Category Archives: Trademark

Regina Pizza & Capone’s Pizzeria: Artwork as Trademark

A trademark can be anything that serves as a “source identifier,” that is, a device that makes an association in the consumer’s mind between certain goods or services and the source of those goods or services. When a shopper sees a box marked with the word, “CHEERIOS®,” it’s taken for granted that the box will contain O-shaped cereal of a known taste and
quality made by General Mills. Likewise, when customers see the golden arches outside a fast food restaurant, they assume that they can walk inside and order a Big Mac®, and that burger will taste the same no matter where the restaurant is located. But words and logos aren’t the only source identifiers; sounds, colors, smells – and artwork – can all serve as trademarks for goods (or service marks for services). Artwork can be protected from unauthorized reproduction through copyright law, but when someone uses another’s artwork to create a false association regarding the source of goods or services, trademark law can protect the owner of the “artwork mark.”

Regina Pizzeria has been serving pizza lovers since its first restaurant opened in Boston’s North End in 1926. Expanding to other locations throughout Massachusetts and New Hampshire, Regina Pizzeria began to be more and more associated with the red T-shaped sign that originally hung in front of the North End restaurant. A painting of the North End street scene around the pizzeria displaying the sign has also been used in Regina Pizzeria marketing materials. As such, that artwork depicting the restaurant and its unique signage has served as a service mark.


But in 2009, another local pizzeria decided to capitalize on the good will Regina had established in its artwork mark. Capone’s Pizzeria and Prohibition Pub, with restaurants in nearby Pembroke and Weymouth, Massachusetts, began using artwork on their advertising and take-out menus that is alleged to be confusingly similar to the artwork that Regina used by merely replacing the word “Regina” with the word “Capone’s” on the sign in the picture. On the left is the Regina artwork; on the right is the artwork used by Capone’s:

Regina sent a cease and desist letter to Capone’s on December 7, 2009, and when Capone’s refused to comply, on February 9, 2010, Boston Restaurant Associates, Inc. (the corporate owner of Regina Pizzeria) filed suit against Gambino’s Restaurant, Inc. (the corporate owner of Capone’s) in federal court for infringement of the T-sign and artwork service marks (under both federal statutes and Massachusetts common law) and for unfair and deceptive trade practices (under Massachusetts statute).

From the moment a businessman hangs a sign outside of his establishment or uses other service marks in advertising or trademarks on the goods he sells, the public begins creating an association between the marks and the quality of the goods and services offered inside. Because it can take years to build up a good reputation, that association needs to be protected from others who would misappropriate it for their own benefit.

The Saints, The Super Bowl and “Who Dat?”

Whether it’s “Ya Gotta Believe” for the 1973 New York Mets, “Commitment to Excellence” for the 1963 Oakland Raiders or “Win One for the Gipper” for the 1928 Notre Dame Fighting Irish, sports teams have long been associated with slogans. The Super Bowl champion New Orleans Saints is no exception. But it wasn’t until the Saints won their 
first visit to the Super Bowl, which often brings with it increased sales of sports apparel and memorabilia, that controversy began to rise about who owns the rights to the slogan “Who Dat?”

Seizing on the opportunity, several enterprising entrepreneurs began making and selling T-shirts emblazoned with the “Who Dat?” slogan. Some of these small businesses were served with cease and desist letters from the National Football League and a company called Who Dat, Inc., claiming infringement on the NFL’s and Who Dat, Inc.’s slogan.

Although sometimes mistakenly referred to as “copyrighted” material, slogans (like single words, logos, certain sounds and even some smells and motions) are considered to be trademarks, and as such, ownership in the United States is generally determined by use. Whoever uses a trademark first and continues to do so is usually deemed the rightful owner. One way of enhancing those rights is to acquire federal trademark registration. Aside from allowing the registrant to seek attorney’s fees, federal registration serves as constructive notice to anyone in the United States not to use the mark, unless their use predates that of the registrant.

In 1991, and again in 1993, Who Dat, Inc. filed intent-to-use trademark applications with the U.S. Patent and Trademark Office for a variety of apparel items, to include T-shirts. Although the mark was considered registrable both times, Who Dat, Inc. never filed a Statement of Use, so registration never issued. (In 1992, between these two applications, Who Dat, Inc. obtained a federal registration for “Who Dat?” for soft drinks, but the company let this registration lapse in 1998.)

In 2004, an individual from New York City filed an intent-to-use application for “Who Dat” for clothing. The application was opposed by both the New Orleans Louisiana Saints, LLC and NFL Properties, LLC in 2006, but the opposition was withdrawn in 2008. To date, this applicant has not yet alleged use of the mark nor have the Saints or the NFL filed their own applications for registration.

On January 7, 2010, after the Saints had made the playoffs and with the prospect of greater post-season sales, Who Dat, Inc. filed a third application for clothing, this time claiming a date of first use in commerce of October 26, 1983. This application is still pending, as are several intent-to-use applications for variations of “Who Dat?” filed by other individuals looking to capitalize on Who Dat fever.

After the NFL sent out its cease and desist letters, several prominent Louisiana politicians got involved in the dispute. Senator David Vitter wrote a letter to the Commissioner of the NFL, claiming that the slogan “Who Dat?” dates back some 130 years to minstrel shows and “was adopted by Saints fans in a completely spontaneous way.” Congressman Charlie Melanconlikewise voiced his disapproval of the NFL’s action, and on January 25, 2010, Governor Bobby Jindal proclaimed “Who Dat Nation Week” in Louisiana. So great was the outcry from Saints fans and their elected officials that the NFL eventually backed down. In a letter to Louisiana Attorney General James “Buddy” Caldwell, NFL senior vice president Gary Gertzog, the league confirmed Louisiana’s position that the NFL does not have exclusive rights to either “Who Dat,” “Who Dat Nation,” the French fleur-de-lis symbol or the colors black or gold.

The events of the last several weeks should demonstrate to everyone who’s claimed ownership in the “Who Dat” slogan over the last two decades or longer that waiting to protect one’s rights until a trademark suddenly increases in value is rarely the best strategy.

Bing! or bing – Who Owns the Mark?

One of the most important tasks in marketing a new product or service is finding just the right word that will stick in the public’s collective mind. Some of these words, like Chevrolet’s Volt, are suggestive of a characteristic of the product (namely, an electric car). Others, like the Blackberry® mobile phone, are purely arbitrary. But when coming up with le mot juste, or the 
right word, care must be taken to make sure that no one else has already staked a claim to this word for similar goods or services. Even corporate giants with a litany of lawyers sometimes find themselves in trademark turf wars. A recent example involves a small design company that’s taken on Microsoft over the word BING.

When Microsoft decided to enter the lucrative search engine market, the company began looking for a catchy word that would rival Google® for public recognition. It was finally decided that BING would be that word.On September 22, 2008, in a globally strategic move, Microsoft filed for trademark registration, not in the United States, but in New Zealand. By doing so, Microsoft was able to claim an earlier priority date when it filed two “intent to use” applications in the United States nearly six months later for a variety of goods and services centered around search engines.

In the United States, as well as many other common law countries, the ownership of a trademark or service mark is usually based on which party was the first to use the mark. One exception to the First to Use Rule is when an applicant claims a bona fide intent to use by filing a federal application prior to actually using the mark. The filing date then becomes the “constructive date of first use.” By filing in New Zealand first, Microsoft might have gained an additional advantage over any party that started using the BING mark between September of 2008 and March of 2009 in “first to use” countries, as well a similar leg up on parties that filed for that mark in “first to register” countries during that same period.

Nearly three months after Microsoft filed its intent-to-use applications, Bing! Information Design, LLC (BID), a small design firm started in St. Louis, Missouri, filed a “use” application for the mark BING!, claiming a date of first use at least as early as April 1, 2000. In December 2009, BID filed both a Notice of Opposition in the Trademark Trial and Appeal Board (TTAB) to block registration of the Microsoft mark, and a lawsuit in St. Louis circuit court for common law trademark infringement and unfair competition.

Is there any way BID could have increased its leverage over Microsoft in this situation? Hindsight is always 20/20, but by filing for federal trademark registration when it first began using the BING! mark instead of waiting nine years until a software giant started using it, BID could have already had a federal registration, with the possibility of incontestability after five years of continuous use.

If BID had an exclusive right to use the mark through a federal trademark registration, Microsoft probably would have been deterred from adopting the BING mark in the first place. But even if Microsoft had decided to name its search engine BING, with a federal registration in hand, BID could have sued Microsoft in federal court and claimed attorney’s fees as well as statutory damages. By not possessing a federal registration, BID had to resort to filing suit in state court for common law trademark infringement, greatly limiting its options.

It remains to be seen how the battle of the Bings will be resolved, but this much is clear: trademarks are an asset that can greatly increase in value almost over night. By acquiring maximum protection of that asset as early as possible, a trademark owner is better prepared to take on the biggest of foes.

Trademarks & Parodies: The North Face versus The South Butt

Parody has been an effective tool used for centuries by comedians and social commentators to poke fun at well-known celebrities, politicians and institutions through mimicry. But when someone mimics a trademark, when does it cross the line from parody to trademark infringement?

According to North Face Apparel Corp., manufacturers of outdoor


equipment and apparel that bear The North Face logo, a teenager in suburban St. Louis has crossed that line. On December 10, 2009, North Face filed suit against James A. Winkelmann, Jr. for “marketing apparel that directly and unabashedly infringes and dilutes The North Face’s famous trademarks.”  Winkelmann, through his limited liability company and website, as well as a chain of local pharmacies, has been selling outdoor apparel similar to that of The North Face under the trademark “The South Butt.”  The word mark, along with a similar (albeit inverted) logo, is an obvious spoof on the more famous mark.  Winkelmann is even using a parody of the North Face slogan, “Don’t Stop Exploring.”  Winkelmann’s slogan: “Don’t Stop Relaxing.”  In an attempt to emphasize the humuorous nature of his brand, Winkelmann has included the following disclaimer on his website: “If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”

But there has been no smile on The North Face. In its complaint against Winkelmann, The South Butt, LLC and Williams Pharmacy, Inc., the outdoor apparel giant asserted that “[w]hile defendants may try to legitimize their piracy under the banner of parody, their own conduct belies that claim.”  Citing two attempts to federally register THE SOUTH BUTT and a proposal to sell the business to The North Face for $1 million (an offer which was later withdrawn in light of increased sales as a result of the publicity from the dispute), The North Face claimed it had no choice but to protect its famous brand and trademarks.

Where does the law stand on parody marks? The U.S. Trademark Manual of Examining Procedure (TMEP) acknowledges that there are “confusing parodies” and “non-confusing parodies,” but case law seems to favor the owner of the mark being parodied. In 1981, theTrademark Trial and Appeal Board (TTAB) held that the mark CLOTHES ENCOUNTERS was likely to be confused with CLOSE ENCOUNTERS OF THE THIRD KIND for men’s and women’s clothing, and in 1986, a U.S. District Court ruled in favor of Mutual of Omaha Insurance Company when an anti-nuclear activist sold t-shirts with the mark “Mutant of Omaha.”  In 2006, the TTAB held that LESSBUCKS COFFEE was confusingly similar to the more famous STARBUCKS COFFEE.  However, sometimes the parody mark is determined to be non-confusing.  In 1987 a U.S. Circuit Court of Appeals ruled that LARDASHE for pants was not an infringement of theJORDACHE mark.

So where does this leave The North Face and its southern counterpart? Trademark owners need to defend the often hard-earned good will associated with their marks against those who would trade off of that good will by using confusingly similar marks. There is also the problem of dilution famous marks if the good of the infringing party are of a lesser quality.

But there can also be a down side to taking legal action against an infringer, especially if there is a large disparity between the size and fame of the two parties. When a clothing Goliath like The North Face takes on a David in the field like The South Butt, the public often sides with David, creating a public relations nightmare for the larger company.  And there’s also the issue of free publicity for the alleged infringer.  The South Butt was a relatively unknown brand with primarily local sales prior to The North Face taking it on.  As a result of the national attention caused by the controversy, sales of The South Butt products have skyrocketed.

When protecting its trademarks, big companies like The North Face need to find a delicate balance between defending against unfair competition and being able to laugh at itself.

When is a Domain Name a Trademark … and When is it Not?

Domain names are valuable assets to any business, but can they serve the function of trademarks or service marks?  Sometimes yes, sometimes no, according to a recent decision of the Trademark Trial and Appeal Board (TTAB).  In the decision  In Re Vicki Roberts , the TTAB upheld the decision of the examining attorney to deny registration of the service mark application for irestmycase.  The applicant, Los Angeles attorney Vicki Roberts, represents several Hollywood stars and has been a guest on nationally syndicated and cable television shows. 

Ms. Roberts is also the registrant of at least two domain names:  When Ms. Roberts applied for federal registration of the service mark irestmycase, she used a press release as a specimen of the mark.  (A specimen is an example of how a mark is used in commerce.) 

The press release contained the following information: VICKI ROBERTS, ESQ. P.O. Box 642326 Los Angeles, CA 90064——————–Phone:  (310) 475-8549 Fax:  (310) The examining attorney initially refused registration because (among other reasons) the specimen didn’t agree with the mark for which registration was being sought. 

In response to this refusal, Ms. Roberts (through her trademark attorney) submitted two substitute specimens:  a printout from an Internet message board showing her profile page with the user name “restmycase,” and a copy of her letterhead, the latter of which reads: VICKI ROBERTS, ESQ. P.O. Box 642326 Los Angeles, CA 90064——————–Phone:  (310) 475-8549 Fax:  (310) 478-6365 After a final refusal was issued, additional specimens were submitted, leading to a “second” final refusal.  Undaunted, the attorney of record filed an appeal with the TTAB.

Aside from the fact that “restmycase” and “irestmycase” are two separate and distinct terms, the TTAB upheld the examiner’s decision that Ms. Roberts failed to show that irestmycase was being used as a service mark.  Citing a decision from nearly a decade prior ( In re Eilberg , 49 USPQ2d 1955 (TTAB 1999)), the Board concluded that the use of irestmycase, embedded in the domain name in the letterhead, merely serves as a means by which Ms. Roberts can be reached, not unlike her P.O. box or her telephone and fax numbers. Does this mean a domain name can never serve as a service mark?  Not at all. 

Also citing the  In re Eilberg  decision, the Board noted that if the name of the law firm was irestmycase, or if the term irestmycase was presented prominently on letterhead or business cards, it could be registered as a service mark.  But the specimens submitted did neither. The lesson to be learned from this decision is that no matter how well known a domain name is, if it doesn’t function as a mark, i.e., if it doesn’t identify the applicant’s services and indicate their source,  it can’t receive federal registration as such. 

Carl Mueller, CLAS is a Certified Paralegal with Advanced Paralegal Certification in Intellectual Property with the Law Office of Chris Stewart, P.C.  He can be reached

Who Owns the Name Led Zeppelin?

It was recently announced that the legendary British rock band Led Zeppelin may begin recording and touring again for the first time in decades.  The original group, consisting of singer Robert Plant, guitarist Jimmy Page, bassist John Paul Jones and percussionist John Bonham, began performing in the late 1960’s. 

After the untimely death of Bonham in 1980, Led Zeppelin broke up and didn’t perform together again until a benefit concert in December 2007, when Jason Bonham replaced his late father on drums.  However, it’s unlikely that one of the original members of the group will be performing with the other three.  Robert Plant, a successful solo artist in his own right, has announced that he will not be touring or recording with Led Zeppelin. 

Since Plant’s vocals were a unique part of the Led Zeppelin sound, some have wondered whether the new group can still call itself Led Zeppelin.  This raises the legal question:  Who owns the name Led Zeppelin?  Under U.S. trademark law, the name of a performing group can serve as both a trademark identifying tangible goods (namely, sound and/or visual recordings), and a service mark identifying intangible services (namely, live entertainment). 

Registration of the trademark LED ZEPPELIN wasn’t obtained in the United States until late 1998, nearly two decades after the death of John Bonham.  According to U.S. Patent and Trademark Office (USPTO) records, the registrants of this mark are Robert A. Plant, James P. Page, John Baldwin and Joan Hudson.  Who, you might ask, are John Baldwin and Joan Hudson?  The USPTO lists John Baldwin as also being known as John Paul Jones (the group’s bass player) and Joan Hudson as the trustee of the estate of John H. Bonham (Led Zeppelin’s original drummer). 

As far as live performances are concerned, no federal registration for the service mark LED ZEPPELIN was sought in 1998, since at that time the group hadn’t provided those services for nearly two decades.  Does a band have to be as famous as LED ZEPPELIN in order to get federal trademark or service mark registration?  Not necessarily, but there are a few criteria that need to be met before registration can issue.  First of all, the group has to be involved in interstate commerce.  Any group that has never performed outside its own state probably cannot get federal service mark registration of its name.  Likewise, a band that has only sold recordings inside its own state probably cannot receive federal trademark registration of its name for those recordings.  Once the interstate commerce hurdle has been crossed, service mark registration of the name of a group (i.e. in association in live entertainment) can be obtained if it can be shown that the group’s name identifies and distinguishes the services, and not merely the group itself.  

Obtaining federal registration of a group’s name as a trademark (i.e. in association with recordings) is a little more difficult; “one hit wonders” (groups that only make one recording) need not apply.  Evidence must be submitted that the group’s name appears on at least two different works. 

In addition, the applicant must prove that the name is a “source identifier.” This can be done by submitting proof of either:  1) promotion or recognition of the name by others; or 2) control by the applicant over the nature and quality of the goods (i.e. the recordings).  

Getting back to the original question (Who owns the name LED ZEPPELIN?), the band members may have entered into other contractual agreements regarding the name of the group, but as far as U.S. trademark law is concerned, the owners of the name LED ZEPPELIN, at least for recordings, are the registrants listed in the records of the Patent and Trademark Office.

One Team – Six Names

Shortly after the announcement was made in July that the Seattle franchise of the National Basketball Association would be moving to Oklahoma City, speculation began: What would the team be called?  The name “supersonic” has no inherent application to Oklahoma City, but that didn’t stop the Lakers from keeping their name when they moved from Minneapolis to Los Angeles or the Jazz when they moved from New Orleans to Utah.

A search of the records of the U.S. Patent and Trademark Office can give us a clue as to what the future name of the franchise will be.  Between July 21 and July 25, 2008, a total of 42 applications for a variety of goods and services were filed for the OKLAHOMA CITY THUNDER, OKLAHOMA CITY MARSHALLS, OKLAHOMA CITY ENERGY, OKLAHOMA CITY WIND, OKLAHOMA CITY BARONS and OKLAHOMA CITY BISON.

Why were so many names filed for trademark protection if there’s ultimately only going to be one team name? 

Each of the applications was filed with an “intent to use” under Section 1(b) of the Trademark Act.  There are advantages and disadvantages to filing Intent-to-Use (ITU) applications. The major advantage to filing an ITU is that the applicant gets its foot in the door as far as trademark rights.  Under U.S. trademark law, rights are normally based on use; the party who first uses the mark in commerce generally has superior rights.  But when filing an Intent-to-Use application the filing date becomes the constructive date of first use. 

In other words, when an application for OKLAHOMA CITY THUNDER was filed for a wide variety of clothing on July 21, 2008, as long as the application isn’t abandoned, no one could later claim superior rights to that particular mark for those particular goods, unless they could prove that they were actually using the mark in commerce before July 21, 2008.  Protecting six different names at one time gives the applicant this protection for all of them while sorting out which one will finally be used.

The major disadvantage to filing an ITU comes later, when the applicant has to allege use of the mark.  Although the initial filing fee for an ITU is identical to that of a comparable application based on actual use, the ITU applicant will eventually have to pay an additional fee of $100 before registration can issue.  Once an ITU application is cleared for registration, the applicant has six months to allege use or the application will be deemed abandoned.  Six-month extensions may be granted, up to a total of three years after clearance, but each extension costs an additional $150 filing fee. 

However, in the case of the Oklahoma City basketball franchise, by the time any of the six names are cleared for registration, the final decision on the team’s name will more than likely have already been made, and the remaining five names can be abandoned without paying any additional fees. In case you feel like taking bets as to what the name of the new franchise will be, you can safely scratch Supersonics off your list.  Two applications for OKLAHOMA CITY SUPERSONICS were filed on July 8, 2008, but each application was expressly abandoned just one week later, no doubt because of the settlement arrangement that the Sonics’ name, history and colors will remain in Seattle. 

 If any of the remaining six names are likewise abandoned, you can narrow the list even more. UPDATE:  It’s official! The Oklahoma City NBA franchise will be called the OKLAHOMA CITY THUNDER.  The announcement was made on September 3, 2008.  According to a recent FOX Sports article, the decision was already made in mid-July, when it was leaked by the local ABC affiliate. 

Other clues included the premature use of the URL, the appearance of the name on the Orlando Magic’s schedule, and the leaking of the logo and colors a few days before the announcement.  Since merchandise has already gone on sale, we can expect the team to allege use of OKLAHOMA CITY THUNDER some time soon. All this begs the question:  If the name was actually decided upon in mid-July, then why were so many Intent-to-Use applications filed for all those other names between July 21 and July 25?  Was this all just an elaborate ruse? Perhaps the local ABC affiliate made a lucky guess.  One thing is certain:  the applications for the other names will eventually be abandoned. 

Carl Mueller, CLAS is a Certified Paralegal with Advanced Paralegal Certification in Intellectual Property with the Law Office of Chris Stewart, P.C.  He can be reached

Trademarks and Politics

Now that the 2008 political season is in full swing, I”m reminded of the interrelationship between commercial trademarks and political slogans.  Politicians often use catch phrases from popular culture to connect with voters. And if those catch phrases are associated with any goods or services, the providers of those goods or services can experience an increase in sales.  Perhaps the most famous example of this occurred during the 1984 presidential campaign. 

What started as part of an ad campaign for a fast-food chain turned into a rhetorical question about a candidate”s qualifications for office.  In late 1983 or early 1984, Wendy”s Restaurants started running television commercials in which three elderly ladies inspect a competitor”s burger. One of the ladies lifts the huge top bun only to find a tiny hamburger patty underneath.  At this point, another lady asks the now famous question, “Where”s the beef?”  Although these commercials were enormously popular, Wendy”s didn”t initially apply for federal trademark protection for the slogan.  

All that changed on March 11, 1984 in the aftermath of a debate of Democratic Party presidential candidates.  At the time, Senator Gary Hart of Colorado was rising in the polls with his campaign slogan of “new ideas.”  During the debate, Senator Walter Mondale countered by suggesting that Hart”s ideas lacked substance.  “When I hear your new ideas,” quipped Mondale, “I”m reminded of that ad, ”Where”s the beef?””  The audience loved it.  A little more than a month later, on April 13, 1984, Wendy”s filed two applications with the United States Patent and Trademark Office for the slogan “Where”s the beef?”  The first application, for restaurant and carry out restaurant services, claimed a date of first use of December 26, 1983.  The second application was for a huge variety of promotional items:  everything from beach blankets and bumper stickers to sweatshirts and wastebaskets. 

The date of first use for all of these items was listed as March 1984, the same month that the slogan was used in the presidential debate.  Wendy”s was no doubt trying to capitalize on the increased popularity of “Where”s the beef?” brought on by Mondale”s use of the slogan during the debate.  The relationship between Mondale and Wendy”s proved to be mutually beneficial.  Mondale went on to win the Democratic nomination for President, and Wendy”s presumably sold a lot of promotional items in addition to burgers.  Federal registration of “Where”s the beef?” later issued for both Wendy”s restaurant services and its promotional items.  But Mondale didn”t fare nearly as well; he lost the 1984 election to Ronald Reagan in a landslide.                      

More than twenty years later, the slogan “Where”s the beef?” still enjoys federal protection for restaurant services, although the only promotional items that are still federally registered are lapel pins and metal buttons.  Only time will tell whether another commercial slogan will emerge from the 2008 campaign with as much staying power as “Where”s the beef?”  Carl Mueller, CLAS is a Certified Paralegal with Advanced Paralegal Certification in Intellectual Property with the Law Office of Chris Stewart, P.C.  He can be reached at

Can You Really “Register a Trademark” in Minutes?

If you listen to talk radio or watch TV, you may have heard ads for a service that assists in preparing wills, forming business entities, and registering trademarks. At least one version of this ad claims this service can “register a trademark in minutes.” As a trademark paralegal, I can tell you that the mechanics of applying for trademark registration has never been easier. Online filing is relatively simple, even without the help of a service like I’ve described above. But that’s not even the first step in the process of getting a mark registered. Successful prosecution of a federal trademark application to registration can take 12 to 18 months and requires a number of steps, any one of which can doom an application if not done properly. Once a mark is registered, additional steps are required to maintain that registration. Here are some of the questions that need to be asked before paying (and possibly wasting) the application fee.

Is it a trademark?

Simply stated, a trademark is a word, slogan, logo, design, color, sound, motion or even smell that associates specific goods with their source. A service mark likewise associates services with their source. But not every identifier qualifies as a trademark or service mark. Selecting a valid specimen of the mark as it is being used in commerce is an important part of this process.

Is it available?

Some people come up with what they think is a great mark for their product or service, only to find that someone else got the same or similar idea weeks, months, or even years before. Unlike searching for domain name availability, conducting an availability search for a mark is an art, not a science.

How do you respond to the examiner’s refusals?

If the examiner doesn’t believe your mark is registrable as filed, an Office Action is sent out, listing the grounds for refusal. Some refusals, such as requiring a disclaimer or providing a substitute specimen, can sometimes be easy to overcome. Many pro se applicants never make it past the first Office Action; they either give up, fail to meet the response deadline, or prepare a response that the examiner finds unacceptable.

What if your mark is opposed?

Once the examiner is satisfied that the mark is registrable, it’s published for opposition in the weekly Official Gazette. Even if the examiner is convinced your mark deserves to be registered, third parties may claim your mark infringes on theirs. An opposition action can spell the end of your journey if not properly defended.

Your mark is registered. Now what?

As long as a trademark or service mark is in continuous use in commerce, registrations can be maintained indefinitely. But to do so, affidavits must be periodically filed and fees paid. Many registrations of active marks are cancelled because no one bothered to calendar the necessary maintenance and renewal dates. Despite advertising to the contrary, registering a trademark is never as simple and immediate as filling out a form. Because application fees are almost never refundable, it pays to do it right the first time.

Contributed by Carl Mueller