Application / Trademark Registration
A trademark is a word or symbol that identifies one and only
one business as the sole provider of a particular product or service.
Because of this source identifying feature, trademarks have been called the
"fingerprints" of commerce.
Over a period of time, customers trade with certain companies
based on personal satisfaction with their products and services, or on the
recommendation of a trusted friend. In a free market where a variety of
products satisfy a particular need, customers make their selections based on
the distinguishing marks (trademarks) and packaging (trade dress) that they
recognize and have learned to trust. Trademarks and trade dress therefore
symbolize a company’s trade reputation. Customer brand loyalty (reluctance
to change) is a measure of customer trust that forms the real basis of a
company’s trade reputation and its standing in the community.
The value of having a
recognized trademark is clear: the ability to stand out in a competitive
marketplace can mean the difference between a company thriving and merely
For this reason, trademarks are among the most valuable assets of
these valuable trademark assets
is assured by
registration in the
U.S. Patent and Trademark Office. Registration gives legal notice of exclusive trademark rights,
and opens the door to enforcement actions in
and by the
U.S. Customs Service.
We help our clients select and register
distinctive trademarks that stand out and make winning statements about
their innovative products and services.
Our practice before the
U.S. Trademark Office:
selecting distinctive, defendable
searching and clearing candidate marks for use and registration
securing the registration of trademarks, U.S. and foreign
oppositions and cancellation proceedings before the
watch service for conflicting marks
maintaining and renewing trademark registrations
recording registered trademarks with the U.S. Customs Service
us to schedule a confidential meeting with our trademark attorneys.
Identity and Corporate Image
is distinctive device, for example, a word or symbol that originating
producers and customers use to uniquely identify a single source of a
product or service. A trademark provides a “source distinguishing”
signal that communicates product quality information to the market and
evokes a positive emotional response in the customer.
A trademark thus assures customers that a
particular item - that is marked or “branded”
with a distinctive word or symbol - comes from the same source and can be
expected to have the same quality as other similarly marked items that he or
she liked (or disliked) in the past.
A familiar trademark
immediately brings to mind the customer’s prior experience with that
particular brand and any recommendation he or she may have received from a
trusted friend. This information shapes his opinion regarding the
quality of the product and his confidence (or lack thereof) in the integrity
and reliability of the producer.
of this factual and emotional information is what the trademark
the customer’s previous experience with a brand has been favorable, then
his emotional response will be positive, and he is likely to purchase the
brand again and recommend it to his friends. This
generates brand loyalty – the capacity to attract customers and hold
their trade over time.
It is the
source-distinguishing ability of a trademark - brand identity
- that makes it
possible for customers to differentiate and choose, and for the originating
producer to follow through with its promise to its customers.
A unique, distinctive trademark thus provides
the customer with an objective means to make an informed product selection.
At the same time, it assures that the producer (and not an
imitating competitor) will enjoy the financial rewards, market share and
customer good will that result from hard work, quality practices and
adherence to high standards.
Ownership of a trademark
in the U.S. is acquired simply by using the trademark in commerce in
connection with the sale of a product or performing a service on behalf of a
customer. We recommend that a new trademark be cleared for use and
registration, preferably before it is used in business and before a
trademark application is filed. Our trademark attorneys conduct
trademark searches and advise on
trademark selection and clearance.
Trademark Application Checklist
Your trademark attorney will need the following information to prepare your
The exact name and citizenship of the person or entity who is the owner of
the trademark or service mark. The owner may be, for example, an individual
sole proprietor, two or more individuals claiming joint ownership, a husband
and wife, a general partnership, a limited liability company, a limited
partnership, a corporation, a non-profit organization, an unincorporated
association, or a joint venture.
Owner’s contact information.
Contact information including the business street address, email, telephone
and fax number, of the owner as well as information about the owner’s
citizenship, state of incorporation or legal organization.
Identify the word or words, name and/or design that form the trademark or
service mark. (Graphic logos and stylized designs should be sent via email
in .jpg format.)
List all of the goods (products) that are now being sold and services that
are now being advertised and sold in connection with the trademark. It is
important to provide a complete list, since once the application has been
filed, it cannot be expanded beyond the initial listing of goods and
Give the date (month, year) of your first sale to a customer anywhere, and
the date (month, year) of your first sale to an out-of-state customer.
If a foreign applicant is claiming priority from a foreign application or
registration, identify the country of origin, the application number or
registration number, and filing date or registration date.
If the mark is in stylized form, or includes a logo or other graphic image,
provide a good quality black/white image of the trademark. If provided in
digital form, the image should have a resolution of 300 dpi and size not
exceeding 400 pixels by 900 pixels. Photo prints should lay flat and
be reproducible. We make every effort to ensure that pending trademarks are
published in the highest digital quality.
Actual use sample.
For products, provide one product sample specimen - packaging, hang tags,
shipping labels, packing inserts, and/or photographs showing how the
trademark is currently being used in your business. For services, provide
one advertising sample, for example a promotional brochure, store front
signage, flyer, or magazine ad. If you are using your service mark on
a web page, give us the web URL and we will prepare the digital images.
Acceptable Trademark Specimens
Acceptable Service Mark Specimens.
The trademark use specimen should clearly and legibly show the mark so that
it can be read without magnification. Preferably, the specimen should
be flat and not exceed 8˝ x 11 inches. Otherwise, it should be
foldable to fit within a letter-size file folder. Digital images of
the specimen are preferred and should be in .jpeg format (send by email).
Polaroid photographs and prints from 35 mm negatives are acceptable.
Photo prints should be in color and at least 3 x 5 size (not larger than 8 x
"Intent to Use" Trademark Applications
It is possible to register trademarks on an
intent-to-use basis, meaning that a trademark application can be filed and
ownership can be established even though the trademark is not yet being used
in your business. That is, an application can be filed on a bona
“intent-to-use” basis, and proof of use in interstate commerce can be filed
after you start advertising and selling the branded product, up to 36 months
after the U.S. Trademark Office gives provisional approval for registration
(the Notice of Allowance). We recommend the filing of an intent-to-use
trademark application as soon as you have definitely decided to use it in
your business. This will pre-empt all others who might also be considering
adopting the same or similar mark for use in connection with a competitive
product or service.
trademark application filed
under the intent-to-use statute proceeds as follows:
trademark application, stating a bona fide intention to use the mark in
commerce, is filed. A drawing and filing fee, but not specimens, are
application is examined. The application may be rejected if the mark
presented for registration conflicts with an active registration, or if the
mark presented is merely descriptive or incapable of functioning as a mark.
Examination will be suspended if the mark presented for registration
conflicts with an earlier filed application.
rejected or suspended, the mark is published for opposition pursuant to
thirty (30) days following the date of publication, an opposition can be
filed by any party who believes he may be injured or damaged by the proposed
registration. An intent-to-use applicant may oppose a later filed
opposition is filed, or an opposition is filed but is unsuccessful, a Notice
of Allowance is issued pursuant to Section 13(b)(2) of the statute.
applicant must commence actual use of the mark in interstate commerce in
connection with a bona fide business at any time after application filing
but not later than six months after the date of the Notice of Allowance.
This term is extendable under certain conditions up to an additional 30
months after the date of the Notice of Allowance, or within the limit of an
extended term, the applicant must file a sworn statement of such actual use
(commercial use declaration) pursuant to Section 1(d) of the Act. If
the actual use statement is not timely filed, the application is
commercial use declaration is filed, the specimen is examined for technical
compliance. Upon acceptance, registration is granted. The registration
thus issued has the same effect as a registration based on pre-filing actual
use in commerce.
Provided by Federal Trademark Registration
to file an action in federal district court to recover profits, damages
and costs for infringement, including the possibility of receiving an
award of treble damages in exceptional cases;
ability to recover
in infringement actions;
right to file an action in federal district court to obtain an order
enjoining a competitor’s use of a confusingly similar trademark;
right to rely on the registration as prima facie evidence of ownership
and use in opposition and cancellation proceedings before the Trademark
Trial and Appeal Board;
the incontestable status that a registration can achieve after five
years of uncontested use and registration on the Principal Register,
which means that the registration will no longer be vulnerable to
cancellation attacks founded on priority claims;
provides constructive notice throughout the entire U.S. and its
territorial possessions, which cuts off the claims of so-called
becomes searchable as a public record for the benefit of those doing
trademark searches, which helps others to avoid the adoption of
confusingly similar marks;
the right to record the registration with the U.S. Customs Service for
the purpose of blocking the importation of counterfeit goods bearing an
infringing mark; and
the right to use the ® symbol in connection with the mark, which signals
federal registration and may have a deterrent effect on potential
Trademark registration in foreign countries
trademark attorneys at the law office of
Griggs Bergen LLP in Dallas, Texas also help its clients
secure trademark registrations in foreign countries around the world.
Foreign trademark registrations are needed
a business has a global brand, or intends to launch a new product in
The firm's trademark lawyers are familiar
with multilateral international treaties that sometimes provide a
cost-effective method of securing registrations in multiple countries by way
of a single application. These include the
European Community Trademark (CTM)
The European Community Trade Mark (CTM) provides for registration
of trademarks in all of the countries of the European Union (EU) by
filing a single application. The countries covered (as of February, 2006)
are Austria, Benelux (Belgium, the Netherlands and Luxembourg), Cyprus,
Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary,
Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Slovakia,
Slovenia, Spain, Sweden and the United Kingdom. The initial registration
period is ten years from the date of filing the application.
The trademark lawyers of Griggs Bergen LLP
work closely with “foreign associate” trademark firms, and have long
standing relationships with an extensive network of legal professionals
internationally. The firm’s foreign associates know and understand the needs
of U.S. businesses when trademark registration services are required in
Griggs Bergen LLP: Trademark Registration Lawyers
To maintain a trademark registration, the owner must comply with
commercial use requirements and make appropriate and timely filings of
statements of use and renewal declarations. The trademark lawyers at Griggs
Bergen LLP monitor trademark portfolios, making sure that filings necessary
for maintaining trademark registrations are made on time. They will consult
with you when it is time to take action on your trademark registrations and
prepare and file the documents necessary for renewal.
Also, the trademark attorneys at Griggs Bergen LLP assist clients
in keeping their registrations current, by recording assignments of
trademarks, and making sure that ownership is recorded and use declarations
are filed in the proper name following any change-of-name, change-of-entity
type (for example, from a sole proprietor to a limited partnership, or from
a corporation to a limited liability company), merger or acquisition.
The firm’s trademark
lawyers also guide clients on trademark-related commercial considerations
such as labeling, packaging and advertising to comply with various
government regulations, for example, under the
U.S. Federal Food, Drug and Cosmetic Act.
In addition to trademark registration, the lawyers at Griggs
Bergen LLP conduct
trademark audits and represent trademark owners in
opposition and cancellation proceedings
Trademark Trial and Appeal Board of the U.S. Trademark Office.