What is a Trademark?
by Timothy A. Frateschi
A trademark is a word, name, symbol or device
used in trade with products or goods to indicate their source
and distinguish them from the goods and products of others.
A service mark identifies and distinguishes the source of a
service rather than goods or products. The terms “trademark”
and “mark” are commonly used to refer to both trademarks
and service marks.
Under law, if you own a trademark, you have the
right to prevent others from using a confusingly similar mark
to sell their product or services. In order for a mark to be
considered confusingly similar, the purchaser of a good or service
must believe the goods or services they are purchasing are provided
by a different company than the one actually selling them. The
term used for this is “riding the coat-tails of another”
- using the advertising, marketing and investment of another
company to sell your products.
Is registration of my mark required?
No. You can establish rights in a mark based
on legitimate use of the mark. If you have been using a mark
in commerce and it is well recognized, you can prevent others
from using the same mark without registering it with the United
States Patent & Trademark Office (USPTO).
However, owning a federal trademark registration
provides several advantages:
-
Notice to the public of the registrant’s
claim of ownership of the mark;
-
A legal presumption of the registrant’s
ownership of the mark and the registrant’s exclusive
right to use the mark nationwide
-
The ability to bring an action concerning
the mark in federal court;
-
The use of the U.S registration as a basis
to obtain registration in foreign countries; and
-
The ability to file the U.S. registration
with the U.S. Customs Service to prevent importation of
infringing foreign goods.
With common law protection, none of the
above are afforded the mark’s owner.
When can I use the trademark symbols TM,
SM and ®?
Any time you claim rights in a mark, you may
use the “TM” (trademark) or “SM” (service
mark) designation to alert the public to your claim, regardless
of whether you have filed an application with the USPTO. However,
you may use the federal registration symbol “®”
only after the USPTO actually registers a mark, and
not while an application is pending. Also, you may
use the registration symbol with the mark only on or in connection
with the goods and/or services listed in the federal trademark
registration.
Is there a form for filing my application?
Yes. By using the Trademark Electronic Application
System (TEAS) available at the USPTO website (www.uspto.gov),
you can file your application directly over the Internet. You
may also mail or hand-deliver a paper application to the USPTO.
An attorney is not necessary to apply for a
trademark. However, if you prepare and submit your own application,
you must comply with all requirements of the trademark statute
and rules. An application must include the following elements:
-
Applicant’s name;
-
Name and address for correspondence;
-
A clear drawing of the mark;
-
A listing of the goods or services; and
-
The $100 filing fee per class for at least
one class of goods or services.
The trademark application should include your
basis for filing. Most applicants base their application on their
current use of the mark in commerce, or their intent to use their
mark in commerce in the future.
Generally, acceptable use is as follows:
For goods: the mark must appear on the goods,
the container, or displays associated with the goods, and the
goods must be sold or transported in commerce.
For services: the mark must be used or displayed
in the sale or advertising of the services, and the services
must be rendered in commerce.
If you have already started using the mark in commerce, you
may file based on that use. The application should include a
“specimen” showing use of the mark in commerce.
A specimen is an actual example of how you are using
the mark in commerce on or in connection with the identified
goods and/or services. This is not the same as the drawing of
the mark, which merely represents what you are claiming as the
mark.
If you have not yet used the mark, but plan to do so in the
future, you may file based on a good faith or bona fide intention
to use the mark in commerce.
After an application is filed, the assigned Examining
Attorney will search the USPTO records to determine if a conflict,
i.e., a likelihood of confusion, exists between the mark in the
application and another mark that is registered or pending in
the USPTO. The USPTO will not provide any preliminary search
for conflicting marks before an applicant files an application.
The principle factors considered by the Examining Attorney in
determining whether there would be a likelihood of confusion are:
To find a conflict, the marks do not have to be
identical, and the goods and/or services do not have to be the
same. It may be enough that the marks are similar and the goods
and/or services related.
Before you apply to register your mark, you should
search the USPTO records to determine if any party is already
claiming rights in a particular mark. You may conduct a search
on-line at the USPTO web site. You should know, however, that
an on-line search does not guarantee that confusingly similar
marks will be identified. In order to be more certain, you can
hire an attorney to undertake a more thorough search and examination
of your mark to determine if there is a conflict. Such trademark
examinations will typically cost between $400-$1,000.
In addition to likelihood of confusion, an Examining
Attorney will refuse registration if the mark is:
-
Primarily merely descriptive or deceptively
misdescriptive of the goods/services;
-
Primarily geographically descriptive or primarily
geographically deceptively misdescriptive of the goods/services;
-
Primarily merely a surname; or
-
Ornamental.
PUBLICATION FOR OPPOSITION
If the Examining Attorney raises no objections
to registration, or if the applicant overcomes all objections,
the mark will be approved for publication in the Official Gazette,
a weekly publication of the USPTO.
The USPTO will send a Notice of Publication to
the applicant. Any party who believes it may be damaged by registration
of the mark has 30 days from the publication date to file either
an opposition to registration or a request to extend the time
to oppose. If no opposition is filed or if the opposition is unsuccessful,
the application enters the next stage of the registration process.
If the mark is published based upon the actual
use of the mark in commerce, the USPTO will normally register
the mark and issue a registration certificate about 12 weeks after
the date the mark was published.
If the mark is published based upon a bona fide
intention to use the mark in commerce, the USPTO will issue a
Notice of Allowance about 12 weeks after the date the mark was
published. The applicant then has six months from the date of
the Notice of Allowance to either:
-
Use the mark in commerce and submit a Statement
of Use; or
-
Request a six-month extension of time to file
a Statement of Use.
If the Statement of Use is filed and approved,
the USPTO will issue the registration certificate. You may
continue to file Extension Requests every six months. However,
you must use the mark and file a Statement of Use within three
years of the date the Notice of Allowance issues.
With the advent of computers and the Internet,
registering your trademark with the USPTO has become much easier
than in the past. While companies spend thousands of dollars in
advertising and building a name for their product or service,
they very often neglect to spend the relatively minimal amount
of time and funds necessary to protect their marks. If your company
does not diligently pursue protection of their mark, under common
law they will lose the rights to it. This is especially true for
marks that become part of our every day speech, like aspirin,
styrofoam, and thermos which all at one point were brand names
that lost their protection because their owners did not diligently
pursue other companies that used these names on their products.
Don’t let this happen to your mark.
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