24 The Cutting Edge February 2018

Trademarks: A Primer toProtect Every BusinessPatrick A. Quinlan, Hamilton Brook Smith Reynolds, Buffalo, NY, USA

Trademarks are a company’spublic face to its customers andthe marketplace. Goodwill pro-tected by trademarks can be oneof the most important assets of acompany. The best way to protectthat value in the US is to registertrademarks with the United StatesPatent and Trademark Office(USPTO). By understanding tacticsand strategies that are effectivebefore the USPTO, a company canmaximize the opportunity to ob-tain full federal protection for itsbrands.

Trademarks cover names, logos, brands or other iden-tifications of the source of goods and services. An exampletrademark is the name Kodak®. The holder of a trademarkhas the right to stop anyone from using a confusingly simi-lar name, logo or other brand for similar goods or services.For example, if someone wanted to create a company withthe name Kodac in the photo imaging industry, the name“Kodac” would be too similar to Kodak to gain a trademarkregistration. But if Kodac was a trucking company, then theUSPTO may grant a trademark registration because, whilethe name is similar, the businesses are different and maynot cause confusion in the marketplace. A trademark maylast into perpetuity as long as the owner of the mark contin-ues to use the mark in connection with the goods and ser-vices, although the trademark registration is subject torenewal.

A simple trademark application may be filed withoutprofessional assistance, but depending on the trademark

complexity, value of your businessand capacity to spend the timenecessary to properly submit atrademark application, a profes-sional trademark attorney may besought.

The basics of a trademarkapplication

A trademark applicationmust specify the trademarksought to be registered and thegoods or services with which themark is used or is to be used. Thespecified mark can be a word or

phrase in standard character form, meaning that any useof the mark will be covered regardless of font or addeddesign elements (e.g., a logo’s graphics). Alternatively, thespecified mark can be a design, with or without words, andcan even be a sound, such as a television network’s chime,or a color, such as pink for insulation in the case of OwensCorning. When selecting a trademark, it is best to chooseone that is sufficiently different from other marks associ-ated with similar products or services. The USPTO providesan interface on its website (uspto.gov) for searching already-registered marks. A trademark should also be distinctive inrelation to the goods or services. For example, the USPTOwill reject a trademark for “Pears” if it is to be used inconjunction with selling pears.

The specified goods or services can be broadly listed toan extent (e.g., “steel rule cutting dies”). The USPTO has

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26 The Cutting Edge February 2018

divided various types of goods and services into 45 classes,but these classes typically have no effect on a trademarkapplication other than cost. If an application is to cover goodsor services that are in two different classes, the govern-ment filing fee, as well as many other fees, for the applica-tion will be twice as much.

In addition, the application must be filed in the name ofthe entity that is or will be using the trademark. For ex-ample, if a mark is used by a company, the trademark mustbe filed in the name of the company, not the president orowner of the company. Filing in the name of the wrong en-tity will result in an invalid trademark application, leavingany resulting registration vulnerable to cancellation.

Understanding the application process

The application process begins with preparing and fil-ing a trademark application. There are two basic types oftrademark applications: use-based and intent-to-use. TheUSPTO will only issue registered trademarks to those whoactually use a mark in connection with specified goods orservices. An applicant has the option of filing an intent-to-use application, which means that the applicant has not yetactually used the subject mark in connection with goods orservices, but has a bona fide intent to use the mark. Theapplication will be examined similarly to a use-based appli-cation, but if the application is allowed, the mark will notbecome registered until the applicant shows that the markis in use.

Once filed, an application will experience a period ofpendency before it is first examined. That time is typicallythree to four months. Once examined, if not rejected for oneor more issues, the application will be scheduled to publishfor its 30-day opposition period. If not opposed, a use-basedapplication will be put in line for registration, which will is-sue a number of weeks later. If the application is an intent-to-use application, the applicant will need to show use of themark before being put in the registration queue. In all, if theexaminer does not raise any issues during examination, thetime from application filing to registration is usually abouteight to ten months for a use-based application.

During examination, however, a trademark applicationmay be rejected on a number of grounds (e.g., likely confu-sion with an already-registered mark). The applicant willhave an opportunity to respond to the rejections, and if theyare not resolved, the applicant can appeal. During the 30-day opposition period, any party who believes that it will beharmed by registration of the trademark can oppose theapplication. An opposition is a proceeding before the Trade-mark Trial and Appeal Board that is similar to a lawsuit infederal court. While not as involved as a federal lawsuit, an

opposition proceeding can become expensive for both par-ties, quickly reaching into the five figures ($10,000+ USD)in legal fees.

If ultimately rejected or successfully opposed, it is notnecessarily the case that the applicant is not allowed to usethe mark, but the applicant will not have the added protec-tions of federal registration, such as the ability to sue in fed-eral court and presumptions of validity that favor the holderof a registered trademark.

Keeping your trademark registered

Trademark registrations must be renewed every tenyears. For each renewal, the owner must show that it is stillusing the mark for the specified goods or services and mustpay a renewal fee. The fee for the renewal can vary fromyear-to-year, but it will always be multiplied by the numberof classes (specifying the goods and services) in the registra-tion.

In addition to renewal every ten years, new registra-tions are subject to the requirement that the owner showuse between the fifth and sixth anniversaries, as well as paya fee. At this time, the owner may also claim that their reg-istration has become incontestable through substantiallyexclusive and continuous use for five years.

If a registration is not renewed, it will become cancelled.If cancelled, there is no mechanism for reviving the registra-tion; the only solution being to re-file the application. Butsuch a re-filed application might not be successful, so it isimportant to keep track of renewal deadlines. The USPTOhas recently been sending reminders for renewals, but hasnot always done so and is not required to do so. If an attor-ney handles your trademark application, the attorney cankeep track of such deadlines in his docket to send remind-ers.

Gaining foreign protection

Trademark rights are territorial. A US trademark pro-vides protection within the US, but not in other countries.Generally, a trademark must be obtained in each countryfor which protection is desired. There is a mechanism formaking the foreign protection process easier, called theMadrid Protocol.

A Madrid Protocol application is essentially an interna-tional application, but it must be based on a home registra-tion in the US, and it must be extended into each country inwhich protection is sought. Extension into a particular coun-try is not guaranteed, as that country has the right to rejectthe extension. As a trade-off for this convenience, coveragein each country is limited to the US home registration, whichhas the potential to limit coverage for countries in whichbroader coverage may have been available. Moreover, not

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all countries are available through the Madrid Protocol, sofor some countries direct applications are the only option.

In addition to the Madrid Protocol or individual directapplications, there is also what is called a European Com-munity Trademark, which is one registration that coversmember countries of the European Union.

When properly planned, trademark applications can bea relatively inexpensive, but important, part of an intellec-

tual property strategy for a thriv-ing business, providing valuablecoverage for a business’ brands andmarketing.

Patrick Quinlan is a patent and trade-mark attorney practicing in Buffalo, NY,USA with Hamilton, Brook, Smith &Reynolds, P.C. of Boston, MA, USA.Patrick can be reached at his law officeat paq@hbsr.com and 1-617-607-5918.

This article is reproduced with permission from the International Asso-ciation of Diecutting and Diemaking’s monthly magazine, The Cutting Edge,February, 2018.

The IADD is an international trade association serving diecutters,diemakers and industry suppliers worldwide. IADD provides conferences,educational and training programs, a monthly magazine, online resourcelibrary of 600+ technical articles, industry experts to answer technical ques-tions, publications and training manuals, recommended specifications, onlineused equipment marketplace, videos and more.

IADD also co-presents Odyssey, a bi-annual trade show and innovativeconcept in technical training featuring a hands-on Techshop where trainingprograms come alive in an actual working diemaking and diecutting facilityinside the exhibit area.

Visit www.iadd.org or call 1-815-455-7519 for more information.