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Common Trademark Selection and Registration Pitfalls (Part 3): Application for Registration
After determining that a desired mark is available for use and registration (as discussed in Part 1 and Part 2 of this series), the focus next turns to preparing the application and its various components. Although rarely uniform, the order of the stages in trademark applications is fairly standard. First, the trademark owner files the application for registration. There are several options concerning the actual application form, which should be considered carefully, as not all options are available in every instance. The United States Patent and Trademark Office (the “USPTO”) has offered an electronic filing option for many years (which we will discuss in a later article), but the agency recently expanded the electronic application options, which can be confusing for the inexperienced applicant. Although discouraged and more expensive than electronic applications, the USPTO also accepts paper applications.
After the USPTO receives an application for registration and determines that it meets the minimum filing requirements, the USPTO issues the application a unique serial number and assigns it to an Examining Attorney. The Examining Attorney first reviews the application to determine if it complies with the federal trademark statutes and USPTO rules. If so, he then conducts a comprehensive examination of the application, including a search for any conflicting registered marks in the USPTO system and a detailed examination of the application.
An applicant should not take the application preparation lightly and must understand that errors can lead to delays, additional expense, and potentially a refusal to register a mark. Indeed, the deceptively simple appearance of the application coupled with the significant scrutiny that Examining Attorneys apply during examinations has caused problems for countless inexperienced applicants.
Although the number of potential issues is too great for any comprehensive discussion, the following are some common problems. First, some applicants fail to understand that one obtains rights in a mark through actual use of the mark in commerce. Although it is possible to file a federal application based on the “intent to use” the mark in commerce, one obtains no rights until after the first actual use occurs. An applicant must identify the proper “basis” for filing the application, which generally means he is either currently using the mark in commerce or has a bona fide intent to use the mark in commerce and is taking actual steps to use the mark in commerce (i.e., not simply attempting to preclude someone else from using the mark), such as market research, negotiating with suppliers or customers, etc.
Another common issue is the failure to properly identify the goods or services the mark is used to identify. The application must include a proper identification of the goods and/or services. Further, if those goods and/or services are dissimilar, they most likely fall within multiple classes of goods and services. The USPTO follows the international classifications of goods and services, in which specific categories of goods and services are grouped. Depending upon the circumstances, a mark might fall into one or more of the 45 current classes, which can require a more complex and expensive application. Words really do matter when crafting the identification for a particular good or service. So much so that we will discuss this specific issue in more detail in the next installment.
Another common problem is attaching an incorrect drawing or depiction of the mark to the application. An applicant must correctly identify the type of mark (e.g., word mark, graphic design, composite mark) and provide an accurate depiction of the mark. An applicant might seek broad rights in a mark by filing an application for a word mark, in which case, a “standard character” drawing is appropriate. On the other hand, the applicant might wish to protect a design or logo, in which case a “special form” drawing should be used. Improperly designating the type of registration or including an inaccurate depiction of the mark can result in certain elements of a mark being excluded from the registration or a refusal to register the mark.
A similar issue can arise when selecting appropriate specimens of a mark to support the application. An applicant must provide a "specimen" that demonstrates the actual use of the mark in commerce (either in the application, if the application is based on actual use of the mark, or in a subsequent Statement of Use or Amendment to Allege Use, as appropriate, if the application is based on the intent to use). Not all specimens are proper to illustrate use for both goods and services. Here too, attaching the wrong type of specimen can delay the application process and potentially preclude registration.
These are just some of the issues that can arise during the trademark application process. In the next installment of this series, we’ll cover several issues that can arise after filing, and during the pendency of, an application.
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L. Kevin Levine is the founder of L. Kevin Levine, PLLC (go figure), a boutique entertainment, copyright, trademark, and business law firm in Nashville, Tennessee. A lifelong musician who grew up in his family's music store, it was inevitable that Kevin would build his legal career in entertainment and business.
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