Look before you leap: trademark retainer agreement 2

My last article addressed a United States federal register trademark retainer agreement, and today’s article continues this discussion. For example a client should be advised that filing a U.S. federal register trademark/service mark application may have consequences thereafter when filing for mark protection in other countries. The agreement should also include an exact and accurate reproduction of the mark as applied to products, commercial displays, or documents for the trademark owner’s services.

To confirm the exact mark, a sheet with the mark image is attached to the written retainer agreement. This sheet prevents potential misunderstandings as to exactly which mark, or mark features, is intended for federal registration. Applicants should also understand that a trademark used on goods and services, but visually different from the mark represented by the application, may not be entitled to the federal registration status of the originally filed mark. Consequently, if an applicant modifies the mark after filing the original application, then a subsequent application for the modified mark may be necessary, along with additional fees. This image sheet is also particularly important for marks with a specific color, and this color should also be stated in the agreement.

Prior to arriving at the image for the retainer agreement sheet, the applicant should be aware that features of the mark are the portal to the registration process. For example, a fanciful mark generally includes a design or collection of letters that have no accepted meaning in any context, and so it is unrelated to the goods and services it represents. An arbitrary mark often comprises a recognized word or logo, but again there has no logical relationship to the product or service, such as Apple® for computers. Perhaps counter-intuitively, fanciful and arbitrary marks are most favored by the trademark office because they can become very distinctive of the goods and services and are therefore considered ‘strong’ marks.

Another important portion of the agreement should explain that only one mark can be submitted in a single federal register application. Fortunately, multiple varieties of goods or services can be associated with that particular mark. However, if there is a diverse variety of goods and services within a single application, the government filing fee becomes very hefty. The reason: the trademark office follows a single classification system of goods and services. If goods (products) fit within a single class, then there will be a single government fee. If an applicant’s products and services fall within, for example, four of these official classes, this fee becomes four times the fee for one class.

In addition, the retainer agreement should alert the client that a mark must be used continuously and in a reasonable business volume outside the client’s state of primary business operation. The agreement should also explain the two kinds of registration “pathways” in an application: “use” and “intent to use.” The use pathway is for marks associated with goods and services outside the applicant’s state prior to filing the application. In contrast, with intent to use application an applicant may ‘reserve’ a mark if the applicant thereafter appropriately uses that mark within a limited time period. As you can easily conclude, the intent to use application is appropriate whenever the applicant has not yet used the mark, but he or she intends to do so within a limited period of time. Otherwise this intent to use application has the same requirements as the use application, such as acceptable mark features and appropriate display of the mark on products and services.
© 2012 Adrienne B. Naumann
Ms. Naumann does not endorse or sponsor the advertisements at adriennebnaumann.wordpress.com or linked in sites.

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