Intellectual Property

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Trademark Filing Information

Protecting U.S. Federal Trademarks

U.S. federal protections for Trademark rights are derived from the highest authority. The Commerce Clause, as enumerated in Section 3, Clause 8 of Article I, grants Congress the sole power “[t]o regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribe.” Utilizing this constitutional power, Congress has enacted federal acts granting federal protection of Trademarks including the Lanham Act (the US Trademark Act), Federal Trademark Dilution Act and 2006 Revision, and the Anti-Cybersquatting Consumer Protection Act. In addition, Trademarks are also protected through state statutes.

Principal Register versus Supplemental Register

Trademarks are registered primarily on the Principal Register. Trademarks not able to be registered on the Principal Register may sometimes be registered on the Supplemental Register if the Trademark is capable of making an applicant’s goods or services distinguishable. In addition, it is important to note that Trademarks registered through the Supplemental Register may be capable of being placed on the Principal Register after 5 years if the Trademark obtains secondary meaning.

Filing a Trademark and Obtaining State Trademark Protection

In addition, many states also allow for Trademark registration specifically under state statute. For example, in the Commonwealth of Virginia, the state registration fee for a Virginia Trademark is typically $30 per class. Please see the Commonwealth of Virginia State Corporation Commission’s Division of Securities and Retail Franchising for more information

It is important to consult a Trademark attorney regarding both federal and state Trademark registration as self-filing may impact the accuracy of the application and processing time. As well, it may lead to possible infringement claims and result in other general protection concerns.

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Trademark Licensing

The exclusive rights of a Trademark owner may be permanently transferred through an assignment agreement. Alternatively, these rights may be partially or temporarily transferred through a licensing agreement. Trademark Assignments are to be recorded in the United States Patent and Trademark Office. Charges are typically around $40 and may be filed electronically through the Electronic Trademark Assignment System.

It is extremely important to consult an attorney regarding the formation and content of either of these agreements in order to understand your rights, maintain quality control considerations over your Trademark if licensed, and to help insure you are receiving adequate compensation for your Trademark in the form of a lump sum and/or royalty payment structure.

What Names Are Protectable Under Trademark Law?

There are varying degrees of protection for trademarks:

  • Fanciful: A made up name has the greatest level of protection because it is unique to your product. This is seen often with prescription drugs such as Lipitor or Xanax.
  • Arbitrary: The next highest level of protection lies with arbitrary names. These are names that have a meaning that is not associated with the business or product being sold. This includes trademarks such as Amazon, Random House and Coach.
  • Suggestive: Names that suggest the type of business can also be protected. For example, Netflix for online movie rentals or Word for word processing software.
  • Descriptive with acquired distinctiveness: Descriptive trademarks are often difficult to protect, unless the trademark has developed its own distinctiveness. One example of this is the brand PLAY-DOH that has vigorously worked to protect its name and has acquired a distinctive name in the marketplace.

In general, trademarks that are generic or descriptive in nature are not afforded trademark protection. Additionally, a trademark may become generic or descriptive over time. It is important to work diligently to protect your trademark and avoid dilution.

Trademark Trial and Appeal Board (TTAB)

Attorneys at the firm protect clients’ trademarks in actions before the Trademark Trial and Appeal Board. The TTAB is an administrative board that handles adversary proceedings involving trademarks. This includes oppositions during registration, where a party opposes the registration of a mark after notice has been published in the Official Gazette. The TTAB also hears matters involving:

  • Cancellations of existing trademarks
  • Trademark interference and concurrent use issues
  • Appeals

If you have received a notice of opposition or notice concerning another action before the TTAB, it is important to respond. Ignoring an opposition or other action can put your trademark in jeopardy. Hearings before the TTAB are similar to a trial and follow the civil rules of procedure. You risk losing your trademark and your registration fee.

McClanahan Powers is conveniently located less than 18 miles away from the United States Patent and Trademark Office (USPTO), the government agency that handles federal trademark issues. In the event the online filing system is temporarily down, we can file in person.