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.
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.
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.
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.
There are varying degrees of protection for trademarks:
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.
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:
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.