Federal and Puerto Rico Trademarks and Service Marks
The benefits of registration will be discussed below.
Selection of a Trademark
The selection of a trademark should be carefully considered. The level of protection against infringement of a trademark varies with the strength and uniqueness of the mark.
Arbitrary or fanciful marks are the strongest type of marks because they bear no logical relationship to the underlying product. Often they consist of a coined name that has no dictionary definition. For example, “Texaco” for gas stations, “Apple” for computers, and “Kodak” for film and cameras are arbitrary or fanciful marks.
Suggestive marks are weaker than arbitrary or fanciful marks because they convey information about the ingredients, qualities or characteristic of the goods or services provided. Examples of marks held to be suggestive are “Citibank” for banking services, “Chicken of the Sea” for tuna, and “7-Eleven” for convenience stores.
Descriptive marks are even weaker and less defensible than suggestive marks. A descriptive trademark is a name that describes some characteristic, function, or quality of the goods. For example, “Holiday Inn” for hotels, “All Bran” for bran cereal and “Chap Stick” for lip balm are all examples of descriptive marks. Descriptive marks are not entitled to trademark protection without showing that the public associates the term with a particular provider of services, rather than just the services in general.
Generic trademarks are the weakest type of mark and are not enforceable. Generic marks actually describe the product itself. An otherwise valid trademark can become generic if the consuming public continuously misuses a trademark to identify a generic class of products. For example, the terms “aspirin,” “cellophane,” and “Murphy bed” are all former trademarks that have become generic through public misuse as generic terms. Genericism is a valid defense to a trademark infringement claim.
Selection of a mark should be accompanied by a trademark search to determine whether someone else has already adopted or used a mark that is the same or similar to
the one desired. Publications, both hardcopy and on-line, provide lists of existing trademarks, registered and unregistered, and there are businesses that specialize in trademark searches. These search resources are identified in the Puerto Rico Intellectual Property Resources section.
Actual and potential trademark conflicts should be prevented, in order to avoid an expensive infringement lawsuit and, what is of greater concern, a potential loss of the right to use a mark after incurring in considerable marketing and advertising expenses to promote it.
Advantages of Trademark Registration
The principal method of establishing trademark rights is actual use of the mark. “Registration” of a trademark under federal and state law is not legally required but can be advantageous.
Federal registration of a mark is presumptive evidence of the ownership of the trademark and of the registrant’s exclusive right to use the mark in interstate commerce, thus strengthening the registrant’s ability to prevail in any infringement action.
Federal registration may assist in preventing the importation into the U.S. of foreign goods that bear an infringing trademark. There are also less tangible advantages of registration, such as the goodwill arising out of the implied government approval of the trademark.
While the advantages of state registration are not as extensive as federal registration, there may be some cases where it is advisable. For example, in situations where sales or services will occur only within a particular state, it would make sense to register at the state level.
Federal Registration Process
Federal trademark registration requires that a trademark application be filed with the U.S. Patent and Trademark Office. The application must identify the mark and the goods/services with which the mark is used or is proposed to be used, the date of the first use, and the manner in which it is used. The application must be accompanied by payment of the requisite fee, a drawing page depicting the mark, and three specimens of the mark as it is actually used. The fee for filing depends on a variety of factors but begins at $275. A current list of trademark fees is available at http://www.uspto.gov/web/offices/ac/qs/ope/fees.htm.
After the application is filed, it is reviewed by an examiner who evaluates among other matters, the substantive ability of the mark to serve as a valid source identifier and the possibility of confusion with existing marks. The examiner may ask questions to clarify various aspects of the application. The applicant must timely respond to any questions. Additionally, the examiner may reject the application and the applicant may respond with reasons why the examiner should reconsider. If the examiner makes a final rejection of the application, the examiner’s decision can be appealed to the Trademark Trial and Appeals Board. An adverse decision by that body can be appealed to federal court.
If the application is approved, the mark is published in an official publication of the Patent and Trademark Office (http://www.uspto.gov/web/trademarks/tmog/). Opponents of the registration have thirty days after publication, or such additional time as may be granted, to challenge the registration. If no opposition is filed, or if the opponent’s claims are rejected, an applicant whose mark is already in use receives a “certificate of registration.”
An appliction for registration before actual use results, upon approval of the application, in a “notice of allowance.” An applicant who receives a notice of allowance must, within six months of receipt of the notice, furnish evidence of the actual use of the trademark or file an extension, which will give the applicant another 6 months to claim actual use. Once the applicant has provided evidence of actual use, the applicant is then entitled to a certificate of registration. Failure to furnish evidence of the actual use of the mark within the time allowed results in rejection of the application.
A trademark owner may use the Symbol "™" immediately following the mark. Once the mark has achieved federal registration, the symbol “®” can be used.
Post-Certificate Federal Procedure
A certificate of trademark registration, issued by the Patent and Trademark Office, remains in effect for ten years. However, at the end of the sixth year after the date of registration, the owner must file an “affidavit of use,” attesting to the fact that the mark is still in use, and pay an additional fee to keep the registration alive. The owner must make the same filing at the end of the tenth year after registration to renew the mark for an additional ten-year term. The window during which both of these filings must be made for the trademark to avoid cancellation is one year prior to the filing due date or during a 6-month grace period immediately after the filing due date. For example, if a trademark was registered on January 1, 2009, the owner could file the 6-year filing between January 1, 2014 and June 30, 2015, and the 10-year filing between January 1, 2018 and June 30, 2019.
After at least five years of continuous use of a trademark following receipt of a certificate of registration, a registrant can seek to have the status of the mark declared “incontestable.” This elevates the registration from “presumptive” evidence of the registrant’s exclusive right to use of the mark to virtually conclusive evidence of exclusive right. To do so, the registrant must furnish the Patent and Trademark Office with evidence of continuous use of the mark for at least five years. Additionally, there must not be any outstanding lawsuit or claim that challenges the registrant’s right to use the mark.
Puerto Rico Registration Process
State trademark registration is typically less expensive, easier, and faster than federal registration. At the federal level, an examining attorney looking to identify deficiencies and conflicts with other marks scrutinizes each application. On the contrary, most states do not have the resources to provide such a rigorous examination process. Even though the state registration process offers advantages, the resulting protections are limited. State registration generally confines a mark's protection to the geographic area in which it is in use. Therefore, if an organization is operating solely within one state, state trademark registration is a good alternative to federal registration and can be helpful as a way to put others on notice that the mark is in use.
Registered trademarks in Puerto Rico are protected by the Trademarks Act of Puerto Rico, Act No. 169 of December 19, 2009, 10 L.P.R.A. §§223 et seq., as amended. To register a mark in use, the applicant must submit (1) an application addressed to the Secretary of State, signed by the applicant or by the applicant’s representative, or in the manner provided by the Secretary by means of regulation; (2) a sworn statement declaring that (i) the mark is used in commerce, (ii) no other person, to the applicant’s best knowledge and belief, has the right to use the mark in Puerto Rico, and (iii) the presented description, samples, and drawings faithfully represent the applicant’s mark; (3) a sample of the mark, as used in commerce, in the manner and quantity provided by the Secretary by means of regulation; and (4) a fee payment provided by the Secretary by means of regulation. The application may be found on the Department of State’s website at: http://www.estado.gobierno.pr
To register a mark not yet in use, an applicant who has a bona fide intention to use a mark in Puerto Rico must submit: (1) an application addressed to the Secretary of State, signed by the applicant or by the applicant’s representative, or in the manner provided by the Secretary by means of regulation; (2) a sworn statement declaring that (i) the applicant has a bona fide intention to use the mark in commerce, (ii) no other person, to the applicant’s best knowledge and belief, has the right to use the mark in Puerto Rico, and (iii) the presented description, samples, and drawings faithfully represent the future mark; (3) a sample of the mark, as will be used in commerce, in the manner and quantity provided by the Secretary by means of regulation; and (4) a fee payment provided by the Secretary by means of regulation.
Within five (5) years of the filing (application) date of a mark not in use in Puerto Rico, the registered titleholder will need, in order to maintain the validity of the registered mark, to credit or prove, by means of a sworn statement and evidence of use, that the mark has been and is being used in commerce. If the titleholder fails to do so, the mark will be cancelled. Nevertheless, the owner may request, before the end of the five-year term and for just cause, an extension of up to one year.
Applicants may not register marks that are likely to cause confusion, mistake, deception or disparagement. When a mark has been accepted, the Secretary of State will issue a certificate of registration as prima facie evidence of the validity of the registered mark. Registrations remain in effect for a period of ten-years as of the date of registration, and may be renewed in successive ten year terms by submission of a form provided by the Department of State and the fee payment within the year preceding the expiration of the term of registration or renewal. If the ten-year term expires, the registered titleholder can apply for renewal within the six months following the expiration of the aforementioned term, as long as the titleholder pays the additional fees provided by the Secretary.
Once a trademark is registered, some form of enforcement against infringers is usually necessary, because protection can be lost through acquiescence or longstanding inattention. One protection strategy is to appoint a person or persons to monitor the trademark registers (federal and state) and the Internet, and to attend industry trade shows to discover any infringing marks. Furthermore, periodic searches of similar marks like those conducted when seeking to register or use a new name or mark can be helpful. In fact, there are "search companies" that perform “tracking” services for trademark owners. See the Puerto Rico Intellectual Property Resources section for more information.
If the owner of a mark identifies a potential infringer, the owner should carefully research the nature and scope of the potential infringement. Not only could the potential infringer’s use pre-date the owner’s own use (and possibly create rights superior to those of the owner), the use could also may distinct enough, in terms of trade, market area, or geography, to preclude infringement. The ultimate test is whether the marks at issue are likely to cause confusion among consumers.
If litigation becomes necessary, the mark's owner may have the following remedies available under Puerto Rico law: (1) an injunction against threatened or actual infringement; (2) seizure of the articles, labels, signs, wrappings, or any other medium on which the defendant party has affixed the mark in question; (3) recovery of an amount equal to all the profits made by the infringer; (4) damages suffered by the owner as a result of the infringement; (5) treble damages, in certain cases; (6) statutory damages, in certain cases; and (7) costs and attorneys’ fees.
Additional information about trademarks and the registration process can be found at http://www.uspto.gov.