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Trademarks & Servicemarks What
is a Trademark or a Service Mark? Trademarks are words, shapes, numbers, slogans, sounds, smells or designs that identify products to consumers. Service marks identify and distinguish services to consumers. A Trademark or Service mark represents the commercial reputation of a product or service as embodied in word or design. Thus, Trademarks identify products while Service marks identify services. Trademarks and Service marks that are used in interstate or foreign commerce may be registered with the Patent and Trademark Office for Federal Trademark or Service mark Registration. What is the difference between a Federal and State Trademark or Service Mark? There are two types of Trademark or Service mark Registrations available, Federal or State. A mark registered under State law becomes a State Registered mark. A State Registration only prevents anyone in the State of the mark Registration from using the mark or any mark that is confusingly similar on similar goods or services. A Federal Registration generally prevents anyone throughout the entire United States from using the mark or any mark that is confusingly similar on similar goods and services. State Registrations of marks have limited protection compared to the Federal Registration. State Trademark or Service mark Registrations only protect the owners within State limits. Federal Registration of marks protects the owners throughout the entire United States. Thus, State registration is only appropriate if the owner is using the mark purely within intrastate limits. If Federal Registration can be obtained for a mark, there is usually no advantage of State Registration and Federal Registration should be obtained. How can I own a Trademark or a Service mark? In the United States, a Trademark ownership is acquired by using the Trademark in commerce. A Trademark or Service mark generally gives the owner the right to prevent others from using the same mark or confusingly similar mark on similar goods or services to represent a product or service similar to that of the trademark owner. What are common ways that a Trademark or Service mark can be confusingly similar on similar goods or services? The essence of Trademark law is to identify and distinguish one owner’s product or service from another’s. Trademarks and Service marks are symbols of quality and goodwill. Trademarks and Service marks help consumers select goods or products. Thus, owners of marks have an interest in preventing consumers from being confused as to the source of services or products. There are several types of tests that are used to determine if products or services are “confusingly similar” on similar goods or services. For instance, confusion may be before or after purchase of product or service. Confusion may be confusion of the endorsement or sponsorship of a product or Service. The likelihood of confusion is determined from the standpoint of an average purchaser. To determine if services or products are “confusingly similar” please seek legal counsel. What are the advantages of registering my Trademark or Service mark? If you own a Federal Trademark or Federal Service mark registration, you will have several advantages including constructive notice to the public that you own the mark. In essence, by registering your mark, you will have legally warned others that you own the mark. There will be a legal presumption that you have the exclusive right to use the mark nationwide with your goods or services. By registering your mark, you may deter a potential second comer from adopting a similar mark and thus avoiding expensive and time consuming litigation. Additionally, you will have the ability to bring an action concerning the mark in federal court. You may even be able to stop importation of goods or services that infringe on your mark. Furthermore, owning a United States Federal trademark or Service mark registration may be used as a basis for securing registration in some foreign countries . What does “TM” or “SM” on a product represent? If you intend to protect the name of a product, you should place a “TM” for Trademarks or “SM” for Service marks next to the mark on labels and in promotional material. This designation alerts the public that you are claiming a Federal Trademark or Federal Service mark, regardless of whether you have filed an application with the United States Patent and Trademark Office. Once you obtain a Federal Trademark registration on such a mark, the “TM” or “SM” symbol should be replaced with the ® symbol. However, you may use the federal registration symbol "®" only after the United States Patent and Trademark Office actually registers a mark. Also, you may use the registration symbol with the mark only on or in connection with the goods or services listed in the federal trademark registration. When do I have the legal right to use the ® symbol on my products or promotional materials? Legally, you may use the federal registration symbol "®" only after the United States Patent and Trademark Office actually registers a mark. You should use the registration symbol with the mark only on or in connection with the goods or services listed in the Federal Trademark registration. What is the application process? A Federal Trademark application must include several items such as the name and address of the applicant, a clear drawing of the mark, a specimen (actual example of how you are using the mark) and filing fees of $335 per class. Attorney fees are also required before any work commences. Once filed, only minor changes to the application are allowed. Any material changes will require a new application and a new filing fee. The application requires you to state your "basis" for filing a federal mark registration application. 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. If you file the registration application based on intent to use, you are required to use of the mark in commerce before the United States Patent and Trademark Office registers the mark; that is, after filing an application based on "intent to use," you must later file another document known as "Allegation of Use" form establishing actual use of the mark in commerce. Why do I need a Trademark or Service Mark search? In order to determine whether anyone is already using a particular trademark or Service mark, a search is typically conducted before the application for a Trademark or Service mark is done. How long does it take for a Trademark or Service mark to be registered? It takes about 6 months to 12 months after filing to get a Trademark or Service mark registered. How long does a Trademark or Service mark registration last? Trademark and Service mark registrations filed after November 16, 1989 are good for 10 years. However, for a trademark registration to remain valid beyond this 10 year period, an Affidavit of use, a renewal application and payment must be filed. What is “intent to use” Trademark or Service mark application? An applicant may file an application for federal registration based on either a bona fide intent to use a mark or the actual use of a mark in commerce. You may not file both “intent to use” application and an “actual use” application on the same goods or services on the same application. The filing procedure for an “intent to use” application requires the applicant to submit a statement known as a “statement of use” later during the application process. The “statement use” is a verified statement indicating that the applicant has actually used the Trademark or Service mark in commerce since the date of the application. How long does an Intent-to-Use applicant have to allege actual use of the mark in commerce? An applicant may file an Amendment to Allege Use any time between the filing date of the application and the time the mark is approved for publication. If an Amendment to Allege Use is not filed, then applicant has six months from the issuance of the Notice of Allowance to file a Statement of Use or the applicant may file for an extension of time. If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted. Can a foreign applicant file a United States Trademark or Service mark Application? Yes. If the country of origin (applicant’s home country) is party with the United States to a Trademark Convention, or extends reciprocity to United States Nationals, the foreign applicant may base their U.S application on the ownership of a foreign registration. The goods or services in the U.S. application cannot be broader than goods or services in the foreign registration. The foreign applicant must also appoint a domestic representative upon which service of process may be made in actions affecting the mark. What are the different classes of goods and services? Goods and services are grouped into several classes under the International Classification System. For instance, chemicals used in industries and science belong to class 1 goods, furniture belong to Class 20 goods and advertising services belong to class 35. How do I contest someone else using a trademark similar to mine? There are many ways to dispute use of your trademark or service mark by someone other yourself. You should consider contacting an attorney, preferably one specializing in trademark law. Also, please note time is of the essence. Can I transfer my Trademark or Service Mark to another person? Yes. A registered mark, or a mark for which an application to register has been filed can be transferred to a third party. Written assignments may be recorded in the U.S. Patent and Trademark Office for a fee. My Trademark or Service mark has changed since I registered the mark, how can I update the mark? You may amend the mark to reflect changes that do not materially alter the character of the mark. Generally, an amendment will not be permitted if the mark presents a different commercial impression from the mark as originally registered. An application for the proposed amendments must be filed which includes new drawings and a fee. May I register my domain name with the Patent and Trademark Office? Yes. However, to qualify for Trademark registration, the domain name must be used as a trademark to indicate source of goods or services and not merely to indicate the domain name address used to reach the website offering the company’s services. What is Uniform Domain Name Dispute Resolution Policy under ICANN? Domain Name Dispute Resolution Policy under ICANN is an administrative proceeding for Trademark owners to challenge domain names registered by others. This provides a forum for resolving disputes without having to go to court. Seek legal counsel for more information. Can a Trademark registration be cancelled? Yes. A trademark registration may be cancelled either by the court as a result of a civil action, or by the Patent and Trademark Office as a result of a cancellation procedure. Can my United States Trademark registration bar importation of goods bearing an infringing mark? Yes. A United States Trademark registration may bar importation of goods bearing an infringing mark. However, in addition to other procedures, the applicant should record their registration with the U.S Customs to obtain this valuable protection. Once I get my Trademark or Service mark registration what are some of the pitfalls that I can avoid? There are many ways to protect your mark such as protecting the mark from infringement, false advertising claims, special Internet considerations and many others. Please contact a Trademark lawyer for more information to avoid common pitfalls that can save you hundreds of dollars. If I am in another country other than the United States may I contact you for a Trademark or Service mark application in the United States on my behalf? Yes, but be sure to include your email address, a fax number, your full legal name and a phone number. Payment will be required in United States Dollars before any work commences. |