By: Kelly Donohue and Radhika “Ronnie” Raju, Wilkinson Barker Knauer, LLP
In last week’s Part Two of our series on Trademark Basics, we discussed the benefits of conducting a clearance search to try to ensure that the mark you are considering adopting doesn’t infringe on the rights of anyone else. Say the results of your clearance search have come back clean and, according to your trusted legal advisor, you should be able to use your trademark without worrying about being slapped with a demand letter. Why not just use your mark and save yourself the time and money it takes to obtain a federal registration?
Quite simply, federal registration gives you many valuable benefits at an extremely low cost (the filing fee for a trademark application can be as low as $225) and it is the most cost effective way to protect your brand. Here are the top nine reasons you should take the next step and file a trademark application with the Patent and Trademark Office (PTO), along with a quick overview of the registration process. For those of you that have been following our five part series on Trademark Basics, we will divulge the 10th reason for seeking federal registration in our upcoming trademark webinar, the date for which we will be announcing soon.
The Benefits of Federal Registration
Broadcasters have a lot of balls in the air, from finding advertisers to managing on-air personalities to creating content, all while trying to stay within the FCC’s regulatory lines and within budget. So why add seeking federal registration for your trademarks to your to-do list? Here’s why we think it is well worth your effort:
- Deters Others From Using a Similar Mark. All applications and registrations are publicly available and searchable in the PTO’s electronic database, called TESS. Therefore, your mark will be easy to find when others do even a minimal clearance search. This notice deters others from using or adopting a mark that could be confusingly similar to yours and could fend off problems before they even start.
- Prevents Registration of Similar Marks. One of the PTO’s functions is to prevent others from registering confusingly similar marks. Once your mark is registered, the PTO will refuse to register any marks that are confusingly similar to yours. This is a wonderful free service that the PTO provides to owners of registered marks.
- Shows Trademark Savviness. Obtaining a federal registration allows you to use the registered mark symbol, ®, next to your trademark. This shows the world that you are trademark savvy and are serious about protecting your brand.
- Nationwide Rights. If you file an application and it is granted, you gain the legal presumption that you have the exclusive nationwide right to use your mark as of the application date. While broadcasting is still a local business, establishing nationwide rights remains critical, especially where you have a substantial online presence that extends beyond your local community, syndicate a program nationally, or operate a station whose contours span across more than one state.
- Cybersquatters. Federal registration of your mark will also make it easier to take action against cybersquatters, as will be discussed in the fifth and final part of this series.
- Nationwide Notice. A federal registration provides nationwide “constructive” (as opposed to actual) notice that you are the exclusive owner of the mark. This benefit of registration will enhance your ability to enforce your mark against infringing uses. If, for example, you file for and obtain a federal registration for CRANK for radio broadcasting services, an unrelated station that subsequently adopts that same mark anywhere in the US cannot successfully argue that it lacked notice of your use (even if it did not actually know about your mark). Thus, if you want to adopt the CRANK mark at another station you own or license the mark for use by another broadcaster’s station in a different market, a broadcaster who is already using the mark there, but began using the mark after you filed your federal application, will not be able to defend its use on the grounds that it adopted the mark in good faith and without notice of your mark.
- Federal Jurisdiction. A federal registration allows you to sue infringers in federal court, where judges are often more savvy about trademark matters. Also, in certain cases, it allows you to recover treble damages, meaning the court can award triple the amount of the actual damages and even attorney’s fees if you prevail in the suit.
- Facilitates Foreign Registration. A federal registration gives you the ability to use your federal registration as a basis for seeking registration in foreign countries, allowing you to protect your brand as you expand into foreign markets. More and more broadcasters are marketing their digital properties (streamed stations, apps, etc.) beyond the U.S. borders, so this benefit should not be overlooked.
- Helps Stop Counterfeiting. A federal registration of a mark can be recorded with U.S. Customs and Border Protection so that it can stop the importation into the US of counterfeit or infringing goods. This tool is particularly important in the media and entertainment industry, where counterfeiting is rampant and can have a substantial impact on revenues.
Obtaining and Maintaining a Federal Registration
Hopefully, we have convinced you that federally registering your trademarks is a good idea and you are now ready to register. Thankfully, for the most part, the application process is fairly straightforward. The first step is to figure out which kind of application you should file. If you are already using the mark, you would file what is called a “used based” application. If you are still in the planning stages and haven’t yet started using the mark, you would then file what is called an “intent to use” (“ITU”) application.
Both used-based and ITU applications require a few pieces of information, such as the name and address of the applicant, the mark and a copy of the design (if you are seeking registration of a logo). If the mark is currently in use, you will need to provide the date on which it was first used. Easy enough, right? From here, it gets a bit trickier:
- Drafting A Description of Goods and Services. First, you will need to identify the goods and services for which you want to register your mark. There is a real art to crafting these descriptions. For use-based applications, you want to cover all of your goods and services accurately and be sure that you can document that the mark has been used to sell or promote each and every one listed. For intent-to-use applications, you must also cover all of your goods and services with which you intend to use your mark, but you also want to leave yourself some wiggle room, in case you expand into areas that you might not have contemplated when you first filed the application. If you have not used the mark for some of them when it comes time to prove use, you can delete them from the application. If you do not include them at the outset, you will not be allowed to add them later. It is extremely important to strike the right balance. If your description of services is too vague or overbroad, your application may be rejected and you will be required to provide a more limited description. Conversely, if it is too narrow, you may find yourself using the mark down the road in ways that are not covered by your registration (in which case you would have to file a new application to cover the new goods or services, an avoidable expense!).
- Selecting Classes of Goods and Service. Second, you will have to identify in which “classes” your goods and/or services fall. There are forty-four different classes of goods and services and the description you have selected will determine how they are classified. The classes that you use are one of the factors that the PTO uses in determining whether a subsequently filed application for a similar mark should be allowed or denied. Also, you may not realize that different aspects of your business need to be set out separately and registered in separate classes. For example, radio broadcasting services falls under Class 38. But what if you also have a website or you stream online? What if you also offer advertising services under your mark? What if you have a downloadable app? Figuring out which classes in which your mark could comfortably fit can get complicated.
- Providing a Specimen with the Application. If you are filing a use-based application, you will have to include an example of your mark in use (this is called a “specimen” in trademark terms) for at least one of the goods and/or services listed in each class. Depending on which classes of services you are filing in, a specimen can be anything from a printout of your website to an audio clip of a show to pictures of a t-shirt bearing your station’s logo. No matter what your specimen, it is essential that it reflect the use of the mark as contemplated by your description of goods and/or services. The PTO can reject your application if your specimen does not support your description.
- Providing a Specimen After the Application is Filed. If your application is based on an intent to use the mark, before the mark can be registered, you will need to make a separate filing, claiming use, providing the date of first use and providing specimens evidencing that you are using the mark. You can submit this filing before the Trademark Office approves your application or within six months of the date assigned after the application is approved. You can also extend the time for filing for an additional six months up to five times. The filing with the claim of use and each request for extension of time will require an additional fee.
- Responding to PTO Inquiries/Arguments. Once you have filed your application, the PTO reviews your application and may come back to you with questions or requests for more information. Worse yet, they may refuse your mark altogether for various reasons (conflicts with a registered mark, descriptiveness, etc.). You will get six months in which to try to get the Trademark Examiner to withdraw the refusal. If you are successful, the mark gets published in the Trademark Gazette, allowing third parties thirty days in which to oppose your application.
- Keeping Track of Maintenance Filings. Even after your mark registers, there are routine filing requirements that are critical, such as declarations of use and renewals at the five- and ten-year marks, respectively. While these are very straightforward filings, missing them can cause your registration to lapse. So it is very important to know what these deadlines are and docket them accordingly. If your attorneys prepare and file the application for you, they will docket these deadlines and send you reminders about them when the time draws near.
Is Federal Registration Right for You?
Although federal registration provides the broadest protection, for some trademark owners, it is not necessarily the best option. In most states, state registration provides very little substantive legal protection, although it can provide notice if someone does a state trademark search before adopting a mark and it is less expensive than seeking federal registration. For marks that are only used in an extremely limited geographic territory, state registration may be sufficient. In the radio industry in particular, where different radio stations in different parts of the country use the same slogans, state registration is often the best course of action.
Now that you have invested the time and money to register your marks, how do you make the most of these valuable assets? Next week, we will discuss strategies on how to best manage your trademark portfolio, including conducting a periodic audit of your trademark assets. Until then, Keep Calm and Trademark On!
Note: Part Four of this series will follow in the next MAB News Briefs. Part Two discussed the importance of trademark searches, and can be found here. Part One provided an explanation of what trademarks are and why they are important and is available here.
Reprinted by permission.