What does a trademark protect?
Trademarks protect the brand of a company, product, or service. Trademark law also protects certifications.
How long does a trademark last?
A trademark will last as long as the mark is being used in connection with a good or service and therefore, can theoretically last forever.
When should I renew my trademark?
In order to maintain your trademark, you should continue to use the trademark, but you also need to inform the Trademark Office of your continued use. This is done through the use of various affidavits that are commonly referred to as a Section 8 Affidavit and a Section 15 Affidavit.
The filing of the Sections 8 and 15 Affidavits are considered post-registration filings and the Section 8 Affidavit is mandatory while the Section 15 Affidavit is optional.
Affidavit of Use (“Section 8” Affidavit) - MANDATORY
An Affidavit of Use (“Section 8”) must be filed between the fifth and sixth years of registration. This filing proves that the mark is still being used in commerce. Please note that a Section 8 affidavit is required to maintain the registration. If the owner of a trademark fails to timely file the required Section 8 affidavit, this failure WILL result in the cancellation of the registration.
Affidavit of Incontestability (“Section 15” Affidavit) - OPTIONAL
If the mark is registered on the Principal Register, the registrant may also file an Affidavit of Incontestability (Section 15). Incontestability status provides the registrant with a powerful advantage should it need to bring suit for infringement, namely, conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce. The failure to file a Section 15 affidavit WILL NOT result in the cancellation of your registration but should be considered as an added protection against possible “copycats” of the trademark.
How much does a trademark cost in Jacksonville, Florida?
Trademarks vary in costs, but a reasonable estimate is $1,500.
How long does it take for a trademark to be allowed?
It typically takes 8 to 12 months for a trademark to get registered by the USPTO.
How do I satisfy the “specimen” requirement?
One of the requirements to obtaining a trademark is to provide a “specimen” that shows how the mark is used in commerce and its affiliation with the applicant. There are currently 45 specific classifications in the trademark: Classes 1-34 are related to goods and Classes 35-45 are related to services. While each class requires a specimen, there are different ways to satisfy the specimen required, depending on whether it is a good or a service.
For a “good”, acceptable specimens include but are not limited to the following:
A photograph of the product showing the mark directly on the product, such as the bottom of a coffee mug, or an engraved mark on an auto part, or a jewelry item.
Product labels and tags showing the mark on the goods, such as the label on a t-shirt.
Product packaging showing the mark in association with the goods, such as detergent soap packaging.
A web page showing, or describing the product, near the mark and with purchasing information: A person must be able to purchase the item if a website specimen is to be used.
For downloadable software, copies of the instructions, such as manual and screen printouts from the web page showing the mark in connection with ordering or purchasing information.
Specimens for goods do not include advertising material, business cards, invoices, or bills of sale. However, these types of specimens may be used for proof of use for the services.
Acceptable specimens for “services” include but are not limited to the following:
Print or internet advertising brochures or leaflets.
Menus for restaurants.
Business cards and letterhead.
Marketing promotional materials.
A photograph of business signage and billboards.
In the case of a service, the specimen consisting of advertising, marketing, and/or promotional materials must show a direct association between the mark and the service.
What are opposition and cancellation proceedings?
A trademark is a valuable asset to a business and it is essential to building a brand. You as the applicant have devoted many hours and more than a few dollars to obtain the trademark. Once you obtain the mark, you must closely monitor the use of the mark and it is your responsibility as the trademark owner to self-police the mark.
Two of the ways to self-police the mark are by OPPOSITION and CANCELLATION proceedings, which are both governed by the Trademark Trial and Appeal Board (TTAB for short). The process is very similar for either proceeding. The opposition petition is filed if another party does not have a registered trademark while the cancellation proceeding is used against another party who already has a registered trademark.
The TTAB establishes an administrative process by which a party can oppose a pending mark or cancel a registered trademark. The process will resemble a civil lawsuit with a complaint phase, discovery phase and trial phase. Unlike a civil lawsuit, the proceedings are presented in the form of documentation (depositions, documents, and interrogatories) as opposed to a presentation before a jury or Judge. In this type of proceeding the prevailing party does not receive damages or attorney’s fees from the unsuccessful party. However, the cost of this type of proceeding is much, much less than a Federal civil lawsuit.
Every mark must be published for opposition and it is during that time (30 days) that you as the trademark owner may wish to file an opposition petition. An opposition petition asserts your rights as the trademark owner to prevent another party from obtaining a similar mark in the same class because it would harm you. You as the trademark owner may not be aware of the opposition period because these marks are published in a relatively obscure Federal publication, which you may not be able to access. Even if your miss the Opposition period, you can proceed to a Cancellation proceeding.
If you want to obtain a mark but another party has a similar mark, an option is to file a cancellation proceeding so that you can obtain your mark without any interference from the other party. Typically the primary reasons for a cancellation proceeding include the lack of use by the other party or that you can establish that you have been using the mark longer than the other party and therefore have priority because of first use. If the other party is still actively using the mark, your only option is to establish your priority through first use.
Regardless of which process you may undertake it is not quick; after you file the proceeding you can expect the process to take in the range of 15-20 months. There is also an appeal process if you are unsuccessful at the TTAB.
The Trademark Modernization Act of 2020 went into effect in December, 2021. These are some, but not all, the changes to the Trademark process:
Expungement Proceeding – A party may request cancellation of some or all of the goods or services in a registration because the registrant never used the Trademark in commerce for those goods and services. The time limit for requesting this expungement must occur between the three and ten year period after the registration.
Re-Examination Proceeding – Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date. The re-examination procedure must be requested within the first five years after registration. Any goods or services that are cancelled as a result of these proceedings will no longer be covered by the Trademark registration.
Shorter time period for response - A party can request a single three month extension of time to respond for a fee of $125.00. This particular provision will not be implemented until December 1, 2022.
Here is an example how the expungement and re-examination proceedings may arise.
At times, an applicant may file a mark and list many different items under that class. This is more common in the apparel and household fixture classes. Under the apparel class an applicant may claim the trademark for shirts, T-shirts, pants, socks, belts, hoodies, and sweatshirts. The original applicant may only make shirts so a person who may want to get a similar mark for socks. The new applicant could file an expungement or re-examination proceeding to exclude socks from the original mark and hopefully obtain a similar mark for socks.