Category Archives: Trademark

The Importance of Legal Counsel When Filing for a Trademark Registration

Registering a trademark with the United States Patent and Trademark Office (“USPTO”) is an important process that can confer significant rights on the holder of the registered trademark. Despite the importance and gravity of this registration process, many people seek to perform this task themselves or with the help of a non-attorney service like Legal Zoom. While the process of filing for a registration is deceptively simple (it is an online form accessible to the public), the implications to your brand are significant. Failure to properly research and file your application can lead to consequences ranging from the rejection of the application all the way to a trademark infringement lawsuit by a senior user. This is not a process that should be taken lightly.

The requirement to register a mark have been discussed here. However, while that article discusses the general legal principles for registration, it does not discuss the practicalities of the registration process. Importantly, before filing an applicant will want to do a trademark search to ensure that the new mark will not cause any consumer confusion with an existing mark. While not required by the online form, this step is critical before making any registration application. Failure to ensure that there are no prior, similar registered marks can lead to the application being rejected by the examiner. Worse, by filing the application, you are admitting to using the mark in commerce. This means that if there is any senior user of the mark, you have now opened yourself up to a trademark infringement lawsuit. This simple online form that you have submitted to the USPTO can now become evidence against you in a federal lawsuit – an admission that you were infringing on the mark in question, including the dates you started your infringement.

Further, failure to properly fill out each of the items on the form can lead to office actions from the examiner. Some of the issues in an office action can be fixed and the application can proceed. However, significant changes are not allowed. Failure to properly fill out the application form can lead to the complete rejection of the application. If an application is rejected, your will lose your priority date and, should someone else register a similar mark in the meantime, you may lose your ability register completely.

At Smith & Associates, we take steps to help find potential senior users of the mark and to help prevent the rejection of the application. Prior to filing any application, we provide our clients with an analysis letter that details potential senior marks that have already been registered and which may pose an issue to the registration of your mark. Further, the letter contains an analysis on the strength of your mark and the likelihood that the examiner will allow it to be added to the principal register. This way, prior to filing any registration or making any public admissions, you can have a clear view of any potential issues your registration may face. Additionally, your registration application will be filed by an experienced attorney, someone who understands the underlying legal principles and the legal significance of each of the questions posed in the application. Finally, we do all of this on a flat-fee basis – charging you a single, affordable fee for of our services.

Registering your mark with the USPTO is an important step in growing and protecting your brand. Trying to do this step yourself or without legal counsel can have severe and costly legal consequences in the future. If you are considering filing a trademark registration with the USPTO, you should contact an attorney at Smith & Associates for a free consultation to discuss your rights and options.

The Importance of Policing Your Trademark

Building a brand is difficult, especially one that sets you apart from your competitors and instills confidence and association with your product from consumers. But building a brand isn’t the end, it is only the beginning. Maintaining and policing your mark is just as important, if not more important. Once your brand starts accumulating client goodwill, competitors and knockoffs will invariably want to “steal” some of that goodwill for themselves. These competitors will seek to confuse your clients and potential clients – using the goodwill you have worked so hard to build up for their own gain.

Taking steps to police your brand and the marks associated with it requires affirmative actions to seek out these copycats and to then stop them. Not only is this a good business practice, it is legally required if you wish to keep the legal rights to your mark.

The courts have held that a “trademark owner has an affirmative duty to police his trademark.” Wisconsin Cheese Group, Inc. v. V & V Supremo Foods, Inc., 537 F. Supp. 2d 994, 1001 (W.D. Wis. 2008). If a trademark owner allows an infringing mark to continue in commerce for too long, the owner may lose any rights to prevent the continued infringement in the future. Id.

Importantly, courts have held that trademark owners cannot just hide theirs heads in the sand and be willfully ignorant of potential infringing uses. Trademark owners must affirmatively take actions to seek out infringing uses and take affirmative steps to prevent them. See Wisconsin Cheese Group, supra (“lack of actual knowledge of infringement does not automatically excuse a trademark owner from unreasonable delay”) and Chattanoga Mfg., Inc. v. Nike, Inc., 301 F.3d 789, 793 (7th Cir. 2002) (“a trademark owner is ‘chargeable with information it might have received had due inquiry been made.’”).

Because of this, if you have a trademark or servicemark that you wish to keep, you need to take affirmative steps to ensure that no one else is infringing on it. Otherwise, all your hard work and customer goodwill may have been for nothing.

What Steps Can Trademark Owners Take to Protect Their Marks?

One of the most important things a mark owner can do is to be knowledgeable of their industry and the players in that industry. To do this a trademark owner should:

  • Know who your competitors are and who the new entries into the market are (industry groups and trade associations are great for helping with this);
  • Perform internet searches for your mark to know who is using it and in what context; and
  • Importantly, know who is filing federal registrations with marks that are confusingly similar to your mark.

For the last entry, it involves periodically checking the United States Patent and Trademark Office’s (“USPTO”) trademark database to see the new filings and what goods or services they identify and, from there, determining if any new filings have a likelihood of consumer confusion with your mark.

How Can Smith & Associates Help You?

While anyone can search the USPTO’s trademark database, understanding their impact is a whole other issue. In fact, there are numerous companies that will search the USPTO database for you and send you their results periodically each year. Unfortunately, a listing of registration results does not help a trademark owner know if this is something that requires action.

This is where we can help. Smith & Associates offers very affordable, flat-fee pricing to monitor your marks against the USPTO database. Our service doesn’t just give you a listing of search results, it gives you actionable advice based on the search so that you will know a) if anyone is potentially infringing on your mark and b) what actions you should take to prevent this moving forward. More importantly, if you have questions about the results, you will have an experienced trademark attorney to discuss your results and your options.

If you would like to have us monitor your marks against the USPTO database, contact an experienced attorney at Smith & Associates for a free consultation to discuss your options.

Claim Preclusion and the TTAB

Today, the Supreme Court handed down its decision in B&B Hardware, Inc. v. Hargis Industries, Inc.. This decision has a real impact on companies that are applying for and challenging federal trademark registrations. While the full history and details of this case have been going on for almost two decades and, according to the Court, “could fill a long, unhappy book,” the important facts are fairly straight forward. In 1993 B&B registered its trademark “SEALTIGHT” for “threaded or unthreaded metal fasteners and other related hardwar[e]; namely, self-sealing nuts, bolts, screws, rivets and washers, all having a captive o-ring, for use in the aerospace industry.” In 1996, Hargis sought to register its trademark “SEALTITE” for “self-piercing and self-drilling metal screws for use in the manufacture of metal and post-frame buildings.” Eventually in 2002, The United States Patent and Trademark Office (“USPTO”) published Hargis’s mark for opposition and B&B filed an opposition which prompted a proceeding before the Trademark Trial and Appeal Board (“TTAB”). However, B&B had also filed a trademark infringement action in the circuit court.

This is where the issue before the Court comes in. B&B was arguing before both the circuit court and the TTAB that Hargis’s mark was so similar to its mark that it would create a likelihood of consumer confusion. Before the circuit court could rule on this matter, the TTAB agreed with B&B and ruled that the marks were so similar as to cause a likelihood of consumer confusion and refused to register Hargis’s mark. Hargis did not appeal the TTAB decision. B&B then argued in front of the circuit court that since the TTAB has already ruled on likelihood of confusion, that decision should apply to the circuit court and that Hargis should not be able to raise the defense that there is no likelihood of confusion. This is called claim preclusion, when once Court rules on an issue, other Courts are bound by that ruling. Today’s Supreme Court decision confirms that B&B is correct and that TTAB rulings would prevent those same issue from being argued in circuit court.

Hargis’s decision not to appeal the TTAB ruling, in effect, bound it to the ruling for any subsequent lawsuits. This is important. Proceedings before the USPTO can have a preclusionary effect. Hargis, by not appealing the TTAB decision, is now precluded from arguing one of its main defenses.

This ruling enforces that issues before the USPTO are serious matters that should not be taken lightly. If you have a trademark issue, contact the professionals at Smith & Associates for a free consultation.

Can I get a U.S. Trademark Registration to Protect My Brand?

While there are many factors that determine whether or not a particular brand or mark can be registered with the U.S. Patent and Trademark Office, the three most important factors are distinctiveness, likelihood of confusion, and use in interstate commerce. Your brand must be distinctive, this is a legal term of art that will be described later. Also, your brand must not confuse consumers into thinking your brand is represents some other entities goods or services. And finally, you must actually be using your mark in commerce.


It is generally accepted that there are five levels of distinctiveness. They are listed below from most distinctive to least distinctive.

  • Artful/Fanciful: This level is the most distinctive. They are words that were invented to represent the product or service. The words have no meaning other than the invented meaning. Examples include: Xerox, Google, Kodak, Bidzuku.
  • Arbitrary: These are words that have a dictionary meaning, but that meaning does not relate to the product or service. The most notable example of this is ‘Apple’ for a computer company.
  • Suggestive: These are marks that ‘suggest’ what a product is by the name. These marks are more than just ‘merely descriptive’ of the product and are considered distinctive by the Trademark Office. Be careful because these levels are subjective and what may be suggestive to you could be merely descriptive to the Trademark Office. Examples include: Citibank, Playboy, and Mustang.
  • Descriptive: These are marks that merely describe the product or service. While there are methods for registering descriptive marks, for all intents and purposes, these marks are not distinct enough to be registered with the Trademark Office. Also note that surnames usually fall within this level. Examples include: Qik Print, Eyeglass Superstore, Chinese Restaurant.
  • Generic: These marks merely describes the category of goods or services. These marks are not protected. E.g. Food, Restaurant, Computer.

For you to register your mark, the United States Patent and Trademark Office (USPTO) must determine that your mark is at least suggestive. While there are ways to register a descriptive mark, that is outside of the scope of this post.

Likelihood of Confusion

Your brand cannot mislead or confuse consumers. This usually occurs when your mark is the same or similar to existing trademarks. For example, it might be possible for two companies to use the mark ‘Apple’ if one was selling computers and the other was selling teaching supplies. Conversely, even if the mark is different, if it is similar enough and in the same or similar class, consumers may still be confused. For example ‘Teachbook’ may infringe on ‘Facebook’s’ mark. Even if there is not a similar mark registered with the U.S. Trademark Office, there may still be uses of your mark that will affect your rights. Trademarks can also be filed with a state or acquired through use (this is called a common law trademark). While these marks may not preclude you from registering with the U.S. Trademark Office, they can prevent you from using your mark where they have priority over your mark. This is why a good trademark search is vital before attempting to register your mark.

Use In Commerce

This is another term of art, but it basically means that the mark is actually being used to sell goods or services. Thus if you are still in the planning phase of your project, you cannot get a trademark. You must actually be using the mark. However, there is an ‘Intent to Use’ application that can be filed when you know you want to use a mark, but are not yet using it. This does not grant you any actual protection, but it will provide a record of your use of the mark if you are worried someone might try to steal your brand. If you do file an Intent to Use application, you will still be required to file an actual registration to obtain any rights.


This is just a general overview of some of the key issues when it comes to eligibility to receive a U.S. Trademark Registration. Your specific situation will affect if your mark can be registered. If you have any questions, please feel free to contact us here.