WHAT IS A TRADEMARK?
A trademark is a word, phrase, symbol, or design, or combination of words, phrases, symbols, or designs, that identifies and distinguishes the source of the goods of services of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this section the terms “trademark” and “mark” are used to refer to both trademarks and service marks whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.
In the most basic terms, trademarks are connected to usage. You must be actually using the name in interstate commerce, i.e., doing business outside of your own state, in order for your mark to be federally registered. If you see a trademark with the ®, that mark has been registered with the U.S. Patent & Trademark Office (“USPTO”). If you have a business with no intention of doing interstate commerce, you can file for a state trademark that grants protection within the state.
BEFORE CHOOSING A NAME
An excellent resource for researching previously granted trademarks and pending applications is the USPTO website. An initial quick search of the USPTO trademark database can be very helpful before choosing a company name or a product name. However, once you have narrowed down your choice of trademark, it is highly recommended that a full trademark search be conducted by a professional search firm, thereby eliminating any unnecessary expense or time in trying to register an unusable mark.
ESTABLISHING TRADEMARK RIGHTS
Federal registration is not required to established rights in a mark, or even to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. 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 USPTO stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress.
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 USPTO has the ultimate right to register that mark. The USPTO’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 have begun use of the same or similar marks without knowledge of one another and 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 federal registration can provide significant advantages to a party involved in a court proceeding. The USPTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.
Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is cancelled.
USE OF “TM,” “SM,” AND “®” SYMBOLS
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 USPTO. It is improper to use this symbol at any point before the registration issues.
TYPES OF APPLICATIONS FOR FEDERAL REGISTRATION
An applicant may apply for federal registration in three principle ways:
1. An applicant who has already commenced using a mark in commerce may file based on that use (a “use” application).
2. An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an “intent-to-use” application). For the purpose of obtaining federal registration, commerce means all commerce that may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as “use in commerce.” If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the USPTO before the USPTO will register the mark.
3. Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.
United States registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws. The USPTO cannot provide information or advice concerning protection in other countries. Interested parties may inquire directly in the relevant country or its U.S. offices or through an attorney.
WHO MAY FILE AN APPLICATION?
The application must be filed in the name of the owner of the mark; usually an individual, corporation, or partnership. The owner may submit and prosecute its own application for registration, or may be represented by an attorney. Applications may be filed via the Internet.
SEARCHES FOR CONFLICTING MARKS
An applicant is not required to conduct a search for conflicting marks prior to applying with the USPTO. However, some people find it useful. In evaluating an application, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.