The Process of Registering a Trademark in New York

What is a Trademark?

According to the Department of State of New York, a trademark is any word, name, symbol, device, or combination that is used by a person to identify and distinguish the goods of that person from the goods of those manufactured and sold by others. In the simplest terms, a trademark is an identifier that distinguishes products or services from one seller to that of their competitors.

What Can be Trademarked?

For a successful trademark registration, the mark must clearly indicate the proprietary company of the goods or services. This means that the mark must be able to distinguish a product or service from other similar products or services by facilitating the consumer’s understanding of the brand behind the trademark. The proposed trademark must communicate information about the brand to ensure it is a successful trademark.

Trademarks are often:

• Names
• Original words or combination of words
• Logos, symbols, or icons
• Phrase or slogans
• Smell
• Sound
• Color
• Other identifying graphic designs

What Cannot be Trademarked?

Terms and phrases that may not be trademarked are:

• Terms that simply convey information: A term or phrase that merely provides information about the product that is to be sold under the trademark is inadmissible as a potential trademark. Examples of this include Unlimited Data for an internet company or Sweet for a candy company.
• Widely used messages: This category of inadmissible trademarks includes all political, religious, social, or popular phrases. Examples include “I Love NY,” “In God We Trust,” or “Go Big, Or Go Home”.
• Religious quotes or passages: Phrases quoted directly from the Bible, the Quran, the Torah, or any other religious book cannot be trademarked as these direct quotes cannot indicate the source of a product.

How are Trademarks Ranked?

Trademarks are categorized based on the Spectrum of Distinctiveness, which ranges from “generic” to “arbitrary and fanciful” trademarks. Typically, a trademark will receive more protection under the trademark law if it is more distinctive.

An “arbitrary or fanciful” mark bears no logical relationship to the product that it represents, such as Nike representing shoes. A “suggestive” mark hints at or suggests the product without directly describing it, like Wal-Mart representing a shopping center. A “descriptive” mark directly describes the good or service, such as Comfort Inn representing a comfortable hotel. A “generic” mark is not entitled to any protection, such as “deodorant” to represent deodorant.

How Can I Get Trademark Protection?

There are two ways to get protection for your trademark:

• You can acquire common law or unregistered rights in a trademark simply by using the trademark during the sale of a product.
• You can register your trademark through the United States Patent and Trademark Office, USPTO. The USPTO must approve the trademark to complete registration and may reject it for a variety of reasons.

While registration through the USPTO is not required, it does offer extra protection. Registration offers national protection and alerts third-party competitors that the mark is in use. Additionally, if another person or entity uses the mark, you have the right to bring the case to federal court.

What is a Trademark Specimen?

As part of the USPTO registration process, the USPTO requires examples of how a trademark will be used in commerce. This is called a trademark specimen. Different types of specimens are available depending on the type of product sold. The USPTO will accept the following specimens for goods:

• Pictures of the mark displayed on the product or packaging
• Product labels that display the trademark, such as the label on the inside of a shirt
• A webpage that showcases the product, trademark, and information on the purchase of the product.
• Instructional booklets or other printed materials that are included with the product.

The specimen requirements for services are different since services are not tangible goods and must be advertised through a different marketing strategy. Specimens acceptable for services include the following:

• Advertisements for the services
• Marketing materials
• Pictures of signage for the services
• Webpages describing the service, displaying the logo, and including purchasing information

Why Would an Application be Denied?

It is common for the USPTO to issue an office action after an application for a trademark has been submitted. While this may not be a rejection of the mark, it does serve to notify the applicant of a problem that must be corrected. Common issues include the following:

• A generalized broad description of the product
• A narrow description of the product
• Failure to use the trademark in commerce
• Digital alterations of the mark
• The trademark is too generic or simply descriptive
• The likelihood of confusion between the mark and one previously registered
• Lack of distinctiveness

How Long Does a Trademark Registration Last?

Once a trademark is registered through the USPTO, it will last for as long as it continues to be used in commerce.

Trademark Maintenance

While trademarks do not expire, there are certain required steps to ensure that the trademark is not canceled. The requirements for maintaining a trademark registration are:

• Between the fifth and sixth anniversary of the mark’s registration, the USPTO must receive form “Section 8: Declaration of Use”, a specimen, and associated fees.
• Between the ninth and tenth anniversary of the mark’s registration, the USPTO must receive forms “Section 8” and “Section 9: Application for Renewal” and any associated fees.
• Every ten years following the tenth-anniversary date of the mark, the USPTO must receive forms Section 8 and Section 9 and any associated fees.

Do I Need an Attorney?

From search and clearance to office action responses, you need help you can count on. Call Fisher Stone, P.C., today at 212-256-1877 or fill out a contact form for a free consultation.