• Trademark searches and clearance
  • Filing and prosecution of trademarks in the U.S. and throughout the world
  • Post-registration services and payment of maintenance fees
  • Trademark infringement analysis
  • Opposition and cancellation proceedings at the USPTO
  • Domain name administrative proceedings

What is a trademark?

A trademark may be a word, symbol, design or combination of a word and design, a slogan or even a distinctive sound which identifies and distinguishes the goods or services of one party from those of another. Used to identify a service, it can be called a service mark. Normally, a trademark for goods appears on the product or on its packaging, while a service mark is usually used in advertising to identify the owner's services.

When do trademark rights arise?

Trademark rights arise from either (1) use of the mark, or (2) a bona fide intention to use a mark, along with the filing of an application to federally register that mark on the Principal Register. A Federal trademark registration is not required in order for a trademark to be protected under Texas State law, and a trademark may be used without obtaining a registration. However, judicial protection is limited without State or Federal Registration.

Before a trademark owner may file an application for a Federal registration, the owner must either (1) use the mark on goods which are shipped or sold, or services which are rendered, in commerce regulated by Congress (e.g., interstate commerce or commerce between the U.S. and a foreign country); or (2) have a bona fide intention to use the mark in such commerce in relation to specific goods and services.

Why register a trademark?

Eight benefits of Federal Trademark Registration

A federally registered trademark can be a very valuable intellectual property asset. If you currently produce or intend to produce a product, provide a service or operate a web site on the internet, and if you engage or will engage in interstate commerce, you should consider applying for and obtaining a federal trademark or service mark to identify the source of your goods or services. The primary register of trademarks is maintained by the United States Patent and Trademark Office. It is governed by Subchapter I of the Lanham Act, Title 15 of the US Code.

Marks that are registered on the U.S. Patent & Trademark Office's (USPTO) Principal Register have the following benefits:

  1. Registration is constructive notice that the owner (registrant) of the mark has the right to use the mark throughout the entire United States, even if the mark is not being used in a specific geographical area. 15 U.S.C. § 1057(c) and 15 U.S.C. § 1072. This means that the registrant can prevent a person or entity from using the same mark or a confusingly similar mark anywhere in the U.S. unless the other mark was used before the date of first use of the registered mark.
  2. Registration is prima facie evidence that the registered mark is valid, the registrant owns the mark and has the exclusive right to use the mark in commerce. 15 U.S.C. § 1057(b) Registration is prima facie evidence that the mark has been used continuously in commerce since the filing date of the application. Rolley, Inc. v. Younghusband, 204 F.2d 209, 211 (9th Cir. 1953).
  3. After five years of continuous use in commerce, the mark becomes incontestable, which means that the registration of the mark cannot be attacked on the basis of prior use or descriptiveness. 15 U.S.C. §1065.
  4. The registrant of the mark may sue for trademark infringement in federal court when diversity does not exist. 15 U.S.C. § 1121(a).
  5. In a successful trademark infringement action, the registrant may obtain increased statutory damages. 15 U.S.C. § 1117 and 18 U.S.C. § 2320.
  6. The registrant may use the power of the federal government (via the U.S. Customs Service) to prevent the importation of goods that contain infringing marks. Availability of criminal penalties, seizures and treble damages in an action for counterfeiting a registered trademark. 15 U.S.C. Section 1124.
  7. A basis for filing trademark applications in foreign countries. Certain rights under the Paris Convention assist overseas registration of the mark.

What are the notice symbols for trademarks?

Once a Federal registration is issued, the registrant may give notice of registration by using the ® symbol, or the phrase "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." Although registration symbols may not be lawfully used prior to registration, trademark owners may use a TM of SM (if the mark identifies a service) symbol to indicate a claim of ownership, even if no Federal trademark application is pending.

When will a Trademark application be refused?

The Examining Attorney will refuse registration if the mark or term applied for:

  • ...does not function as a trademark to identify the goods or services as coming from a particular source; for example, the matter applied for is merely ornamental;
  • immoral, deceptive or scandalous;
  • ...may disparage or falsely suggest a connection with persons, institutions, beliefs or national symbols, or bring them into contempt or disrepute;
  • ...consists of or simulates the flag or coat of arms or other insignia of the United States, or a State or municipality, or any foreign nation;
  • the name, portrait or signature of a particular living individual, unless he has given written consent; or is the name, signature or portrait of a deceased President of the United States during the life of his widow, unless she has given her consent;
  • resembles a mark already registered in the PTO as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive;
  • merely descriptive or deceptively misdescriptive of the goods or services;
  • primarily geographically descriptive or deceptively misdescriptive of the goods or services of the applicant; or
  • primarily merely a surname.

D'Ambrosio & Menon, PLLC • 3 Sugar Creek Center Blvd., Suite 100 • Sugar Land, TX 77478 • 832.532.7386

© 2022 D'Ambrosio & Menon, PLLC. All Rights Reserved. Legal Notice