Trademark Prosecution

Trademark Prosecution

A trademark/service mark is any word, symbol, design, slogan, logo, device, etc. that identifies or distinguishes the source of one product or service from another. A mark that identifies the source of a product is called a trademark; a mark that identifies the source of a service, rather than a product, is called a service mark although the term "trademark" or "mark" is commonly used to refer to the identification of both goods and services. Although the most common type of mark consists of a word, logo, or combination of both, a trademark can be anything, as long as it can identify and distinguish a product or service. There are two other types of marks: collective membership marks, which signify membership in an organization; and certification marks, which certify the quality of goods or services to which the mark is attributed.

In the United States, trademark rights accrue from actual use of a mark in interstate commerce, and not from registrations. However, there are distinct advantages to federally registration. First, a federal registration constitutes prima facie evidence and provides a presumption of the validity of the registration, ownership of the mark, and the owner's exclusive right to use the mark in commerce. Second, a federally registered trademark owner acquires the right to use the ® symbol and provide constructive notice of a claim of ownership to the public. As a consequence, a second party that adopts the mark after it has been registered will not be able to argue that it was adopted in good faith. Under the Lanham Act, the owner of a federally registered trademark may recover defendant's profits, any damages sustained by the plaintiff and, in extraordinary cases, the costs of the action including attorney fees, in a federal trademark infringement lawsuit. Although an unregistered mark has certain protections under state law, federal registration offers powerful rights against other users of same or similar marks.

Once a proposed trademark has been selected it is important to first determine whether that proposed mark represents a viable trademark for interstate use and federal registration. Conducting a comprehensive search and applying a proper interpretation of the search results is essential as a main basis for refusal by the U.S. Trademark Office relates to confusion with other similar marks. After a mark has been selected, searched, and determined to be viable for use and registration, the application for registration, in its entirety, is prepared. There are over 40 classifications of trademarks and service marks, and in addition to requiring the claim of a classification, a description of the goods/services must be devised. Once a trademark application is filed, the Trademark Office Examining Attorney will carefully scrutinize the application and proposed trademark. Interaction with the Examining Attorney typically involves complex legal issues and procedural rules. Accurate statements during this interaction is of the utmost importance to avoid either denial of the registration or, to avoid limiting and restricting the scope of the application such that the resulting registration has little to no value in terms of practical trademark protection. Our experienced trademark attorneys will assist you in deciding the overall strength of your mark to ensure your brand enjoys continued success and protection while preventing unnecessary entries in the application record that can lessen the strength and breadth of a registration.

McHale | Slavin has successfully prosecuted thousands of trademarks before the United States Patent and Trademark Office. Our firm understands with the intricacies of trademark practice. Contact us for additional information or to schedule a consultation.