Getting a Trademark Step-by-Step

By Chuck Knull

  1. Select a trademark for your product or service. Be prepared by having more than one mark that you like. A mark that is coined is a much stronger mark than one that describes. There is a lot that goes into selecting a good mark.
  2. Knock Out search for similar trademarks.  Trademark law protects against “confusingly similar” marks. So if you have selected CLEANE as your mark for soap, if there is a mark KLEAN or CLEAN on the market, you would be infringing if you use CLEANE. We perform “knock out” searches by checking the records at the U.S. Patent and Trademark Office.  It takes some time and we have a flat fee charge of $400 for such a search.  Such a search should tell if there is no exact match for the mark on file at the USPTO, but the USPTO database has its flaws, and one cannot even be sure about exact matches. A “knock out” search can be supplemented by searching on the internet, looking in stores, and attending trade shows.  Often, if a mark has been in use for a while, and nobody has objected, a “knock out” offers some assurance that applying for the mark will not cause big trouble.
  3. Professional search and opinion.  If the mark(s) look clear after your knock out search, and there is a clear need to be absolutely sure of its viability, we can order a full common law, federal and state search report, to review that report, and to render an legal opinion on the use and registration of the mark. This process will cost about $1500-$2,500 per mark. However, having this search and an opinion of counsel before adopting a trademark is the only evidence that can be used to show that adoption of a trademark was made in good faith. Not having evidence of adoption in good faith is willful infringement, also known as “betting your company.”
  4. The application. Applications may be based on “use in commerce” if the mark is being used on the product or in offering the service already. Or it can be “intention to use” where the product or service is in development. An intention to use application will cost more from the beginning, but it may be worth it for the reservation of the mark. An “in use” application costs $500 flat fee for its preparation and filing, plus at least $250 for the US government filing fee. The application is only step one.
  5. Wait for word from the Trademark Office. Two or three months after application filing, an Examiner from the Trademark Office will probably write a letter called an Office Action that asks questions about the trademark. There may be technical issues to resolve, such as whether the mark means anything in a foreign language, an unsatisfactory drawing or other submission.  The Examiner may also cite existing trademarks as blocking the trademark. A response to an Office Action is due within 6 months. Responses to Office Actions take time and research.  We can respond to some office actions in less than half an hour (about $150), but others may take a great deal more time ($600-750).  It is impossible to predict what an Examiner may see as flaws in an application; sometimes applications we think will be difficult breeze through, and others are problematic.  Examiners look at applications differently and often are wrong, but correcting their view takes time and research.
  6. Publication. After the Office Action is responded to satisfactorily, the application should move on to be published in the Official Gazette of the USPTO, at which time others have the right to voice objection by filing a Notice of Opposition and beginning an administrative proceeding to prevent the mark from registering or receiving its Notice of Allowance.
  7. U.S. Trademark Registration. If no one opposes your trademark, it should issue and the Trademark Office will mail us a registration certificate, which we will docket and send to you.

A COLA is Not a Trademark

By Chuck Knull

Before a brewer, winemaker or a distiller can put its product into kegs, cask, bottles, cans or boxes, the labels that it will stick on the packaging (including labels on imported product)  must be approved by the Alcohol and Tobacco Tax and Trade Bureau (TTB). The approval is called a Certificate of Label Approval (COLA).   Many brewers, winemakers, distillers, and importers mistakenly believe that the COLA has the same or similar importance to a U.S. trademark registration in terms of securing brand protection and/or clearing them from infringing other people’s trademark rights.  They couldn’t be more wrong.

When the TTB looks at COLA applications, one of the things it reviews is the brand name, i.e., the trademark.  If there is an exact match for the brand name for already approved product by another then the COLA may be denied. That is, if the TTB, which examines about 100,000 COLA applications a year, does not miss the duplication. Or not see the duplication as a problem because for it, the products are not the same.  A number of years ago, the owner of the mark BLACK & WHITE for whiskey had to sue a brewer who had come out with BLACK & WHITE for beer,  And Remy Martin, with its REMY mark for Cognac, had a trademark battle with a wine called F. REMY.  The fact that all the products had approved COLAs did not help the two brands which were the latecomers.

If there is no match for the brand name, and the COLA is approved, the brewer, winemaker or distiller should not even think for a moment that it has a clear brand name/trademark for its product. A COLA approval is not a trademark clearance.  The fact that a COLA application is made and approved is, of course, great evidence that the applicant has a bona fide intention to use the trademark, but that will not be enough to carry the day if there is use or even a prior, bona fide intention to use, the same of similar mark.

This is because trademark law does not work only on exact matches of terms in a given mark.  Trademark infringement happens when there is likelihood of confusion.  Under the criteria for finding likelihood of confusion, trademarks for soft drinks, restaurants, and cheese, to name a few, have caused problems for marks for alcoholic beverages. I have had the experience of representing the makers of MURPHY’S IRISH STOUT, which of course, had a number of approved COLAs for its brands and container labeling and had been brewing since 1856, when a restaurant named Murphy’s tried to cancel its US trademark registrations. There are legions of other such cases. The owner of the BOAR’S HEAD trademark for meats had to sue a brewer who came out with BOAR’S HEAD beer,.  The owner of BLACK LABEL for beer had to litigation against a cigarette maker that came out with BLACK LABEL cigarettes.

The only way to assure trademark clearance is to obtain a full clearance trademark search which, after analysis, shows no blocking trademarks in use.