What is a trademark?
What is the difference between a trademark, a patent, and a copyright?
Trademarks are a way to safeguard the reputation and identity of a company, its brand and the products or services it offers. It’s like protecting the company name or logo. On the other hand, copyrights are meant for artistic works that display originality and creativity. Imagine a book, screenplay or painting. Lastly, patents exist to protect useful machines, processes or manufactured articles. Think of it as safeguarding an invention.
What is a service mark?
A service mark refers to any term, title, logo, design or collection of these elements that is employed or intended for use in business activities. Its purpose is to differentiate and establish the services offered by one provider from those provided by others while also indicating the origin of said services.
What is a certification mark?
A certification trademark refers to any word, name, symbol, device or a combination thereof that is utilized in commerce by someone other than the owner with their permission. Its purpose is to certify various aspects such as the regional or geographic origin, material used, manufacturing method, quality level, accuracy and other characteristics of goods or services. It can also indicate if the work or labor on those goods or services was carried out by members of a union or another organization.
What is a collective mark?
A collective mark refers to a trademark or service mark that is utilized or planned for use in commercial activities by the individuals who belong to a cooperative, association or any other collective group or organization. This includes a mark that indicates membership within a union, association or another similar organization.
What is a word mark?
A word mark trademark is a specific type of trademark that only includes text, such as letters or numbers, without any additional graphic design elements or logos. It’s a straightforward and widely used form of trademark that provides protection for brand names and slogans.
Word mark trademarks can consist of a single word, multiple words or a combination of letters and numbers. Some examples of popular word mark trademarks are “Coca Cola,” “Nike,” “McDonald’s,” and “Amazon.”
What is a design/logo mark?
If you wish to safeguard a visual design or an image, with or without accompanying text, like a creatively rendered logo, then you would seek to obtain a design trademark. This category is also referred to as “Special Form (Stylized and/or Design)” on the online application form provided by the United States Patent and Trademark Office (USPTO).
What can be protected as a trademark?
Trademarks can take many forms. Any object or symbol that effectively distinguishes the source of goods from others can serve as a trademark. However, for federal protection as a registered trademark, there are additional legal criteria to be met. These include using the trademark in commerce between states and ensuring it has enough distinctiveness.
My company is very small – why should I care about trademark registration?
It can be challenging for growing companies to manage their budget effectively, often leading them to overlook the importance of brand protection. However, marketing and establishing brand recognition are crucial for the success of a young business. When customers forget a company’s name, they are less likely to visit and if other businesses use the same name, customers may unintentionally choose competitors over you. While they might return eventually, there’s no guarantee that they will switch back – they could be content with the alternative. By registering your trademark, you safeguard your brand and prevent others from poaching your customers while also granting yourself the freedom to expand your business.
Furthermore, growing companies in industries like technology often rely on early stage funding. The ability to attract and secure funding depends on various factors, one of which is intellectual property. While patents are commonly associated with this aspect, trademarks serve as an affordable and straightforward method to transform customer loyalty and goodwill into valuable assets. When potential buyers consider acquiring your company, trademarks can significantly enhance their offer.
Do I have to register my company name or logo to obtain trademark rights?
No, however, opting for federal registration offers several benefits. By obtaining federal registration for your trademark, you gain the privilege to utilize the ® symbol. Additionally, this registration serves as a public notification of your ownership claim over the mark and grants you a legal presumption of nationwide ownership, along with exclusive rights to use the mark in relation to the goods or services specified in the registration. Moreover, having a federally registered trademark allows you the option to file lawsuits in federal court—a privilege not accessible with state or common law trademarks.
What are the benefits of federally registering a trademark?
When you register a trademark with the federal government, you are allowed to use the ® symbol. This registration serves as a public notice that you claim ownership of the mark, grants you nationwide ownership rights and gives you exclusive permission to use the mark in connection with the specified goods or services. Having a federally registered trademark also allows you to file a lawsuit in federal court, which is not an option for state or common law trademarks. In contrast, if you have a state or common law trademark, enforcing your rights relies on various state laws and your protection only extends as far as your geographical use of the mark.
How do I register a trademark?
In order to register a trademark, you need to submit a federal registration application to the United States Patent and Trademark Office (USPTO). Sometimes, submitting the application is sufficient. However, more often than not, additional work is required. This is because once the application is filed, it undergoes examination by a Trademark Examiner. Their role is to ensure that the application meets all legal requirements and does not infringe upon any existing registered trademarks. The Examiner may reject the application for various reasons, with the most common being that the proposed mark is too similar to an already registered trademark. If there are issues with your application identified by an Examiner, it’s important to respond appropriately; otherwise, your application may be abandoned. Once these issues are addressed correctly, the application will be approved for publication and will be published in an official publication for a period of 30 days. During this time, members of the public have the opportunity to object to the registration of your mark by filing a trademark opposition. If no objections are raised during this period, your mark will be successfully registered.
Do I need to sell products in every state?
The United States has a unique requirement for trademarks to be used in interstate commerce before they can be registered federally. In simpler terms, it means that your sales should have an impact on the overall US economy rather than just your local state’s economy. You don’t necessarily have to sell products in all 50 states, but it is generally expected that you sell across state lines. Moreover, it is important that your sales are not insignificant, symbolic or fabricated. You need to make genuine sales to real customers through fair transactions. Selling solely to close relations like family or friends would not suffice as evidence of legitimate interstate commerce.
How many products must I sell before registering a trademark?
Unfortunately, there isn’t a fixed set of rules to determine the specific sales volume that qualifies. It can vary depending on the situation. Sometimes, even a single product sold across state lines can be enough to register a trademark. On the other hand, it might require dozens or even hundreds of sales in other cases. It’s important to note that using a trademark just to reserve the name (token use) doesn’t count. For example, selling to your family or best friend would be considered token use. The key factor is whether your sales align with what is typical for your industry in terms of volume and frequency. If they are similar to what other sellers in your industry are doing, then they will likely meet the requirements.
Do I need a lawyer to file a trademark application?
No, while it might be a good idea to consider hiring a trademark lawyer, it is important to remember that trademark applicants are required to adhere to all the necessary rules and regulations outlined in the Trademark Act and Trademark Rules of Practice, even if they choose not to have legal representation. It is crucial that the trademark application is properly drafted as any errors or inaccuracies can result in serious consequences. If there are mistakes in listing the goods or services or if the mark itself is not accurately described, it usually means that a new application must be filed and the fees paid for the initial application cannot be refunded by the United States Patent and Trademark Office.
Can two companies have the same trademark?
It is entirely feasible for two companies to utilize the same trademark. However, if these companies manufacture or offer vastly different products or services, there won’t be any conflicts. The real problem arises when two companies employ similar names for similar goods. In such cases, it becomes challenging for the general public to differentiate between the two entities or discern one company’s product from another’s. On the other hand, if these companies sell completely different things, it becomes effortless for consumers to distinguish between them.
How long do trademark rights last?
Trademarks have the potential to endure indefinitely. Their duration is tied to their usage in association with the relevant goods. To ensure the registration remains active, periodic maintenance fees and filings are required by the Trademark Office. As long as the trademark is utilized appropriately and in compliance with its registration, while also fulfilling payment obligations for maintenance fees, the registration will remain valid.
What do I need to do after I register my trademark?
It is crucial to actively protect and monitor your trademark. This involves fulfilling maintenance requirements, such as paying fees and submitting regular filings to the United States Patent and Trademark Office, to confirm that you are still using your mark. Additionally, it is important to stay vigilant against any inappropriate or unauthorized use of your trademark. If your mark is used without your permission, its value can be diminished to the point where its legal rights may be compromised. This could pose challenges if you ever need to take legal action against someone who is infringing upon your mark. They could argue in their defense that you did not adequately monitor its usage and allowed others to freely violate it. Therefore, employing measures like a trademark watch service becomes crucial for detecting any instances of infringement. Another key aspect of safeguarding your trademark assets involves keeping an eye out for potential infringements within the marketplace. For more information on proper trademark maintenance, feel free to explore further resources.
Are there restrictions on how I can use “TM” or “SM”?
No, the use of the symbols “TM” or “SM” (representing trademark and service mark, respectively) may be subject to local, state or foreign laws. It is essential to consult the relevant jurisdiction’s laws. These designations typically indicate that a party asserts rights in the mark and are commonly used prior to obtaining federal registration. The TM or SM symbols also serve as an important notice, informing competitors or potential imitators of your commitment to safeguarding your trademark rights.
Are there restrictions on how I can use ®?
The ® symbol, known as the federal registration symbol, is only permitted for use once a trademark has been officially registered with the U.S. Patent and Trademark Office. It is important to note that the registration symbol cannot be used until the mark has completed the registration process. It is appropriate to use the federal registration symbol only on goods or services that have received federal trademark registration status.
Should I conduct a trademark search before filing an application?
Absolutely, conducting a trademark search is always a good idea, although it’s not mandatory. When you submit your application to the United States Patent and Trademark Office, they perform their own search and may bring up any existing registered trademarks that could potentially affect your application. Therefore, the purpose of conducting a pre filing trademark search is to identify those marks beforehand. By being aware of these marks, you can make adjustments to your own mark and avoid potential rejection. Additionally, the search might reveal that there are numerous marks already in your field, forcing you to consider whether filing a trademark application is advisable or not.
What is the difference between a drawing and a specimen?
A drawing represents the mark that the applicant wants to register. If the application is based on actual use, the drawing should accurately depict how the mark is used in practice, as shown by the trademark specimen. For applications based on a genuine intention to use, the drawing should illustrate how the applicant intends to use the mark. On the other hand, a specimen is an actual example of how the mark is used in real world situations on goods or services. Specimens can include labels, tags, packaging materials, brochures or websites. In applications based on actual use in commerce, specimens must be submitted along with an Amendment to Allege Use or a Statement of Use. Similarly, for applications based on a bona fide intention to use in commerce.
How does the application process typically progress?
The process of applying for a trademark registration starts by submitting an application to the United States Patent and Trademark Office (USPTO). This application includes details about the goods or services associated with the mark, information about the owner and a visual representation of the mark. In cases where the mark is already in use, additional evidence showing how it is used is also included in the application. However, if it’s an intent to use case, such evidence is not required. Sometimes, just filing the application is sufficient, but often more work is necessary. This is because once the application is submitted, it undergoes examination by a Trademark Examiner whose role is to ensure that all legal requirements are met and that no existing trademarks are infringed upon. The Examiner may reject the application for various reasons, with one common reason being similarity to an already registered trademark. If there are issues identified by the Examiner, a response must be provided; otherwise, the application will be abandoned. Once all issues have been appropriately addressed and resolved, the application gets approved for publication. It will then be published in an official publication for a period of 30 days. During this time frame, members of the public have an opportunity to object to registration by filing a trademark opposition.
If there are no objections, the mark will be officially registered.
Can I file a trademark before I have actually used the trademark?
Absolutely, it is possible to submit a trademark application even if you haven’t actually used your trademark yet. Trademark applications come in two forms; in use applications and intent to use applications. I sometimes refer to the latter as “pre use” applications. You can file an intent to use application as long as you genuinely intend to use the trademark on the specific goods or services mentioned in your application. This means that you should have solid plans, taken tangible steps or engaged in other legitimate business preparations towards introducing the trademark.
What is a trademark Office Action?
An Office Action from the Trademark Office is a formal letter addressed to you, the applicant. Its purpose is to bring up concerns regarding your trademark application and potentially reject it based on those concerns. If you fail to respond to an Office Action or if your response does not resolve the concerns, your application may be deemed abandoned.
Trademark Office Actions can cover a wide range of issues that need attention. They often point out if the trademark is descriptive or could cause confusion with another trademark. Sometimes, they raise technical concerns about how the application was written, how the trademark was described or how the goods or services were identified. Occasionally, the Trademark Examiner may request additional information about the trademark itself, as well as details about the associated goods/services or relevant industry practices. Regardless of what issues are mentioned in the Office Action, it is crucial to address each one diligently to ensure that your trademark application doesn’t become abandoned.
Will the Trademark Office send me a refund if I don't register my trademark?
Sorry, but the US Patent and Trademark Office doesn’t usually issue refunds except in very rare cases. If you happen to file a trademark application that is not up to par, requesting a refund won’t be an option. In most cases, when you want a refund, you’ll need to make a formal request. However, keep in mind that the filing fees you paid for your trademark application won’t be refunded by the Trademark Office. Essentially, by paying those fees, you’re compensating the Office for examining your application thoroughly. The Examiner will put in the work and deserve that filing fee, even if your trademark doesn’t end up getting registered; not all trademarks are eligible for registration. Unfortunately, applying for a trademark carries some risk (though it can be minimized) and if you submit an application that can’t be registered, you’ll have to forfeit the government filing fees.
How do I file international trademarks?
There are various ways to seek international trademark protection. One option is to file trademark applications directly with the trademark office of each country, with the assistance of associated foreign counsel. Alternatively, you can choose to file a centralized international application through the Madrid Protocol. This allows the applicant to designate their US trademark as a basis for protection in multiple countries across the globe.
What is the Madrid Protocol?
The Madrid Protocol is a system for trademarks that was created and is managed by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. This system allows individuals to file an international trademark application that can be applied to multiple countries. By using the Madrid Protocol, much of the administrative work is streamlined through the WIPO office, enabling communication between the applicant and national trademark offices worldwide.
Can I transfer a trademark to someone else?
Yes, it is possible to transfer a registered trademark or a mark for which an application to register has been filed. It is advisable to record the assignment of any trademark with the Trademark Office at the same time. Recording the sale has significant implications as it ensures the integrity of the mark for the buyer. When selling trademarks, they must be transferred together with the associated goodwill and cannot be sold independently. Formal transfer of trademarks is necessary in situations such as when one business acquires another, when one company takes over a product line from another, when a trademark owner passes away or whenever a new party assumes control of an old trademark owner’s business.
What if someone is using my trademark?
Ensuring the integrity of your trademark is crucial. One approach to achieve this is by ensuring that others do not utilize your trademark without proper authorization or in ways that surpass what you have allowed. It is possible to convince a competitor or infringer to cease using your trademark without resorting to confrontational legal measures and mutually agreeable resolutions can be reached. Regardless of the method employed, it is vital to maintain the quality of a trademark, as any diminishment can result in a loss of influence and worth.
I need more information about trademarks – where should I go?
If you’re in the process of choosing a trademark, I recommend reading this informative article that provides guidance on selecting a strong trademark. Additionally, you can visit the website of the United States Patent and Trademark Office, even though it contains a lot of information. Should you have any further inquiries, feel free to reach out to Sahil Malhotra, a trademark attorney based in Chicago & Washington DC. You can reach him directly at 773-234-1139 and he will personally respond or return your call.