The Legal Protections of Trademarks as Intellectual Property

Why is Trademark Protection Important, How does it Compare to Other IP Protection, and What is the Legal Process to Obtain a Trademark

“He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation.”

– Thomas Jefferson, Selected Writings

Introduction – The General Nature of Trademarks as Compared to Other Legal Protections of Intellectual Property

In light of the importance of trademarks and service marks to you and your business, it is strongly recommended that you consider retaining a trademark attorney to explain the legal issues and subtle concepts to you, to guide you through the bureaucratic maze before the U.S. Patent and Trademark Office (“USPTO”), as the Federal agency charged with dispensing trademark protection. An experienced trademark attorney can prepare and submit the proper papers, comply with all requirements and deadlines, and counsel you through the entire trademark registration process.

Whether you are an individual or a business owner, it is in your own best interest to protect the fruits of your creative and productive mind. Despite your protective instincts, however, you may not be quite certain which form of intellectual property (“IP”) you are dealing with or which form of IP protection is the correct or best one for your private or commercial needs.

All things are not equal and not all forms of IP are the same. That is to say, trademarks, patents, copyrights, domain names, and business name (i.e., fictitious names such as doing business as names) registrations are all different legal creatures. Consequently, it is a critical task for you to first ascertain, as a threshold matter, whether a trademark or some other IP form of protection is right for you.

Trademarks and service marks in general protect one’s name, brand, designation, mark, and/or logo used on goods and/or services. Examples would include Coca Cola, Shell (and Design), Dunkin Donuts, McDonald’s, IBM, Apple (and Design), and Amazon (and Design).

In marked contrast, a Letter Patent (“patent”) serves to protect processes, inventions, designs, and plants. Illustrative of this type of IP would be patented equipment or machinery, medicines, apparel design, and new plant varieties.

Copyright, as another form of IP, protects original artistic or literary work. Copyright law covers numerous mediums of expression including films, photographs, recordings, paintings, drawings, poems, stories, books, comics, musical pieces, statues, sculptures, architectural designs, choreographic steps, among other works of creative authorship.

Another variant of your business, or private persona, is the domain name, as part and parcel of an internet web address which links to the internet protocol address (IP address) of a particular website. But a domain name is not a trademark. What is the difference? A trademark serves to identify the origin or source of goods or services, while the usage of a domain name does not qualify as source-indicating trademark use. So, to be clear, the registration of your domain name does not afford you with any trademark rights or protection.

Likewise, just because you use a certain business name does not necessarily qualify that name as a protected trademark. To be sure, many states and local jurisdictions (including Florida) register business names, either as part of obtaining a certificate to do business or as an assumed name (i.e., fictitious name or a “d/b/a”) filing. Furthermore, when a business entity is formed with a state (e.g., Florida), the mere fact that the state allows you to reserve or use a name has nothing to do with your right or ability to use that name as a trademark or service mark.

Above all, applying for a trademark, or service mark, should not be viewed as an event or a transaction. Rather, it should be understood that it is a process which takes time, effort, expense, and patience, not to mention sound legal guidance. The next section of this article explores that process and procedure.

Preparation Steps before You Apply for a Trademark or a Service Mark

Once you have vaulted the hurdle of what type of protection you or your business will need – and the conclusion that you have reached, with the input and opinion of your legal counsel – is that you will need a trademark and/or service mark, then the time has arrived to select a mark. This is the first, baby step in the overall registration process.

The selection of a mark requires careful thinking and planning. Why? Not all marks are registrable (and there are numerous legal bars and technical barriers). For example, words that are merely descriptive (e.g., “fresh fruits”), or generic (e.g., elevator or aspirin) cannot serve as marks. Indeed, the strongest marks are words that or phrases that are coined, arbitrary, or fanciful (e.g. purple cow, blockhead computing).

Needless to say, in picking a mark, one must consider the nature and type of goods or services involved. Whether a mark is weak or strong, descriptive or suggestive, generic or otherwise barred, will ultimately depend on the name vis-à-vis the identification of the applicable goods and services.

Next, prior to the filing of any mark applications, you must decide whether the application is to be lodged with a state trademark office or, more likely, with the federal United States Patent and Trademark Office (“USPTO”). For those clients outside the United States, this country has a multi-layer of government, a supreme federal government based in Washington, D.C., and fifty individual state governments with capitals in each state. They are separate governments, with separate rules and laws and therefore, different types and degrees of trademark protection. Unless your business is restricted to one state (or one area within a state), and has no internet presence, you probably will be choosing to proceed with a federal application at USPTO.

What kind of format have you picked for your mark? Is it a standard/traditional mark, typically expressed in words and/or logos? Or is it a non-traditional mark, such as a sight, sound, scent, texture, or color? Are the letters (in a word mark) stylized or in block format? Are there color claims involved? These are some of the many threshold questions to be given thought and discussed with legal counsel as they can all make a difference on the right to trademark protection.

It is imperative that, before an application for a mark is launched, a proper trademark search be conducted. A first-level clearance search may be able to be conducted by your IP attorney. Thereafter, a second, formal search should be done. The purpose of such a search is to determine whether a third party is out there in the marketplace using or claiming rights to the mark (wording/design), or a mark that is similar and used on identical, similar, or related goods/services. A third-party may have an obstructive (blocking) registration. Or, some third party may have prior usage and, thus, superior legal rights. Obviously a client should not waste their time or money when another registrant already holds trademark protection for the same and a substantially similar mark.

Under U.S. trademark law, one can file a mark application predicated upon actual use or, in the alternative, based upon a bona fide intent to use. (Note: no registration can, or will, be granted by USPTO unless and until the mark is in actual use in commerce.) Obviously, the facts and circumstances of your particular situation will be the determining factor in that analysis.

Preparation& Submission of the Trademark Application

After all the “homework” is done, preliminary questions answered, and related legal issues considered and addressed, you will be ready to have your mark application prepared and filed with USPTO. Trademark (and service mark) applications are submitted electronically through the internet to USPTO by your trademark attorney. It should be noted that there is a non-refundable governmental filing fee for the filing.

Unlike parts of the patenting process, all filings and documents in the U.S. trademark registration process are public record. All inquiries and communications normally will be sent to your trademark counsel if you have one.

We cannot overemphasize the importance of keeping a keen eye on the process; of course, if you have trademark counsel, they will attend to this for you. Along the entire route of the registration process, the status of the application needs to be monitored diligently. The USPTO file for the application should be regularly checked so as to avoid any errors, mistakes, omissions, problems, and, worse, tardy responses. Since any Office Actions (a procedural action by the USPTO) issued by the Examiners (who are USPTO employees) will have a six month response period, this practice should keep you, and your mark application relatively free of trouble and of unwelcome surprises.

Dealings with the USPTO Examining Attorney

Over the course of the application process, your trademark attorney will work with the Examining Attorney (who is a lawyer employed by the USPTO). Once the application for registration of a mark has been filed with USPTO, it may take up to several months to hear anything of substance back from the agency.

Assuming no complications with the filing, and that the application satisfies the minimum requirements for filing, USPTO assigns the application a serial number. In due course, the application will be assigned to an Examining Attorney. It is not unusual for this phase of the process to take several months.

It is the main function of the Examiner to read and review the application submitted so as to ensure its legal compliance with applicable regulations, rules, case law, and statutes. Payment of proper filing fees are checked as well. The Examiner will review the application including, but not limited to, the identification of goods and/or services, the drawing, any disclaimers, and any specimens. More importantly, perhaps, the Examiner will conduct a search for any conflicting marks (i.e., granted registrations and/or open applications).

When the Examiner has completed their review of the application, a formal letter, called an “Office Action,” will be issued. Generally, the first (or initial) Office Action arrives approximately three months after the application has been filed. The contents of the Office Action will be a reflection of the Examiner’s search and review efforts.

If the Examiner, after review and research, has concluded that an application should be refused registration, then the Examiner will issue an Office Action setting forth the substantive reasons for said refusal, together with any procedural or technical flaws or defects in the application. In the event that only minor corrective action is needed, the Examining Attorney may, alternatively, choose to contact the Applicant’s counsel by telephone or email to resolve those matters.

Following the issuance of a USPTO Office Action, the Applicant is afforded a generous period of six months within which to respond to the Office Action, said period of time being calculated from the mailing date of the Examiner’s Office Action. Responding to an open USPTO Office Action, and doing so in a timely fashion is critical. Failure to do so will inevitably result in the application being declared abandoned. The only viable legal action then would be to start the process anew.

Responding to a Denial of Your Trademark Application

In some instances, the USPTO Examiner will refuse to register your mark or, instead, will insist that certain requirements still remain to be satisfied. In such cases, the Examining Attorney will issue an Office Action, wherein they enumerate and explain the basis for any refusals or requirements. This is the same process that occurs prior to publication of the mark if the Examining Attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and a Statement of Use is approved, the USPTO issues a registration within approximately two months. If all issues are not resolved, the application will be deemed abandoned.

In those instances where the Applicant’s response does not overcome all of the Examiner’s objections, in due course, the Examining Attorney will issue a “Final Refusal” against registration of the mark described in the application. In order to attempt to overcome an Examiner’s final refusal, the applicant may, for an additional filing fee, lodge an appeal of the refusal to register to the Trademark Trial and Appeal Board (“TTAB”) of the USPTO.

TTAB appeals can take up to a year or more to conclude. In case of an adverse ruling by the TTAB (in other words, if the TTAB affirms the Examiner’s refusal of your mark for registration), one can challenge the TTAB decision by filing an appeal with the U.S. District Court.

Implications of Approval of Your Trademark Application

Once the Examiner’s review and search have been completed, in situations wherein the Examining Attorney has raised no objections to registration or, alternatively, if the Applicant has overcome all of the Examiner’s Objections, the mark will be approved for so-called “publication,” in the USPTO’s weekly Official Gazette (“OG”).

In practice, the USPTO will send a “Notice of Publication” to the Applicant’s counsel; that notice will set forth the intended date of publication. Subsequently, any party which (after seeing the mark published in the OG) believes it may be damaged by registration of the mark applied for, has a period of thirty days from the publication date to take action. That action can be in the form of the filing of an opposition to the registration of the mark or, instead, a request to extend the time to oppose.

An opposition proceeding – which is also known as a form of an inter partes proceeding – is, in many ways, akin to a federal court lawsuit. However, this type of internal USPTO proceeding is held before the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative tribunal made up of administrative law judges skilled and expert in trademark law.

If no opposition proceeding is filed against your mark application or, if the opposition proceeding is held but is unsuccessful, the application then moves on to the succeeding phase of the registration process. That can take three to four months.

The route of the trademark registration process then can take either of two forks in the USTPO road. First, for applications based upon use in commerce, a foreign registration, or an extension of protection of an international registration to the United States – and assuming that no party files an opposition or request to extend the time to oppose – the USPTO will register the mark, in due course, and send the registrant (or counsel, if represented) a Certificate of Registration.

The other route leads away from cases where the Notice of Allowance has been issued in connection with an application based on an intent to use the mark. In those cases – and assuming no filing of an opposition proceeding or request for extension – the USPTO will issue a Notice of Allowance about eight weeks after the date the mark was published in the OG.

In those cases, following a Notice of Allowance, the applicant is given a period of six months from the date of the notice either to: (1) use the mark in commerce and submit to USPTO a Statement of Use (S/O/U); or (2) request a six month extension of time to file an S/O/U. Up to five such extension requests can be filed as to subsequent submission of the S/O/U.

The penalty for not timely filing the S/O/U (or an appropriate extension request) is draconian, but not always fatal. Failure to do so results in abandonment of the application. In such cases, however, there is an escape-hatch; in order to get back-on-track and continue the registration process, the applicant can submit a Petition to Revive within two months of the date of abandonment.

Upon submission of the S/O/U, the statement, which must meet minimum filing requirements, will be reviewed by an Examiner to determine whether it is acceptable to permit registration. Mere submission of an S/O/U, without more, does not automatically result in registration.

Maintenance of Your Trademark Registration

As stated at the outset, trademark registration in the United States is a lengthy process, not a single event or a few episodes. It is much more than just filing a form and pay a filing fee.

There are, for example, possible registration certificate issues. Thus, within approximately two months after the Applicant’s Statement of Use (S/O/U”) is approved, the Trademark Office, at long last issues the trademark (or service mark) Registration certificate. This is the “golden ticket” you have been waiting for!

After registration, to keep one’s mark registration current and in force (or, as we say in trademark law, “valid and subsisting”)the registrant (owner) of the mark is required to file certain maintenance documents with USPTO. Important to note, such maintenance documents are mandatory, not optional, and failure to file will result in a loss of your trademark protection! Maintenance documents are due to be filed with USPTO by, or on behalf of the mark owner, between the 5th and 6th year after the registration date and between the ninth and tenth year after the registration date (i.e., the renewal period). Between the fifth and sixth year, the registrant may also petition the USPTO for “incontestable” status for its mark. Such protection means:

After five years of consecutive use from the registration date, a trademark can be declared to be incontestable. An incontestable mark becomes immune from challenges, with certain limited exceptions (e.g., genericness, abandonment, or fraud). Even though an incontestable mark can be challenged on certain grounds (e.g., fraud, abandonment, antitrust violation), it is safe from attack on the otherwise common ground that it lacks distinctiveness. The issue of whether a mark is incontestable usually arises in the context of a lawsuit for infringement). In cases where the plaintiff can establish that the mark is incontestable, the mark will be presumed to be valid.

Under Section 15 of the Lanham Act, in order to apply for the benefits of incontestable status, the following requirements must be satisfied: no final legal decision has been issued as against the mark; no challenge to the mark currently is pending; a Section 15 Declaration of Use was timely filed for the mark; the mark is not generic. This process should be undertaken sometime between the fifth and sixth anniversaries of the egistration.

A registrant’s failure to make any of such required filings with USPTO ultimately will result in the cancellation and/or expiration of the registration. In situations wherein a mark owner’s registration is cancelled or expired, the only viable legal option is to file a new application and commence the entire process over, from proverbial “square one.”

On-going Protection of Trademark Rights

In the final analysis, you, the trademark (or service mark) owner (i.e., the registrant) are the party responsible for enforcing your IP. The USPTO does not act in the role of an IP policeman. Protecting, monitoring, policing, and enforcing one’s marks is up to you, the mark owner. Quite obviously, in the event of trademark issues or problems (e.g., infringement or piracy), your IP lawyer will be indispensable in navigating the complicated waters of the court system, the USPTO administrative process and bureaucracy, and Customs and Border Patrol officials, and otherwise. In sum, your investment in your business, including its IP, is valuable and it is worthwhile to protect your legal rights through an experienced IP attorney.

Other Intellectual Property Resources Available on Our Law Firm Website

The below IP related articles are also available on Henkel & Cohen’s website. Click on a title to go directly to that article.

Copyrights: Bigger & Better Bang for your Business Bucks

Missing the Mark: Patent Trolls Are Targeting Your Products (and Your Profits)!

Patents in Paradise, Tropical Trademarks, and Caribbean Copyrights

Sunshine State Business Portfolio: Registration of Florida Trademarks & Service Marks

The Zen of Being ®: U.S. Trademark Registration Advantages from A to Z

The content of this article is intended to provide a general guide to the subject-matter. It is neither meant to be, nor should be construed to be, legal advice or legal opinion nor forms an attorney\client relationship. Specific legal advice should be sought about your specific case or circumstances.


About Henkel & Cohen

Henkel & Cohen, P.A. is a Miami, Florida boutique business litigation law firm whose partners hold the highest AV rating from Martindale-Hubbell®. For additional biographical and contact information, please visit the firm’s website at

Scroll to Top