Frequently asked questions – Trademarks
Please find below a list of frequently asked questions about trademarks. For additional concerns or inquiries, please contact our office.
01
What are the benefits of a Federal Trademark over Common Law Trademark?
Federal trademark registration gives nationwide protection while common law trademarks (unregistered trademarks) gives limited protection only to a geographical area given that the business is the first to use the mark within the geographical area, however the scope of the geographical area is limited while difficult to enforce. Federally registered trademarks give the public constructive notice to prevent others from using a similar mark, providing a right to file an infringement suit in federal court, the right to use R in the circle symbol with the mark, to prevent importation of infringing foreign goods, and forms a basis to file in foreign countries.
02
What are the basic differences between a Trademark or Service Mark?
A trademark is a source identifier on goods while a service mark is a source identifier on a service rather than on goods.
03
Why do you need a Trademark Search?
A trademark search allows a preliminary determination on whether there may be a likelihood of confusion that would bar registration of the mark.
04
What is likelihood of confusion?
The USPTO will refuse registration of a mark if there is a likelihood of confusion between applicant’s mark and an already registered or prior-pending mark of another party. A likelihood of confusion exists when marks are similar and/or the goods/services are same, similar, related, or while unrelated such that a consumer would mistakenly believe that the goods/services come from the common source. When a likelihood of confusion does not exist, identical marks can coexist in the trademark database.
05
What is the difference between a Strong and Weak Mark?
Marks are legally better protected in terms of registrability and enforceability for Strong marks which are distinctive compared to Weak marks which are more likely to be descriptive in nature. The four general categories of marks (in the order of the strongest mark) are fanciful(no known meaning) or arbitrary (known meaning with no relationship to the good), suggestive (suggest but no description/qualities/connection to goods/services), descriptive (words/designs that describe the goods/services), or generic (common name for the goods/services). Descriptive marks can develop acquired distinctiveness through extensive use in commerce for a period of time.
06
What types of marks are generally Not Registrable?
Marks that are purely ornamental, surnames, an individual’s name or likeness, geographically origin descriptions, foreign terms that translate to descriptive/generic terms, etc. are generally unregistrable, provided that evidence is not provided to overcome the refusal of registration.
07
Why do I need Trademark Maintenance?
Trademark registration can last for unlimited consecutive 10 year periods provided that timely post registration maintenance and renewals are met. The Declaration of Use (continued use in commerce/excusable nonuse) must be filed between the 5th and 6th year following registration and the combined Declaration of Use/Excusable Nonuse and Application for Renewal must be filed between the 9th and 10th year after registration and every 10 years thereafter. Failure to file these documents results in cancellation/loss of the registered trademark. (e.g. Trademark date of registration: January 1, 2020, due date for 1st maintenance document: January 1, 2026, due date for 2nd maintenance document: January 1, 2030, due date for 3rd maintenance document: January 1, 2040, …). If a deadline is missed, a 6 months grace period is available with a late fee.
08
What is a Section 15 “Incontestability” Declaration?
After 5 years of continuous use of a federally registered trademark, the trademark owner may claim incontestable rights in a trademark which makes the trademark difficult to be challenged by third parties provided that there was no final legal decision adverse to the owner’s claim to ownership/right to register/keep registration of the trademark and no pending legal proceeding against the trademark. Section 15 is not a mandatory requirement to maintaining rights or ownership under trademark law, and is not a required filing.
09
What is an Allegation of Use Filing?
For Intent to Use basis Trademark Applications, where a mark is not in use at the time of filing, however there is a bona fide intent to use in commerce, an Allegation of Use, a sworn declaration including the date of first use anywhere in U.S., date of first use in commerce, and specimen showing actual use, must be submitted to the USPTO prior to the grant of registration. The Allegation of Use may be either a Statement of Use or Amendment to Allege Use, depending on the time of filing. The Statement of Use is filed within 6 months or with 6 month approved requests for extensions, after the Notice of Allowance is issued by the USPTO. The Amendment to Allege Use may be filed any time prior to publication. Law Offices of Chung & Kim provides this service at your request. Please see our list of services for additional information.
10
Are U.S. Licensed Attorneys required to handle Trademark Matters?
Yes. Effective as of August 3, 2019, Foreign Domiciled Trademark Applicants, Parties, and Registrants must be represented by a U.S. Licensed Attorney for representation before the United States Patent and Trademark Office.
11
Does LOCK provide representation by Licensed U.S. Attorney?
Yes. We are a Law firm and not a self-help service entity. Representation by Licensed U.S. Attorneys and U.S. Patent Attorney establishes an attorney-client privilege unlike self-help entities.
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Irvine, CA 92614
U.S.A.
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