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Trademark Resource Center :: Quick Links
What is a Trademark?
Frequently Asked Questions about Trademarks
Ten Reasons to Register a Trademark
Recommended Steps when Selecting a Trademark
Top Ten Things to Do when You Own a Trademark Registration
Domain Names and Metatags may not Establish Trademark Rights
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WHAT IS A TRADEMARK?
Trademarks and service marks are words, phrases, symbols, sounds or product configurations that allow consumers to identify the source, origin, sponsorship or affiliation of a product or service. Consumers use trademarks and service marks to select products and services that they believe have a given quality based upon the consumer's past experience or other knowledge of the products and services offered under the same trademarks and service marks.
Protectable trademarks and service marks allow their owners to develop "good will" in products and services without the fear that another party will come later to trade off that "good will". Often times, this "good will" is the most important asset of the company. Rights in a trademark or service mark can be acquired in two ways. The traditional way is to be the first user of the mark. The second way is to file an intent to use registration application with the United States Patent and Trademark Office and timely use the mark. In other words, rights in a trademark or service mark go to the person who first uses the mark or files an intent to use application.
Although rights can be acquired through the use of a mark, substantial additional rights are gained through federal registration of the mark. For more information about why to register a trademark, click here. |
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Frequently Asked Questions about Trademarks
1. What is a trademark?
A TRADEMARK is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs which identifies and distinguishes the source of goods.
2. What is a service mark?
A SERVICE MARK is word, phrase, symbol or design, or combination of words, phrases, symbols or designs which identifies the source of services, that is, activities, which are performed by a person or business for the benefit of a person or persons other than himself, either for pay or otherwise.
Often the term "trademark" is used to describe a service mark.
3. Can a design be a trademark?
Yes, if it is used to identify and distinguish the source of goods and/or services.
4. What is a certification mark?
A certification mark is a mark that its owner permits others to use in commerce to certify, for example, a mode of manufacture or quality. The UNDERWRITERS LABORATORIES mark is an example of a certification mark.
5. How do I get a trademark?
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress and subsequent use of the mark in commerce. Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.
There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties began use of the same or similar marks without knowledge of one another and WHEN neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding . The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.
6. Why should I register my trademark?
A federal registration can provide substantial benefits, including the following:
(1) The registration would be prima facie evidence of the validity of the registered mark, of your ownership of the mark, and of your exclusive right to use the mark throughout the United States;
(2) The registration provides constructive notice of your claim of ownership of the mark throughout the U.S., meaning that as of the date of registration, no one can claim to have begun to use the mark in ignorance of your use;
(3) The pending application and registration are readily searchable by others, which may prevent a problem before it occurs;
(4) In a dispute, the registration gives you access to the federal court system, which can be important;
(5) In a dispute, the registration may entitle you to recover attorney's fees from the opposing party;
(6) The registration may entitle you to undertake a seizure action against counterfeit goods using the U.S. Marshall;
(7) The registration can be used to block the importation of infringing goods by U.S. Customs authorities; and
(8) The registration can be used as collateral if needed and is easily transferable.
7. How do I register my trademark?
Submitting an application with the PTO starts the process. Merely submitting an application does not guarantee registration.
8. What happens after an application is filed?
The first communication that we will receive from the PTO will be a Filing Receipt which will confirm receipt of the application, assign a filing date, and assign an application serial number. The filing receipt is usually mailed to us within four to eight weeks after the application is received.
The next step that will occur in the PTO will be the examination of the application by a Trademark Examiner. The time frame for this procedure can vary widely, and it may be as long as twelve months before we hear anything further from the PTO. An applicant is entitled to submit additional evidence and arguments to the Examining Attorney in an effort to overcome the rejection. This process will continue until the application is either abandoned or allowed.
Prior to final allowance of a trademark registration application, the U.S. Patent and Trademark Office publishes the mark in its Official Trademark Gazette. This is to allow others to object to the registration of the mark. Once the mark is published, interested parties who may be affected by the registration will then have thirty days within which to file an opposition to registration of the mark or seek an extension of time within which to file an opposition.
If the application was based upon use and no opposition is filed, the registration will be issued shortly thereafter. If no opposition is filed and the application was filed based on an intent to use, the next step is to file a Statement of Use proving when the mark is first used by the applicant. Once the Statement of Use is filed, the registration will issue.
9. How much does it cost to register a trademark?
The cost for filing the application to register in one class will typically be in the range of $775.00, including government filing fees. Filing in multiple classes will cost an additional $425.00 per class, including government filing fees.
There will be additional attorney's fees incurred after the filing of the application as we receive communications from the U.S. Patent and Trademark Office and report to you on the progress of the application. These fees will be invoiced monthly at our normal hourly rates until such time as we are instructed to stop work on the application. The amount of fees incurred will depend in part on the response of the Trademark Examiner to the application to register. Also, if the application is filed on an intent to use basis, a Statement of Use will have to be filed after the application is approved. The cost associated with preparation and filing of a Statement of Use is estimated to be $275.00 plus a filing fee of $100.00 per class.
10. What about a state registration?
A state registration can be beneficial if you do not intend to use your trademark outside of the state. A state registration will not give you rights to keep others from using the mark outside the state. It is best to consult with an attorney to determine whether your needs will best be met by a state or federal registration.
11. What do the symbols 'TM', 'Ò', and 'sm' after the mark mean?
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the mark is registered. A state registration does not give one the right to use the ® symbol.
12. How long does the process for the application and prosecution take?
Generally, the process takes between six months and eighteen months.
13. How long does a trademark last?
Registration is for a period of 10 years and can be renewed indefinitely for periods of 10 years. However, an affidavit proving continued use of the mark must be filed during the 6th year of registration to prevent cancellation of the mark. An unregistered mark can last for as long as the mark is being used to indicate origin.
14. Is there anything I should do before adopting a trademark?
A trademark can be adopted and used with reasonable assurance if the mark is not confusingly similar to a mark previously used or registered in this country by another. Thus, it is advisable to obtain a trademark clearance search and opinion of counsel to determine whether there is a conflicting mark before you begin using a mark as trademark development and advertising can be very expensive. A search may identify potential conflicts before large expenses are incurred and minimize the risk of infringing someone else's mark.
15. What does the search cover?
Our trademark search is based on a computer accessed search of the following databases: trademark registrations and trademark registration applications on file in the United States Patent and Trademark Office as of approximately two weeks before the date of the search; trademarks registered with the secretaries of state in each of the fifty United States and Puerto Rico; the Trade Names Database; the Thomas Register of Company and Product Names; and the Electronic Business Directory (an on-line directory of approximately 8 million businesses and professionals throughout the United States). We also conduct a search of Internet Domain Names registered by Network Solutions, Inc. Where appropriate, the search is expanded to include standard variations of the mark, both in appearance and sound, and focused in product and service areas related to that indicated by you.
16. How much does a search cost?
For a word mark, a search and opinion will typically cost $525. If there is a design portion in the mark, we will quote a fee after reviewing the design.
17. Can I conduct my own search?
Yes, however the PTO database only includes federal registrations and applications. It does not include state registrations or any databases that might reveal uses of unregistered trademarks and thus cannot be considered to be a thorough clearance search.
18. Do I need to hire a lawyer?
This is what the United States Patent and Trademark Office advises: "If you are ready to apply to register your trademark, we strongly advise that you contact an attorney who is experienced in trademark prosecution. The PTO does not maintain a roster of trademark attorneys. An attorney who is a member in good standing of a state bar association may prosecute your application for trademark registration. The PTO cannot aid in the selection of an attorney and does not provide specific endorsements or recommendations of private attorneys."
19. What is the Trademark Classification System?
Trademarks are not issued for general goods or services. For example, a trademark application for only "Boffo"-brand action figures would not give the owner of the trademark the right to "Boffo"-brand laundry detergent. The PTO has ordained trademark classifications for both categories of goods, so one who wishes to obtain proper trademark registration on both categories would need to file a trademark application that includes a description in words of both types of goods. Moreover, the PTO requires a separate fee for each type of goods to be covered under the trademark registration (as discussed above).
20. Does a U.S. Trademark Registration protect my mark in other countries?
No. You must register you mark in each country in which you wish to protect it. We can help you protect your mark in almost any country in the world.
21. Can an Internet domain name be used as a trademark?
Yes, if it is used to identify and distinguish the source of goods and/or services. Generally, domain names are used to provide an indication of the location a web site on the Internet and cannot serve as a trademark. If a domain name is used to identify and distinguish the source of goods and/or services, however, the domain name can be used as a trademark. Note that in this regard, the beginning of the Uniform Resource Locator (URL), e.g., http://www, and the top-level domain name (TLD), e.g., the term "com" or "net," may not be used to identify or distinguish the source of goods and/or services because all Internet domain names must include "http," "www," and a TLD. |
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Ten Reasons to Register a Trademark
1. The registration would be prima facie evidence of the validity of the registered mark, of your ownership of the mark, and of your exclusive right to use the mark throughout the United States.
2. The registration provides constructive notice of your claim of ownership of the mark throughout the U.S., meaning that as of the date of filing your application, no one can claim to have begun to use the mark in ignorance of your use.
3. The pending application and registration are readily searchable by others, which may prevent a problem before it occurs.
4. In a dispute, the registration gives you access to the federal court system, which can be important.
5. In a dispute, the registration may entitle you to recover attorney's fees from the opposing party.
6. The registration may entitle you to undertake a seizure action against counterfeit goods using the U.S. Marshall.
7. The registration can be used to block the importation of infringing goods by U.S. Customs authorities.
8. The registration can be used as collateral if needed and is easily transferable.
9. The registration may allow you to prevent another from registering your mark as a domain name.
10. The registration adds teeth to a cease and desist letter when you discover someone wrongfully using your trademark. |
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Recommended Steps when Selecting a Trademark
1. Select a mark that is distinctive. In other words, select a mark that describes neither the goods or services that you are offering nor the characteristics of those goods or services. If you want to tie in your goods or services and the mark, use something like "Acme Anvils." The "acme" may be distinctive while the "anvils" portion tells your customers what you are selling. Also, avoid using your name or a geographic term for your mark.
2. Look at your industry to determine whether your competitors are using the mark or a similar mark.
3. Go to the Patent and Trademark Office website and do a "quick and dirty search" to discover obvious problems. Beware that a search of the PTO website is not necessarily determinative one way or the other. For example, "acme" may not be registered in connection with anvils but may be registered in connection with a similar product that would preclude you from using the mark. Also the confusingly similar "acmen" may be registered in connection with anvils but not "acme." Conversely, you may find "Acme" registered in connection with anvils but in fact the term "acme" is so commonly used that it is not protectable or the mark has been abandoned by the registrant. Therefore, this preliminary search is an indication but not the final word.
4. Do a domain name and internet search to see if anyone is using the mark in a manner that is similar.
5. Contact a lawyer to have the mark searched. This search should include a search of the U.S. Patent and Trademark records, state trademark records, and several business databases. Even though a mark may not be registered, a company's prior use could preclude your use of the mark.
6. Use the mark in a manner that will enable you to federally register the mark. Mere use on letterhead, business cards, and match books is not enough unless you are selling letterhead, business cards, and match books. If you are selling a product, place the mark on the product, the packaging for the product, or something that is shipped with the product. If you are selling a service, place the mark in ads, fliers, or brochures describing the service.
7. If you use your mark before it is registered, use the "TM" symbol in each instance where the mark is used in advertising, correspondence, or otherwise.
8. Register the mark. See the Ten Reasons to Register a Trademark.
9. Protect the mark. See the Top Ten Things to Do when You Own a Trademark Registration. |
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Top Ten Things to Do when You Own a Trademark Registration
1. Use the federal trademark registration symbol "®" in each instance where the trademark is used in advertising, correspondence, or otherwise.
2. Be diligent in enforcing your rights against any infringing uses of the trademark. While your registration confirms your rights in the mark, these rights can change over time through your use (or misuse) of the mark, and through the use by others of conflicting marks.
3. Establish procedures to identify and challenge the use by others of conflicting marks. At the very least, a cease and desist letter would be the first step in such diligence, once an infringing use is called to your attention.
4. Keep your attorney advised of any address changes as well as any changes in the ownership of intellectual property rights.
5. An affidavit must be filed during the sixth year of registration demonstrating continued use of this mark in interstate commerce; otherwise, the registration will be canceled. In addition, a similar affidavit can be filed at the same time that will allow the registration to become incontestable under the law. This gives the registrant increased rights against possible infringing uses.
6. Renew your registration. If the registration is maintained in force by filing confirmation of the continued use of the mark during the sixth year of registration, it will nevertheless expire ten years from the date the registration was issued. The registration may be renewed by an application filed for that purpose within six months prior to expiration of the registration, or within three months following that date.
7. If you license the use of any trademark to another, you must make sure that the license agreement provides a quality control provision so that you as the trademark holder can ensure that the good will in the trademark is being protected.
8. If you assign the trademark to another or receive a trademark by assignment, make sure that the assignment includes not only the trademark and the registration (if any), but also the good will associated with the trademark.
9. Notify your attorney as to any changes in the use of the trademark. For example, if you are using the trademark with new goods or services, you may need to file a new application. If you are using the trademark in connection with a new logo or typeface, you may also need to file a new application for registration.
10. Try to register your mark as a domain name. Given the expansion of e-commerce, you may wish to have a website in the future. |
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Domain Names and Metatags may not Establish Trademark Rights
The Ninth Circuit Court of Appeals in Los Angeles recently ruled that registration of domain names and limited email correspondence did not establish trademark rights (Brookfield Communications, Inc. v. West Coast Entertainment Corporation). Brookfield sold MOVIEBUFF software that was directed to consumers desiring entertainment industry news. When Brookfield attempted to register moviebuff.com, they discovered that West Coast owned the domain name. Subsequently, Brookfield was awarded a trademark registration for MOVIEBUFF. West Coast had earlier obtained a registration for THE MOVIE BUFF'S MOVIE STORE. Brookfield sued to prevent the launching of West Coast's moviebuff.com website.
The Ninth Circuit ruled that West Coast's prior registration of moviebuff.com did not constitute prior use for purposes of acquiring trademark priority. The use of moviebuff.com as part of an email address did not sufficiently identify or distinguish the marked goods and THE MOVIE BUFF'S MOVIE STORE was not closely related enough to establish rights to MOVIEBUFF.
The court further ruled that West Coast's use of moviebuff.com was likely to cause confusion based on the similarity of the marks, relatedness of the parties products and the simultaneous use of the internet for advertising. The Court gave almost no weight to ".com" as a distinguishing feature.
In considering the metatags, the Court ruled that the use of MOVIEBUFF as a metatag will result in what is known as initial interest confusion. That is, some people looking for Brookfield's products may be diverted from Brookfield's site to West Coast's site to the improper benefit of West Coast. The Court did, however, permit the phrase "movie buff" to be used as a metatag since the phrase is descriptive and used by the public regularly.
Please contact a Waddey & Patterson attorney if you have any questions related to this U.S. federal appeals court decision and how it may relate to your business' use of domain names and metatags.
PTO MOVE TOWARD ELECTRONIC FILING PICKS UP MOMENTUM
As part of its grand plan to encourage if not compel the use of its electronic filing system, the U.S. Patent and Trademark Office is implementing a new rule that discourages the now common use of U.S. Express Mail for the filing of documents related to U.S. Trademark Registration applications. As a consequence, Waddey & Patterson is implementing new policies, systems, and procedures that will place the Firm on the leading edge of capabilities in use of the PTO Electronic Filing System. When the PTO system is complete, Waddey & Patterson will be in a position to exploit all of its features for the ultimate benefit of its clients.
If you have any questions about how electronic filing will affect you, please feel free to contact us. |
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If you have questions about intellectual property law,
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