TRADEMARK BASICS:
A TRADEMARK may be a word, symbol, design or combination 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/marketing to identify the owner' s services.
A trademark is different from a copyright or a patent. A copyright gives protection for an artistic or literary work and a patent gives protection for an invention. See below.
Unlike a copyright or patent, trademark rights can last indefinitely if the mark continues to perform a source-indicating function.
The term of the Federal trademark registration is 10 years, with 10 year renewal terms. However, between the fifth and sixth year after the date of the registration, the registrant must file an affidavit stating the mark is currently in use in commerce. If no affidavit is filed, the registration will be cancelled.
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, and a trademark may be used without obtaining a 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 or services.
BENEFITS OF TRADEMARK REGISTRATION
Advantages of Federal trademark registration :
1). The filing date of the application is a constructive date of first use of the mark in commerce (this gives registrant nationwide priority as of that date, except as to certain prior users or prior applicants);
2). The right to sue in Federal court for trademark infringement;
3). Recovery of profits, damages and costs in a Federal court infringement action and the possibility of treble damages and attorneys' fees;
4). Constructive notice of a claim of ownership (which eliminates a good faith defense for a party adopting the trademark subsequent to the registrant's date of registration);
5). The right to deposit the registration with Customs in order to stop the importation of goods bearing an infringing mark;
6). Prima facie evidence of the validity of the registration, registrant's ownership of the mark and of registrant's exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate;
7). The possibility of incontestability, in which case the registration constitutes conclusive evidence of the registrant's exclusive right, with certain limited exceptions, to use the registered mark in commerce;
8). Limited grounds for attacking a registration once it is five years old;
9). Availability of criminal penalties and treble damages in an action for counterfeiting a registered trademark; and
10). A basis for filing trademark applications in foreign countries.
TRADEMARK NOTICE
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, many trademark owners use a TM or SM (if the mark identifies a service) symbol to indicate a claim of ownership, even if no Federal trademark application is pending.
THE TRADEMARK REGISTRATION PROCESS
The Patent and Trademark Office ("PTO") is responsible for the Federal registration of trademarks. When an application is filed, it is reviewed to determine if it meets the requirements for receiving a filing date. If the application meets the filing requirements it is assigned a serial number.
The first part of the registration process is a determination by the Trademark Examining Attorney as to whether the mark may be registered. An initial determination of registrability, listing any statutory grounds for refusal as well as any procedural informalities in the application, if any, is issued about 3-4 months after filing. The applicant must respond to any objections raised within six months, or the application will be considered abandoned.
If, after reviewing the applicant's response, the Examining Attorney makes a final refusal of registration, the applicant may appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO. Once the Examining Attorney approves the mark, the mark will be published in the Trademark Official Gazette, an official publication of the PTO. Any other party then has 30 days to oppose the registration of the mark, or request an extension of time to oppose. An opposition is similar to a proceeding in the Federal district courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.
If the mark published based upon its actual use in commerce, a registration will issue approximately 12 weeks from the date the mark was published. If, instead, the mark published based upon applicant's statement of a bona fide intention to use the mark in commerce, a notice of allowance will issue approximately 12 weeks from the date the mark was published. The applicant then has six months from the date of the notice of allowance to either (1) use the mark in commerce and submit a statement of use, or (2) request a six-month extension of time to file a statement of use.
STATUTORY GROUNDS FOR TRADEMARK REGISTRATION REFUSAL
The Examining Attorney will refuse registration if the mark or term applied for:
1). 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;
2). Is immoral, deceptive or scandalous;
3). May disparage or falsely suggest a connection with persons, institutions, beliefs or national symbols, or bring them into contempt or disrepute;
4). 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;
5). Is 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;
6). So resembles a mark already registered in the PTO as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or
to deceive;
7). Is merely descriptive or deceptively misdescriptive of the goods or services;
8). Is primarily geographically descriptive or deceptively misdescriptive of the goods or services of the applicant;
9). Is primarily merely a surname.
A mark will not be refused registration on the grounds listed in numbers 7, 8 and 9 if the applicant can show that, through use of the mark in commerce, the mark has become distinctive so that it now identifies to the public the applicant's goods or services. Marks which are refused registration on the grounds listed in numbers 1, 7, 8 and 9 may be registrable on the Supplemental Register, which contains terms or designs considered capable of distinguishing the owner's goods or services, but that do not yet do so. A term or design cannot be considered for registration on the Supplemental Register unless it is in use in commerce in relation to all the goods or services identified in the application, and an acceptable allegation of use has been submitted. If a mark is registered on the Supplemental Register, the registrant may bring suit for trademark infringement in the Federal courts, or may use the registration as a basis for filing in some foreign countries. However, none of the other benefits of Federal registration listed above apply.
What Is a Trademark or Service Mark and How Do They Differ From Patents and Copyrights?
A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. A copyright protects the original expression of an idea (not the idea itself) in literary, musical, motion-pictures, dramatic, graphic, sculptural and audio-visual works - for example, a song, book, movie, play, architecture, computer software - the expression must be in a tangible form and unlike trademarks, copyright does not protect individual titles, names, slogans or short phrases. Patents cover inventions or discovery of any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. To be patentable, inventions/discoveries must be novel, non-obvious and useful.
What Is a TRADEMARK Disclaimer?
A disclaimer is a statement that you include in your application to indicate that you do not claim exclusive rights to an unregistrable portion of your mark. For example, if you sell shirts and your mark includes the generic word "SHIRTS," you could not object to someone else also using the word “SHIRTS” as part of his/her mark. The word is still part of both marks, but no one is claiming exclusive rights in that word, because it is an 'unregistrable' component of an overall mark. (See below for typical examples of unregistrable matter that must be disclaimed.)
A disclaimer does not physically remove the unregistrable portion from your mark or affect the appearance of your mark or the way you use it. It is merely a statement that the disclaimed words or designs need to be freely available for other businesses to use in marketing comparable goods or services.
A disclaimer may be included in an application at the time of filing or may be added by amendment, e.g., to comply with a requirement by the examining attorney. If you do not provide a required disclaimer, the USPTO may refuse to register your entire mark.
Regulated products and activities
Applications for trademarks used on regulated products (e.g. cannabis, drug paraphernalia, ivory, whalebone) and activities (e.g. gambling and wagering, retail stores featuring controlled substances) are subject to additional review. The USPTO may inquire about your compliance with federal law before issuing a registration. If your goods, services, or trademark violate federal law, we will issue a refusal.
Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark. The fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law. Regardless of state law, marijuana, marijuana extracts, and the psychoactive component THC remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions. Goods or services involve the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act ("CSA"), 21 U.S.C. §§801-971, would be a basis for issuing an inquiry or refusal. The CSA makes it unlawful to manufacture, distribute, or dispense a controlled substance; possess a Schedule I controlled substance; or sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia.
CONTROLLED SUBSTANCE ACT (CSA) & TRADEMARKS & the CANNABIDOL (CBD) INDUSTRY
The Trademark Trial and Appeal Board (the Board) recently affirmed the refusals to register PharmaCann LLC’s trademarks, PHARMACANN and PHARMACANNIS, for services identified as “retail store services featuring medical marijuana,” in International Class 35, and “dispensing of pharmaceuticals featuring medical marijuana,” in International Class 44 on June 16, 2017. In re PharmaCann LLC, TTAB, Nos. 86520135 and 86520138, June 16, 2017.
The trademark examining attorney refused registration of both marks under Sections 1 and 45 of the Trademark Act, 15 U.S.C. Sections 1051 and 1127, on the ground that the “Applicant cannot allege a bona fide intention to make lawful use of the marks in commerce because the services identified in Applicant’s applications involve the distribution and dispensing of marijuana, a controlled substance whose distribution and dispensing are illegal under the federal Controlled Substances Act (“CSA”).”
The Board noted that, for a mark to be eligible for federal registration, “any goods or services for which the mark is used must not be illegal under federal law.” Id., citing In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016). The Board also applied the test articulated in In re Brown that a registration will be refused if either (1) a violation of federal law or regulation is involved, or (2) a per se violation of a federal law is indicated. The trademark examining attorney argued on appeal that the applicant’s services constitute a per se violation of the CSA.
Precedential refusals on basis of unlawful use
In re Brown, 119 USPQ2d 1350 (TTAB 2016) (retail store services featuring herbs)
In re PharmaCann LLC, 123 USPQ2d 1122 (TTAB 2017) (retail store services featuring medical marijuana)
In re JJ206, LLC, 120 USPQ2d 1568 (TTAB 2016) (smokeless marijuana or cannabis vaporizer apparatus, namely, oral vaporizers for smokers; vaporizing marijuana or cannabis delivery device, namely, oral vaporizers for smoking purposes)
In re Harley, 119 USPQ2d 1755 (TTAB 2016) (home health care services; refusals under Section 2(e)(2) and on basis of failure to comply with requirement for additional information under Rule 2.61(b))
Non-Precedential refusals on basis of unlawful use
In re Ultra Trimmer, L.L.C., Serial No. 86479070 (November 29, 2016) (Agricultural machines, namely, a trimming machine for trimming leaves, plants, flowers and buds)
In re JJ206, LLC, Serial No.86532274 (November 7, 2016) (“smokeless marijuana or cannabis vaporizer apparatus, namely, oral vaporizers for smokers; vaporizing marijuana or cannabis delivery device, namely, oral vaporizers for smoking purposes”)
TRADEMARK dilution
Under the terms of the Federal Trademark Dilution Act, only "famous" marks are protected against dilution. Courts may look at the following factors in determining whether a mark is famous:
The duration and extent of use of the mark;
The duration and extent of advertising for the mark;
The geographic area in which the mark has been used;
The degree of distinctiveness of the mark (either through the nature of the mark itself, or through acquired distinctiveness);
The degree of recognition of the mark;
The method by which the product was distributed and marketed (the "channels of trade");
The use of the mark by third parties; and
Whether the mark was federally registered.
Examples of marks which will clearly be considered "famous" would be: XEROX, KODAK and COCA-COLA.