Marking/Drawing Code

[trademarkhelp]

What is the name of your state (only U.S. law)? Michigan

Greetings All -
A quick question regarding the breadth of coverage for a phrase contained within a logo. If a trademark has been filed with the following classification: (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS, does that cover the entire piece of work or each piece independently (ie. words within the design)?

Also, if a trademark has been filed, but is currently being contested and is pending, does that mean the trademark isn't valid?

I can provide a case number to help clarify if that helps.

Best -

M

 

[quincy]

What is the name of your state (only U.S. law)? Michigan

Greetings All -
A quick question regarding the breadth of coverage for a phrase contained within a logo. If a trademark has been filed with the following classification: (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS, does that cover the entire piece of work or each piece independently (ie. words within the design)?

Also, if a trademark has been filed, but is currently being contested and is pending, does that mean the trademark isn't valid?

I can provide a case number to help clarify if that helps.

Best -

M

What would be covered with the registration is the entire design with words. The separate pieces might need to be registered separately to be afforded protection, unless or until the separate pieces gain a secondary meaning. That is, separate registration would not be need once consumers recognize each piece as belonging to the trademark holder, as is the case with consumers recognizing that "swoosh" and "Just Do It" belong to N!ke.

If the trademark registration application has been filed but is currently being contested, that means the mark has not been accepted yet for registration. A certificate of registration will not be issued if the opposition to the registration is successful.

This does not necessarily mean the registrant needs to stop using the trademark to identify their goods or services. It just means there is a dispute of some kind over ownership of the mark that the registrant may need to respond to.

See: The Lanham Act Section 1063, Opposition to registration.

We cannot do personal reviews on this site so you should not provide the case number. You can review the specific facts of the registration with an IP attorney in your area, though, if you are the registrant with the pending registration and are not sure what you need to do now.

 

[FlyingRon]

And let me amplify what Quincy says. Not only can they use the mark pending registration approval, they can take action (and are well advised to) against infringers in the interim.
Registration gives you some additional rights, but trademark rights arise primarily from use in commerce.

 

[quincy]

When a trademark application is submitted for trademark registration and the mark is opposed, a dispute resolution proceeding will be scheduled before the Trademark Trial and Appeal Board. The most common challenge to a trademark registration will be made by the owner of a competing mark.

The party who files an opposition will need to show the Appeal Board that harm has come, or is likely to come, if the trademark applicant's trademark is approved for registration.

There can be several different outcomes to an Appeal Board hearing. For example, the Trademark Commissioner after review could allow for the registration of the applicant's mark, or the Trademark Commissioner could refuse to register the applicant's mark, or the Trademark Commissioner could allow for registration of the mark but with restrictions or conditions placed on the use of it ...

Until the trademark registration is approved by the USPTO (if it is), the trademark can continue to be used as an identifier for the trademark holder's goods or services, but the trademark holder will not be able to take advantage of the benefits that come from USPTO registration should the mark be infringed. As FlyingRon noted, registration of a trademark is not necessary in the US to have rights in the mark. It is the use of the mark in commerce that does this. This is different than in other countries, where it is registration of a trademark that confers ownership.

 

[trademarkhelp]

Thank you all for the clarity. Sorry for the late response, I have been traveling for work and have not had a chance to revisit this component of my "hobby" that I am trying to get off the ground. It looks like I will consult a local IP attorney to get more information if I should move forward.

Cheers!

 

[quincy]

Thank you all for the clarity. Sorry for the late response, I have been traveling for work and have not had a chance to revisit this component of my "hobby" that I am trying to get off the ground. It looks like I will consult a local IP attorney to get more information if I should move forward.

Cheers!

Thank you for the thanks, trademarkhelp.