Trademark Overview

Learn About Trademark Rights

What is a Trademark or Servicemark? – this article offers a simple definition of a trademark, describes the purpose of securing a trademark, and lists what types of things can be protected through trademark rights.

Power of a Trademark – this article provides a real world example of trademark rights in action. An analysis of the legal battle between the estate of deceased singer-guitarist Brad Nowell and the band “Sublime with Rome”.

About Our Firm’s Trademark Services

Wolfe & Houlehan is a full-service trademark law firm. Our experience and knowledge of trademark law allows us to be incredibly efficient in the handling of all trademark matters. Consequently, we offer low flat fees for most services, described in full on their respective pages so you know what you are getting and what the full cost will be. We offer the following trademark services:

  • Trademark Registration – our firm will apply for a trademark on your behalf. All applications include a comprehensive trademark search, legal opinion as to the likelihood of registration, and application filing with the trademark office. We offer federal trademark registration, Kentucky trademark registration, and combination federal and Kentucky trademark registration.
  • Trademark Reservation – a federal trademark may be reserved by filing an Intent to Use application. The application is similar to that for a mark already in use, but involves a separate filing called an Allegation of Use once the mark is put into use. We offer federal trademark intent to use registration, federal trademark Allegation of Use filing, and a federal Intent to Use extension request (to provide additional time to put the mark into use).
  • Trademark Renewal – a trademark registration will expire unless certain renewal filings are made which will cause rights previously gained to be lost. For federal trademarks, a Declaration of Use must be filed to prove usage while a Declaration of Incontestability may be filed to afford greater protection. We offer federal trademark renewal, federal trademark Declaration of Use, federal trademark Declaration of Incontestability, and Kentucky trademark renewal.
  • Trademark Assignment – a trademark holder transfers ownership of the trademark to another person or business through an assignment. A filed/recorded assignment provides evidence of the transfer. We offer federal trademark assignment and Kentucky trademark assignment.
  • Trademark Infringement – if your trademark is infringed upon, our firm is prepared to take the appropriate response. In all cases, we investigate the scope trademark rights held by the client and any by the potential infringer and craft a customized response designed to stop the wrongful use. We offer an infringement legal opinion with cease and desist letter (when client’s rights are infringed), an infringement legal opinion with cease and desist letter response (when client allegedly infringed upon another’s rights), an infringement settlement agreement (to memorialize the agreement to cease infringing activities).

Frequently Asked Questions

  • What are “categories” of trademarks and what is their significance?
    • To function as a trademark or a servicemark, words/names/images/symbols/etc. must have a minimal level of distinctiveness that can be readily attributable to the mark holder’s goods sold or services offered. The USPTO lists five “categories” of marks that may be considered along a distinctiveness/descriptiveness continuum, based on the ease at which they identify source of goods or services. The five categories, from strongest to weakest, are:
      1. Fanciful – a term that has been invented for the sole purpose of functioning as a trademark or servicemark. Examples: Pepsi, Kodak, Exxon
      2. Arbitrary – a term that is commonly used but not in the context for which it is being used to identify the mark holder’s particular goods or services. Examples: Apple for computers and electronic devices, Razor for scooters, Infiniti for cars
      3. Suggestive – a term that requires imagination, thought, or perception to reach a conclusion as to the nature of the goods or services to which it is applied. Examples: Microsoft for computer software, Tide for detergent, Coppertone for sunscreen
      4. Descriptive – a term which describes a quality, characteristic, function, feature, purpose, use, or ingredient of the specified goods or services. Examples: Frosted Mini-Wheats, HoneyBaked Ham, Bank of America, Jiffy Lube
      5. Generic – a term which functions as the common or class name of the goods or services. Examples: pizza, light beer, e-mail, dry cleanersFanciful, arbitrary, or suggestive terms may be registered as trademarks or servicemarks without much inquiry. Descriptive terms may not be registered unless the applicant first proves that the term has acquired a secondary meaning whereby the public identifies the term with the applicant’s specific goods or services, rather than the goods or services more generally. This usually requires significant advertising, a high volume of sales, or use of the mark over a long period of time. Generic terms may never receive trademark protection, since this would limit the ability of the public to use common identifying words.When deciding on a trademark or servicemark to use, suggestive and descriptive marks are beneficial because consumers may readily identify such a mark with the particular goods or services offered. However, because the words used in the mark are more common, especially amongst the specific class of goods or services, others will still be allowed to claim similar marks. Example: Office Max and Office Depot must be allowed to coexist despite the common usage of “office.”Fanciful or arbitrary marks may require some advertising and sales success for the public to develop a quick connection between the source and the type of goods or services. Yet, when this is accomplished, the mark will be very distinct and acquire broad rights to prevent similar registrations. Example: the word “Disney” doesn’t immediately suggest amusement parks, hotels, cartoon characters, etc. but is a strong enough trademark that it would prevent another business named “Disney” from operating in similar product or service classes.
  • What is the trademark Principal Register?
    • The Principal Register is the primary listing of federal trademarks and servicemarks. Upon registration with the USPTO, a trademark or servicemark listed in the Principal Register is entitled to all the rights provided by the Trademark Act. The Principal Register is searchable to allow others to determine which marks exist and the extent of rights claimed.There is also a Supplemental Register, which allows for the registration of marks that do not meet the requirements for registration on the Principal Register. Marks appearing on the Supplemental Register must be capable of distinguishing goods or services, but need not actually do so. The Supplemental Register exists so that mark holders may register their marks in other countries that have less stringent registration requirements.
  • How do I check the status of a trademark I’ve applied for?
    • You may view details of the application and its filing status by searching either the Federal TESS database or the Federal TARR database. You may view all documents filed with or added to the application using the Federal TDR database. The easiest way to search is by the application’s serial number or the mark’s registration number. You may do so at either of the above links or here:
      Choice:
      Serial Number
      Registration Number
      Number: 

      The Kentucky Trademark Database may be searched as well but it will not reveal applied for marks, only registered marks.

  • What are the rules regarding the use of the trademark symbols?
    • Any time you claim rights in a mark, whether or not an application for registration has been filed with a state or the USPTO, you may use the “™” (trademark) or “SM” (servicemark) designation to alert the public to your claim. You may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. USPTO FAQ. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
  • How does a trademark become “abandoned”?
    • A trademark is “abandoned” either through discontinuing use, failing to respond to trademark office correspondence, or failing to complete filings to keep its registration alive. Abandonment means that the mark is “dead” and loses the rights provided through registration. To regain these rights, an entirely new application must be filed and new filing fees paid. Re-registration will not be possible if another person has registered the mark while it was abandoned by the initial mark holder.Federal marks are “cancelled” if a Declaration of Use is not filed and “expire” if a registration renewal is not filed. Despite the different terminology, in both cases, the result is that the mark becomes abandoned. A mark reserved under a federal Intent to Use application is abandoned if an Allegation of Use is not filed in time. Because federal marks may be considered abandoned based on filing omissions alone, it is possible for a mark holder to retain common law rights to marks listed as abandoned if use of the mark was continuous.If a federal trademark was abandoned for failure to respond to a USPTO Office Action or failure to file a Declaration of Use (Statement of Use), it may be revived within 2 months of the abandonment date by filing a Petition to Revive and submitting a $100 filing fee. If your mark has abandoned within the last 2 months and you would like assistance reviving it, please contact our firm.Kentucky marks are abandoned when discontinued with intent not to be resumed, which may be inferred from the circumstances. “Nonuse for two consecutive years shall constitute a rebuttable presumption of abandonment.” KRS 365.563(9)(a).
  • Are federal and Kentucky trademark laws and application procedures the same?
    • Kentucky’s system of trademark registration and protection is intended to be “substantially consistent” with the federal system and the federal Trademark Act is persuasive authority for interpreting and constructing the Kentucky trademark statute. KRS 365.561.The federal and Kentucky goods and services classifications are essentially the same. The “likelihood of confusion” standard is very similar under federal law, 15 USC 1052(d) and Kentucky law, KRS 365.567(6).One area of distinction is that federal law allows an applicant to file for registration under an “Intent to Use” while Kentucky law only allows an application to be filed after actual use has been made. However, a federal Intent to Use application will not receive final registration until the applicant begins and proves that actual use has taken place through filing an Allegation of Use.
  • I have been contacted about the pending expiration of my trademark. What do I do?
    • The Kentucky Secretary of state notifies mark holders that their mark will expire approximately 6 months prior to the expiration date. The USPTO does not remind mark holders of the need to make renewal filings or a mandatory maintenance filing known as a Declaration of Use. However, third party sites search for expiring registrations and sometimes email mark holders in a way that appears to be an official communication from the USPTO.If you have been contacted about a pending expiration, you might need to make a maintenance or renewal filing or else your trademark will be cancelled. Please see our Kentucky Renewal and Incontestability page for the services we offer in this area.
  • Do you handle foreign trademark applications?
    • No. At this time, our firm does not handle foreign registrations of U.S. marks or U.S. registrations based on foreign applications or registrations.
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