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Trademark Portfolio Development Return to Practice Areas & Industries

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Our attorneys help clients create trademark portfolios to protect their brands and promote their business strategies. We obtain domestic and foreign trademark registrations and enforce and defend our clients' trademark rights in administrative tribunals and courts of law.


Sunstein Approach to Trademark Portfolio Development


We develop and maintain U.S. and worldwide trademark portfolios for our clients, providing complete trademark services, including pre-filing consultation, trademark selection, searching and clearance, trademark registration and maintenance, and trademark licensing, enforcement and policing.

We Educate Our Clients and Ourselves. We believe the first steps toward achieving our clients' goals in the area of trademarks is understanding the business of our clients, and working with each client to understand--and often define--the client's goals. This often involves educating ourselves about each client's business and educating each client on the benefits of trademark protection, setting up procedures and policies consistent with the client's culture, and providing cost-benefit analyses that can help a client make choices regarding the proper focus of its trademark strategy. We make it our business to take charge of the process, so that the client can leverage our expertise to achieve its goals, and so that the client can focus on running and growing its business.

We Develop a Comprehensive Plan. We pay special attention to developing strategies that take into account a client's entire business, not just one segment, and to asking the questions the client doesn't ask--but would if it had our expertise. This proactive approach, in the context of working as a team with our clients, allows both our attorneys and our clients to ensure not only the highest level of legal services, but the highest level of cooperation, which in turn leads to better overall service of our clients' needs.

We Prioritize. We work closely with clients to develop a budget and a plan for protecting trademarks that focuses on protecting the key trademarks in a client's key markets in the most economical way possible. This process involves not only developing plans for protection, but also plans for weeding out marks that are no longer used or for which protection is no longer cost-effective.

We Think Globally. Most of our clients do business outside the United States, and thus need protection in foreign countries as well. We team with trademark attorneys throughout the world to provide worldwide coverage for our clients.

We Police Our Clients' Marks. Enforcement of trademark rights is just as important as obtaining and maintaining trademark registrations, and we take enforcement very seriously. We regularly monitor third party uses of our clients' marks, through electronic watch services and other means, to make sure that our clients' hard-won rights are protected from infringers and those who would stray too close to our clients' scope of protection. Where necessary, we take action in the United States and abroad to stop third parties from registering or using marks that infringe, all while working closely with each client to develop a cost-effective policing strategy.


What is a Trademark?


What is a trademark? A trademark is a word, symbol, or combination of words and symbols that is used to identify the source of the goods or services. A consumer of a product need not know the name of the source, as long as he or she knows that the trademark indicates that all products come from a single source. This gives a consumer an assurance of quality when making future purchasing decisions. For example, a consumer who sees the trademark Pepsi® on a can of soda in Oregon knows that it is of the same quality as a can of Pepsi® purchased in Rhode Island. Thus, a trademark is intrinsically bound up with the "good will," or reputation, that is developed by the owner of the mark.

We believe that the effective use of trademarks is a critical component of any business plan. Trademarks embody the goodwill and reputation that a company builds up over time, and play a powerful role in influencing consumer decisions in the marketplace. By helping our clients develop strategies for effective trademark usage and protection, we assist them in achieving and maintaining market prominence in a variety of industries.

Is there a difference between a trademark and a service mark? Yes and no. Technically, trademarks are used in connection with goods (such as a candy bar or pair of shoes), and service marks are used in connection with services (such as a car wash). There is no difference between the legal protections afforded to trademarks and service marks, however, and both trademarks and service marks are commonly referred to as "trademarks" or, more simply, as "marks."


Trademark Selection Guidelines


The choice of a trademark can be critical to the ability to protect one's rights in a mark. A weak mark may not serve as a good identifier of source. A strong mark, which becomes identified in the mind of the consumer with a particular product or service--e.g., LEXUS® for luxury cars or AT&T® for long distance telephone services--makes possible more effective protection of rights. Thus, it is easier for the owner of a strong mark to preclude third parties from adopting similar marks than it is for those with weak marks. By helping our clients identify and select strong marks, we assist them in developing trademark portfolios that become valuable business assets.

It is natural for the owner of a trademark to want to choose a mark that tells consumers something about its products. Unfortunately, this understandable tendency can sometimes come into conflict with certain principles of trademark law. In the United States, as well as in most other jurisdictions, only "distinctive" terms may be protected as trademarks. Terms that are considered "merely descriptive" or generic are generally not able to function as trademarks and will not be protected.

The line between an imaginative mark that cleverly suggests the nature of the products for which it is used and a mark that is "merely descriptive" of those products can be quite fine. Case law in the United States describes a spectrum of types of marks: fanciful, arbitrary, suggestive, descriptive and generic.

The strongest marks are those that are considered fanciful. A fanciful mark is one that has been made up or invented by its owner. Fanciful marks are either previously unknown words, or archaic or obsolete terms that are no longer commonly known. Non-word marks (letters, numbers, designs and pictures) may also be considered fanciful. Examples of fanciful marks are EXXON®, KODAK®, and XEROX®.

Arbitrary marks are the next on the spectrum of trademark strength. An arbitrary mark is one that may have a commonly known meaning, but the meaning is unrelated to the products for which the mark is used. Examples of arbitrary marks are APPLE® (for computers), DELPHITM (for computer software), and RADIUSTM (for a restaurant).

Suggestive marks are not as strong as fanciful and arbitrary marks, but are nevertheless good marks as they, like fanciful and arbitrary marks, are considered "inherently distinctive." A suggestive mark is one that hints at the products in a clever way, but does not actually describe the products. Examples of suggestive marks are FROOT LOOPS® (for breakfast cereal), JOIE DE VIVRETM (for a toy store), and SATURDAY'S CHILDTM (for a children's clothing store).

"Merely descriptive" marks, the next on the spectrum, are only protectable if they have acquired secondary meaning. In the absence of secondary meaning, the United States Patent and Trademark Office (USPTO) will not register a descriptive term, and courts will not recognize it as a trademark for the purpose of enforcing it against third parties. A mark is considered merely descriptive when it consists only of a term or symbol that describes the intended purpose, function, users, nature or desirable characteristic of the products. Examples of marks for which the USPTO refused registration as merely descriptive include UN-CURL (for hair care preparation for straightening hair), WEB BUSINESS (for prerecorded videos, audio cassettes, CD-ROMs, and laser discs dealing with products and strategies on the Internet), LATIN AMERICAN PEOPLE DEVELOPMENTS (for magazines in the field of providing information regarding Latin Americans), and PATENT & TRADEMARK SERVICES, INC. (for legal representation in the area of intellectual property). Laudatory terms (e.g., BEST, RELIABLE, TASTY) are usually considered to be merely descriptive. The rationale behind refusing registration of merely descriptive terms is that such terms should remain available for public use, and no one person should be able to preclude others from using them. Refusing registration for such terms is also consistent with the function of trademarks, that is, providing a distinctive identifier of source.

An otherwise descriptive mark acquires secondary meaning and may be registered if consumers have come to associate the mark with one particular source, and no other source. This may occur where the mark is used in trade for a significant period of time or where the owner of the mark expends significant time and energy in making the mark known to the public through advertising and marketing efforts. A trademark owner must prove secondary meaning before an otherwise merely descriptive term or symbol will be treated as a protectable mark. A customer survey is often useful in providing secondary meaning, but is not required.

Generic terms are not protected as trademarks by the USPTO or the courts under any circumstances. A generic term is the name of the product itself, and cannot function as a mark. For example, one cannot claim the word BREAD as a mark for bread. Interestingly, a mark that was once fanciful, arbitrary or suggestive might actually become generic if consumers come to consider the mark as the name of the product (rather than as a distinctive identifier of source). Classic examples include the terms aspirin, cellophane, thermos, and trampoline, which were all at one time trademarks and became generic because consumers came to identify and use the marks as the name of the products themselves. This phenomenon is often a function of the product's popularity in the marketplace, and may occur regardless of how the trademark owner uses the mark. Sometimes it is the trademark owner's own use of a mark as a generic term that results in loss of trademark rights. In order to prevent their marks from becoming generic, we recommend that our clients follow sound Trademark Usage Guidelines.

Thus, from a trademark perspective, the strongest marks are those that are fanciful or arbitrary, and suggestive; the weakest are those that are merely descriptive. Generic terms cannot be trademarks. From a business perspective, sometimes a fanciful or arbitrary mark may not be appropriate for a particular product. Nevertheless, whenever possible, trademark owners should take care to choose a strong mark that helps to position their products in the marketplace, and to avoid choosing one that is considered merely descriptive or generic.


Trademark Usage Guidelines


How can trademarks be used most effectively? In order to allow consumers to quickly and easily recognize a trademark, the rendition of the trademark should be consistent every time it is displayed. Further, a trademark should be used in a manner that distinguishes it from surrounding text. The mark should be clearly and visibly seen by consumers and should not simply be an indistinguishable part of a larger context. Whether this has been done successfully depends upon the "overall commercial impression" of the trademark in its particular setting. A trademark can be distinguished in a variety of ways, such as by physically placing the trademark apart from surrounding text or by distinguishing the trademark's appearance by using a different size, typeface, capitalization, or color from the surrounding text.

When used properly, a trademark is a "brand name" for the type of goods or services that it identifies. If a trademark comes to be known as a common name for those goods or services, it is at risk of becoming generic. For example, the words ASPIRIN, THERMOS and ESCALATOR started out as trademarks but became so commonly used that they became generic words and lost their trademark protection. Therefore, it is important for trademark owners to refrain from referring (or allowing others to refer) to their trademarks as generic terms used to describe the products generally. A company should use a trademark as an adjective to modify the generic name of the product (e.g., "Xerox® brand copy machine"), either with or without the word "brand," and should avoid using or allowing others to use the trademark as a noun (e.g., "make a xerox") or a verb (e.g., "please xerox this for me"), and should also follow the general trademark usage guidelines set forth herein.

A trademark should be followed by a notice that it is being used as a trademark whenever possible. Although not required by law, such a notice serves a useful function by placing the world on notice of the trademark owner's claim of exclusive right to use the mark. Such a notice is also necessary before the trademark owner can collect any monetary damages for infringement of the mark (although even without such notice the trademark owner can still seek injunctive relief, that is, a court order prohibiting another party from using the mark).

At a minimum, a notice should be used the first time the mark is used as a trademark on advertising, product packaging or other documents. Before registration in the United States Patent and Trademark Office, the notice should be TM for a trademark or (SM) for a service mark (e.g., JeepTM), or the mark can be followed by an asterisk that refers to a footnote that indicates the owner's claim of rights in the mark, e.g., "JeepTM is a trademark of DaimlerChrysler Corporation." Once the trademark is registered, but not before then, the products, labels or advertising materials bearing the mark may carry the legend "Registered in the U.S. Patent and Trademark Office," "Reg. U.S. Pat. & Tm Off." (both of which commonly appear as footnotes), or the registration symbol ®.

Improper use of the registration symbol ® can result in loss of rights, and in some other countries, fines or imprisonment. Care should be taken to comply with the laws of the jurisdiction where the goods or services bearing the mark are being sold, especially where the mark is registered in some jurisdictions but not others.

It is also helpful to indicate in some way who owns the mark. Although this is not required by law, doing so may be helpful in the event of a dispute concerning trademark ownership. If ownership of the mark is not obvious, use an asterisk to indicate ownership in a footnote (e.g., "JeepTM is a trademark of DaimlerChrysler Corporation" or, after registration, "Jeep® is a registered trademark of DaimlerChrysler Corporation").


Federal and State Trademark Registrations


Our attorneys practice extensively before the United States Patent and Trademark Office (USPTO), the federal agency that issues trademark registrations. We have obtained state trademark registrations on behalf of many clients as well. We handle all aspects of the trademark registration process, from the preliminary trademark search and drafting of the application to the maintenance of the registration once the certificate of trademark registration is issued. It is often necessary for us to make creative arguments before the USPTO or state agency in order to successfully register a trademark, and we have a strong track record of obtaining impressive results in this area.

The federal trademark registration process and answers to some frequently asked questions concerning trademark registrations are outlined below. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific questions about trademark law should be directed to an attorney in our Trademark Practice Group.

Federal Registration Process

A party can apply for federal registration of a trademark in the United States if it is using the mark in commerce or has a bona fide intent to do so. The trademark registration process can be generally summarized as follows:

  1. Application filed in the United States Patent and Trademark Office ("USPTO")
    • Intent-to-Use ("ITU") application, or Use application
  2. Application examined by a trademark examining attorney at the Patent and Trademark Office
    • Application approved for publication, or
    • Application rejected (the applicant has 6 months to respond to the rejection, after which the rejection may be withdrawn and the application approved for publication).
  3. Application published for opposition in the Official Gazette
  4. Parties wishing to oppose the application have 30 days to oppose registration of the trademark, or to seek an extension of time in which to do so (up to 120 days from publication)
    • If there is no opposition to Use Application, a Certificate of Registration is issued
    • If there is no opposition to the ITU Application, a Notice of Allowance is issued and the applicant has up to three years (in six-month periods) to file a Statement of Use, after which time a Certificate of Registration is issued
    • If an opposition is filed, the case is transferred to the Trademark Trial and Appeal Board for resolution
  5. Registrant must submit an affidavit of continuing use between the fifth and sixth anniversary of registration, and may submit an affidavit of incontestability at the same time
  6. Certificate of Registration is valid for a ten-year period, and must be renewed every ten years, by submitting an application for renewal and an affidavit of continuing use.


Priority and Constructive Use on Nationwide Basis

Perhaps first and foremost of the benefits afforded by a federal registration is the nationwide priority date afforded by filing an application with the USPTO. Historically, trademark rights in the United States arose solely from actual use of a mark in connection with goods or services, and priority in those rights dated from the actual date of first use, and depended upon the geographical extent of the use. Now, however, the filing of a federal application--even an ITU application--gives the applicant the benefit of "constructive use" on a continuous and nationwide basis, as of the date of filing, against everyone except those with prior rights. Constructive use is contingent upon actually obtaining the registration. This benefit is extremely useful where the goods or services are distributed in only a limited geographical area, or where use is not continuous in any one particular geographic area (but is continuous vis-à-vis the U.S. as a whole). It is also very useful in the case of intent-to-use applications, where a priority date can be established even before actual use.

Presumption of Validity

A registration carries with it a presumption that the registration is valid, and that the owner has the exclusive right to use the mark.



Once an affidavit of incontestability has been filed (after the registration has become five years old), a registration becomes "incontestable," which means that certain attacks can no longer be made against the registration. Although the actual effect of this status in any given case can be determined only after a thorough and technical consideration of all the available facts, it is without question that incontestability can be an important defensive advantage.

Discouraging Potential Infringers

An important practical benefit of a registration is the fact that the USPTO may rely upon a registration to reject a third party's application for a similar mark, thus discouraging potential infringers from proceeding with their plans. Where a third party chooses to conduct a trademark search prior to filing an application, a registration makes it more likely that the potential infringer becomes aware of a blocking registration, likewise discouraging infringers.

Use and Intent-to-Use Applications

Before November 1989, U.S. applicants could not file an application for federal trademark registration until they had actually used a trademark in commerce. Upon filing a "Use application," an applicant informs the USPTO of the date the mark was first used in commerce. This presents problems where a company might expend great effort in preparing to use a mark, only to have a third party leap ahead in priority by actually using the mark first. Intent-to-Use applications available since November 1989 allow for the filing of an application based upon an intent to use the mark in commerce, with priority generally dating from the date the application is filed. However, although one can proceed through the entire trademark application process based solely upon an intent to use a mark, an actual Certificate of Registration will not issue until the mark is actually used. As noted above, an applicant has up to three years from the Notice of Allowance in which to use the mark and obtain a registration. One may file either an ITU or Use application, and may convert an ITU application into a Use application.

Section 44 Basis For Registration For Non-U.S. Nationals

Non-U.S. nationals, in addition to relying upon the ITU and Use applications described above, can rely upon Section 44 of the trademark statute, which allows non-U.S. nationals to file an application based solely upon ownership of a foreign trademark registration in their home country and an intent to use the mark in the United States. In the case of a Section 44 application, a registration may issue without any use of the mark in the United States, although use must eventually be made of the mark, or the resulting registration may be subject to cancellation for non-use. A Section 44 basis for registration can be combined with a regular ITU or Use application.


The costs associated with obtaining trademark applications are quite reasonable. USPTO fees for trademark applications are based upon an international classification system, which classifies goods and services according to 45 classes, including classes such as "Chemicals" and "Paper Goods." The application fees, which are based on the number of classes in the application, are set forth on the USPTO web site at, and in 37 C.F.R. sec 2.6; the fees are periodically changed by the USPTO. No fee is charged for registration, although in the case of ITU applications, there is a fee to convert the application to a Use application, a fee to file a Statement of Use (necessary to obtain a registration), and a fee for each of five possible six-month extensions for filing a Statement of Use. Other miscellaneous fees may apply in particular cases.

As noted above, between the fifth- and sixth-year anniversaries of registration, an affidavit of continuing use must be submitted. In addition, under certain circumstances, an affidavit of incontestability may be submitted. Renewal of the registration is required at 10-year intervals. The fees for affidavits of continuing use and incontestability, and renewal applications, like the application fees, are based on the number of classes in the registration.

State Registrations

In addition to federal registrations, it is also possible to apply for state registrations of trademarks. The benefit of such registrations varies from state to state, and is limited to the particular state in which the registration is obtained. In some states, there is no stringent examination of applications, such as is done in the case of federal registrations. Where there is a direct conflict between state law and federal law, federal law will control. For these reasons, federal registrations are much preferred to state registrations.

However, in some cases, such as where a federal registration cannot be obtained, state registrations are desirable, as they may enhance trademark rights on a state-by-state basis, and may discourage potential infringers by appearing in trademark search reports. State registrations typically involve only minimal fees.

Secretary of State Filings

Businesses may register to do business, or may incorporate or form a partnership, in one or more states, thus "registering" the name of their business with the secretary of state in these states. Such registrations do not constitute trademark registrations, and should be considered wholly apart from federal or state trademark registrations. While many states do check for name conflicts, there is no direct or substantial trademark significance to such secretary of state filings. Unfortunately, many businesses do not realize this lack of trademark significance, and fail to take appropriate steps to protect their trademarks solely because they believe they are already protected by these secretary of state filings. It is highly recommended that formal trademark protection be obtained, in the form of a federal or state registration, whenever a secretary of state filing is made.


Foreign Trademark Registrations


We can register our clients' trademarks in almost every country in the world. We have obtained trademark registrations for our clients in the United Kingdom, France, Germany, Italy, Sweden, Spain, Benelux, Japan, Korea, China, Saudi Arabia, Korea, Mexico, Argentina, Brazil, Canada, and many other countries. Under the Madrid Protocol, which recently went into effect in the United States, we can obtain, on behalf of a client who owns a U.S. trademark application or registration, an International Registration that can cover over 60 foreign countries, by filing a single application through the United States Patent and Trademark Office. The Community Trademark Act, which provides for a unitary trademark system of registration in the European Union (the Community Trademarks, or "CTM" system), has enabled our clients to acquire trademark rights in 25 European countries by filing a single trademark application. Our trademark attorneys can advise on the particular benefits or disadvantages of International Registrations and CTM registrations. After a foreign certificate of trademark registration is issued, we maintain the registration by tracking the renewal dates through our sophisticated docketing system.

When selecting trademarks, companies should consider the possibility that it may one day want to use the marks in countries other than the United States, and in non-English speaking countries. If a mark is to be used worldwide, proper consideration should be given to whether the term may have an unintended meaning in other languages. In addition, although trademark protectability issues, such as genericness, descriptiveness and suggestiveness, are similar from country to country, there are local variations in how these issues are legally analyzed. Thus, marks which may be considered descriptive in some countries may be considered protectable in others. Translation issues can affect how these issues are resolved. For example, suggestive English words and phrases may be considered descriptive or even generic once they have been translated into another language. Due care should be taken in the selection of marks to avoid these problems.

One way to avoid the risk of problems with foreign trademark usage is to conduct trademark searches in the countries where a mark is most likely to be used. Searching must be done on a country-by-country basis. However, professional trademark search firms often offer search packages which combine a number of single country searches into a single search at a substantial discount from the per-country fees. Searching can be complicated by the need to have search results translated.

Trademark laws vary from country to country and, in the absence of protection under one of the international conventions, trademark protection must be sought separately in each country. Canada, for instance, is not yet a signatory to the Madrid Protocol, and therefore U.S. applicants can obtain a registration covering Canada only by filing a separate application there. Even where the Madrid Protocol system is an option, it has potential drawbacks (such as its reliance on the underlying U.S. registration), which must be weighed against its benefits. Where the client cannot or chooses not to file an application for an International Registration, we obtain foreign registrations using an international network of foreign associates. Taking advantage of the Madrid Protocol and the Community Trademark Act gives rise to a number of technical issues, and it is highly advisable to seek the advice of an attorney well-versed in this area.

In many foreign countries, trademark rights depend entirely upon successful registration of a mark with the local trademark office. In such countries, registration provides crucial defensive rights with respect to the ability to continue using the mark in each country, as well as important offensive rights against infringers, since a registration is a prerequisite for filing suit against infringers.

The decision regarding the countries in which to seek protection is often guided by economic considerations. The value of a trademark depends to a great extent upon the level of commercial activity associated with the mark. Where a mark is used in a particular country in connection with substantial sales of goods over a long period of time, the value of a trademark easily justifies the cost of obtaining and maintaining a registration. While difficult to measure, one way of analyzing the value of a trademark is to consider the consequences of being forced to change the name of a product, which is the possible result if trademark rights are not carefully established and maintained. Another analytic approach is to weigh the value, in any given country, of having the right--or not having the right--to stop competitors from using the mark on competing goods. A company should seek protection in as many foreign countries as is warranted by its business circumstances.

To learn more about trademark protection abroad, contact an attorney in our Trademark Practice Group.


Trademark Licenses and Transfers


Many of our clients earn their living licensing or franchising their brand-name products, processes and services. Many other clients are growing companies that must transfer their trademarks (along with the associated goodwill) in connection with periodic asset sales, structural changes and reorganizations. We work closely with our clients to ensure that the licenses, assignments and other documents necessary to accomplish our clients' objectives are properly prepared, and that the goodwill represented by these valuable trademarks is not lost or diluted in the process. We also assist in the valuation of trademarks for purposes of asset sales, mergers and acquisitions.


Administrative Proceedings Before the Trademark Trial and Appeal Board


Our attorneys vigorously enforce and defend our clients' trademark rights before the Trademark Trial and Appeal Board (TTAB), an administrative tribunal that resolves disputes concerning the registration of trademarks by the United States Patent and Trademark Office. We have successfully opposed the registration of trademarks by third parties in the TTAB and, conversely, prevailed against third parties who have attempted to prevent our clients from registering their trademarks. We also engage in trademark cancellation proceedings before the TTAB, whereby one party seeks to cancel a certificate of trademark registration already issued to another. Our attorneys work closely with clients to keep them informed of TTAB proceedings and ensure that our advocacy efforts complement the clients' business strategies.

A trademark opposition proceeding is filed by a party who wishes to oppose another's attempt to seek federal trademark registration of a given mark. A trademark opposition proceeding is somewhat similar to civil litigation in that there is a discovery period, an opportunity to file for summary judgment and a trial period. Opposition proceedings concern only the registration of trademarks, and not their use. Therefore, it is not possible to obtain an injunction from the TTAB to prevent another party from using an infringing mark. At a client's request, we will "police" its trademarks by reviewing the Official Gazette, a weekly publication of the United States Patent and Trademark Office containing marks sought to be registered, and inform the client of any similar marks that have been published for opposition so that the client can determine whether to initiate an opposition proceeding.

A trademark opposition proceeding is somewhat similar to civil litigation in that there is a discovery period, an opportunity to file for summary judgment and a trial period. The TTAB does not hold live trials, however, but conducts them on paper using the submissions of the parties and deposition testimony taken for that purpose. Thus, the stages of a trademark opposition are the same as the stages of a civil action for trademark infringement (as outlined under Trademark Litigation) except that an opposition proceeding does not involve a motion for preliminary injunction or the presentation of witnesses at trial for live testimony. A cancellation proceeding is similar to an opposition proceeding, but seeks cancellation of an existing trademark registration that has already been issued.

If you would like further information concerning opposition or cancellation proceedings in the TTAB, or have any questions concerning the above materials, please contact an attorney in our Trademark Practice Group.

Group Presentations
  Julia Huston moderated a roundtable discussion of false advertising cases at the annual meeting of the International Trademark Association , Chicago, April 29, 2007