Trademarks
Right On The Mark
Petock & Petock, LLC is experienced at handling all matters related to trademark law and in fact considers the area one of its specialties.
We regularly counsel clients on the adoption of trademarks and service marks for goods and services. This includes advising clients on selection of marks, proper trademark and service mark usage and clearing of marks through searching and the like. The firm regularly prepares, files and prosecutes trademark applications to issuance as trademark registrations and prosecutes required Declarations as to use under Section 8 of the Trademark Act and Declarations to establish inconestability within the meaning of Section 15 as well as applications for Renewal.
Petock & Petock regularly represent clients before the Trademark Trial and Appeal Board where trademark disputes may be more cost effectively resolved than in litigation in the Federal Courts. We also litigate trademark infringement matters in all Courts including where preliminary injunctions are involved and represent clients in trademark disputes in alternative dispute resolution, such as mediation.
The firm has a network of foreign associates around the world for purposes of both patent and trademark prosecution in foreign countries, or other needs as the case may arise, such as agreements and litigation.
We also counsel and draft agreements in trademark licensing and/or assignment situations where there exists a real risk of invalidating a mark. Petock & Petock also advises with respect to franchising matters.
Trademark Primer:
A trademark, and particularly a federally registered trademark, protects the mark with respect to its use on goods. A service mark, and particularly a federally registered service mark, protects the use of the mark in connection with the rendering of services. Otherwise, a trademark and a service mark and the effect of their registration are substantially identical. Both will be referred to herein generally as a trademark.
Any mark, design, device, symbol or configuration of goods or containers for the goods which distinguishes and identifies the source of origin of goods or services may be federally registered, except for certain limited exceptions such as immoral, deceptive or scandalous matter. Other exceptions to registration are any marks which would disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or that could bring them into contempt or disrepute. Additional exceptions to registration are a flag, coat of arms or insignia of the United States or of any state or municipality or of any foreign nation. Another exception to registration is if the mark comprises a portrait or signature identifying a particular living individual except with the individuals written consent.
Certain marks, which may not be initially registerable on the Principal Register of the Patent and Trademark Office may be registered if they have acquired secondary meaning. Examples of such marks are marks which are merely descriptive, primarily merely a surname or geographically descriptive of the goods or services.
A trademark may be registered for a period of ten years and renewed for additional ten year periods as long as the mark continues to be used in connection with the goods or services.
There is a requirement that an affidavit be filed in the Patent and Trademark Office certifying that the mark is still in use between the 5th and 6th year after registration. Failure to file such an affidavit results in the Patent and Trademark Office automatically canceling the registration. Additionally, an affidavit may be filed setting forth certain additional facts, such as the fact that the mark has been used continuously for a five year period and that there is no action pending to cancel that mark in any court or in the Patent and Trademark Office, and in such a case, the registration of the mark becomes substantially incontestable. There are some limitations to such incontestability, such as if fraud were practiced on the Patent and Trademark Office in obtaining the registration.
The registration of a mark on the Principal Register of the Patent and Trademark Office cuts off the right of anyone in the United States to acquire rights to the mark for related goods or services. Further, as stated above, the filing of an affidavit or declaration under Section 15 of the Trademark Act after five years of continuous use can make the registration substantially incontestable.
A federal trademark registration on the Principal Register is prima facie evidence of the owners exclusive right to use the mark in commerce for the goods or services set forth in the registration.
Another advantage of obtaining a federal registration is that the trademark examiners in the Patent and Trademark Office become a first line of defense against others attempting to register the mark which you are using for goods or services. Further, most reasonable business persons conduct a trademark search through the records of the Patent and Trademark Office before adopting a mark, and this in itself, is likely to avoid unnecessary problems and legal expenses with another party. Most reasonable business persons will not attempt to adopt a trademark which is already registered to another party for related goods or services. Further, by obtaining a registration, one is likely to fortify the trademark rights under the Federal Anti Dilution Statute of 1995 which gives certain rights to the owner of a famous mark with respect to the use of a confusingly similar mark by another independent of whether or not the mark is used on related goods or services.
The penalties provided for infringement of a federally registered mark are quite substantial and can include recovery of profits made by the infringer, damages, costs, attorney fees and even the trebling of the damages found to have been incurred by reason of the infringement. Further, the court may order destruction of infringing articles and issue an injunction to forbid further infringing activity. A registered mark can also enhance the ability to stop the importation of goods bearing an infringing mark.
The obtaining of a federal registration provides protection for the mark in the United States. If protection is desired in foreign countries or regions such as Europe in the form of a community trademark (CTM), the mark must be registered in those countries or regions.
