arises to delay or elongate the process. However, it is difficult to predict exactly how long it will take for an application to mature into a registration, because so many factors can affect the process. Generally, an applicant will receive a filing receipt almost instantly if filing electronically or approximately two weeks after filing on paper. Applicant should receive a response from the PTO within approximately three months from filing the application.  However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.

A (Plain English): At least one year—maybe more.

Q: How long does a registration last?

A (Legal): For a registration to remain valid, an Affidavit of Use (“Section 8 Affidavit”) must be filed: (i) between the fifth and sixth year following registration, and (ii) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee. Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.

A (Plain English): New registrations last for 5 years. After that, if renewed on time, they last another 5 years. Assuming timely renewals going forward, registrations are then renewed every ten years thereafter.

Q: Is use of a mark required for registration?

A (Legal): Yes. Although an Intent-to-Use application may be filed with the PTO, the mark will not proceed to registration until the applicant can show evidence of use of the mark in commerce. The U.S. system is based on use, and the first to “use the mark in commerce” obtains rights—not the first to file, as in some foreign countries.

A (Plain English): Ultimately, yes, you must show use to register in the United States.

Q: How long does an Intent-to-Use applicant have to allege actual use of the mark in commerce?

A (Legal): An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the examining attorney approves the mark for publication. If an Amendment to Allege Use is not filed, then the applicant has six months from the issuance of the Notice of Allowance to file a Statement of Use, unless the applicant requests and is granted an extension of time. If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned and no registration will be granted.

A (Plain English): With extensions filed, approximately three years after the Notice of Allowance is issued.

Q: What does the TM or SM designation stand for and when can it be used?

A (Legal): The “TM” symbol represents a trademark and the “SM” symbol represents a service mark. These designations are used with a mark usually to indicate that a party claims rights in the mark and are often used before a federal registration is issued.

A (Plain English): After filing but before registration, use the appropriate symbol.

Q: When is it proper to use the federal registration symbol (®) with the mark?

A (Legal): The federal registration symbol (®) may be used once the mark is actually registered in the PTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

A (Plain English): After federal registration.

 Jill Goldman is vice president, senior counsel II with the American Bankers Association.

This article is for informational and educational purposes only. It is not offered as and does not constitute legal advice or legal opinions. The information contained in the article should not be used as a substitute for seeking professional legal advice. If legal or other expert assistance is required, the services of a competent professional should be sought.