What Is A Trademark?

Trademarks are a form of intellectual property, but they are NOT interchangeable with copyright or patent. A trademark is a word or symbol that identifies the source of a product or service.

What is a service mark?

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 website, the terms “trademark” and “mark” refer to both trademarks and service marks. A service mark can be as wide and varied as a brand name, logo, a shape, letters, numbers, sound, smell, color or any other aspect that renders a unique and distinct image to a service.

What is a certification mark?

A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

What is a collective mark?

A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark, which indicates membership in a union, an association, or other organization.

What Are Trademarks For?

A trademark is a word, phrase, sound, logo, image or other device that identifies the source of your product or service.  Think of brand names you are familiar with. You may find the quality of a certain brand to your liking, so you look for that brand when you want to purchase that product. If you prefer X brand of salt, you will purchase X brand next time you run out of salt. You will not purchase Y brand if X brand is available.  Thus, a trademark provides the business owner with value because it encourages customer loyalty. This is called good will.

What Different Types Of Trademarks Are There?

Trademarks are for goods.  Service marks are for services.  There are common law trademarks and registered trademarks.  In the United States we have common law. This law recognizes rights in trademarks through use.  If you use a trademark to identify the source of your product or service, you establish common law trademark rights in the geographic are where you use the mark.  If you operate a barber shop in Denver, Colorado under the name ZEPPY CUTTER you will establish ZEPPY CUTTER as a common law mark for barber shop services in the Denver area.  No registration is required to establish common law trademark rights. But those rights are limited to the area where the mark is actually used.  Common law trademarks may be designated with the TM symbol, while common law service marks may be designated with the SM symbol.

Registered marks are those that have been issued a trademark registration certificate by the United States Patent and Trademark Office. One of the most important benefits of registering your trademark with the United States Patent and Trademark Office is that the registration gives you the presumptive right to use the trademark throughout the United States. Contrast this to the common law trademark that may only be asserted in those areas where it has actually been used. Once you have registered your trademark or service mark with the United States Patent and Trademark Office you should designate the registered mark with the ® symbol.  Registration is very important for any business that intends to provide products or services throughout the United States. Registration also allows you to easily apply for international trademark protection in many other countries and regions of the world, and if you file your international application within six months of your U.S. application you ordinarily can claim your U.S. filing date as the priority date for your claim to trademark rights in the countries or regions where your international application is filed.

Trademarks also differ in many other ways. Some trademarks are stronger than other trademarks based on the trademark itself (inherent strength) or its level of market penetration and consumer familiarity (market strength).  Arbitrary or fanciful marks— those that in no way are suggestive or descriptive of the product or service in connection with which they are used—have the greatest inherent strength.

Can I reserve a mark without actually using it?

Yes. 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. You do not have to use the mark before you file your application. An “intent to use” application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. The applicant will have to file the “Allegation of Use” form to establish the legitimate usage of the mark in commerce.

How Can I Get A Trademark?

You obtain trademark rights in the USA by using your trademark or service mark to promote or sell your product or service. When you use a trademark that is not registered by the United States Patent and Trademark Office, you should show you claim rights in the mark by placing the TM symbol immediately after the mark.

Why should a mark be registered?

Trademark registration on the Principal Register provides exclusive rights to prevent unauthorized use of the trademark. The main benefits of registering a trademark are that, it provides: a) constructive notice to the public of the registrant’s claim of ownership of the mark; b) a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration; c) the ability to bring an action concerning the mark in federal court; d) the use of the U.S registration as a basis to obtain registration in foreign countries; and e) the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

What Are Some Characteristics Of A Strong Trademark?

A strong trademark is not descriptive of the goods or services in connection with which it is used. A strong trademark is one that is arbitrary or fanciful in relation to the product or service.  For example APPLE is an arbitrary mark for computers.  SHCRUMPO would be a fanciful mark for anything.  A fanciful mark is a coined term with no meaning whatsoever.

Suggestive marks are not as strong as fanciful or arbitrary marks, but they have the advantage of being easily associated with the product or service without describing the product or service. Think of SWINGING for hammocks, for example.  A descriptive mark is one that describes the product or services it is used in connection with.  Think SWEET for sugar.  Descriptive marks are weak and difficult to enforce because others will claim they need to use the term to describe their competing goods or services.  Thus it is ordinarily best to select a suggestive, arbitrary or fanciful mark for your goods or services. The line between suggestive marks and descriptive marks, however, is not always clear.  One type of trademark you must never adopt is a generic name.  You simply can’t claim trademark rights to a generic term. Thus, if you tried to claim the rights to the alleged trademark APPLE in connection with apples, you would not have any success.  You can’t claim any rights to APPLE brand apples. It’s a generic term when used for apples.

What Are Closely Related Products?

This is a big topic, but in general, things that are used together or used for the same purpose, or sold in the same channels of trade may be considered related goods for trademark law purposes.  Think shoes and socks.  Wine and cheese.  Helmets and footballs.  Snails and frog legs.  We can advise your whether your proposed trademark is too similar to another trademark for a product or service that may be related to your product or service.

Trademarks are a form of property and as such people fight over them.  This is why you should always have a comprehensive trademark search conducted before you begin using or apply to register any new trademark.  It’s called looking before you leap. It’s always a good idea.

How Do I keep From Infringing On Another Trademark?

You must not adopt and use a trademark that is confusingly similar to another party’s prior used or registered trademark for similar goods and services.  Thus, if there is a BIG FAT brand of sandwich shops, you should not open a competing sandwich shop under the mark BIG HAT.  Otherwise the owner of the BIG FAT trademark might go after you on a likelihood of confusion (trademark infringement) claim.  You also must not use another party’s famous trademark in connection with any goods or services.  So even though COCA-COLA is not in the private investigator field, you must not commence business as COCA COLA PRIVATE EYES.  If you did, you would be arguably liable for dilution of the famous COCA-COLA trademark.

The best way to avoid adopting and using a trademark that infringes another party’s rights is through a comprehensive trademark search and Representative opinion letter.  Please note, however, that trademark searching can reduce your risk of adopting an infringing trademark, but it cannot eliminate it.

Why The USPTO May Refuse Your Trademark Registration Application?

The USPTO will refuse your registration if the trademark is merely descriptive or if it is too close to a prior registered or prior applied-for mark for related goods or services.

Various Reasons The USPTO May Reject Your Trademark Application

• The mark is a surname
• The mark is incapable of functioning as a trademark
• The mark is or includes a flag of a state or nation
• The mark identifies a living individual by using their name or likeness without their consent
• The mark is a foreign word the English translation of which is descriptive or generic for the goods or services
• The mark is a foreign word that is the equivalent of an English word that is already registered for the goods or services
• The mark is merely geographically descriptive of the goods or services (for example NEW YORK PURSES for wallets and handbags manufactured in New York City)
• The mark is deceptively misdescriptive of the goods or services (for example NEW YORK PURSES for wallets and handbags manufactured in China and imported by a company in California; or ALL NATURAL HEALTHY for yogurt with ingredients including artificial flavorings)

The USPTO formerly would refuse registration if it considered the mark to be disparaging, but this basis for refusal of registration has been held unconstitutional by the Supreme Court.

How Do I Get A ®

You can only use the little R in the circle if your trademark has been registered by the United States Patent and Trademark Office.  In order to obtain registration, you need to file a trademark application with the USPTO.  Preparing trademark applications is one of the most important services we offer.

Our firm takes meticulous care in the preparation of our clients’ trademark applications.  Attention to detail is critical.  A well-drafted TM application may proceed to registration without need for any further communication with the USPTO. This is ideal because it means the application may become registered quicker and for lower cost than an application that is subjected to challenges by USPTO examining representatives, or that requires clarifications in order to obtain approval from the USPTO.

What Is Trademark Clearance?

Once you have selected a new trademark and consulted with your trademark Representative, had a comprehensive trademark search conducted and gotten an Representative opinion letter as to the availability of your proposed mark for use and registration, you’re ready to proceed to the next step.  Assuming the Representative opinion letter indicates the proposed mark is available for use and registration, the next step may be the preparation and filing of a trademark application.  So, in a nutshell, trademark clearance is the process of determining whether a given mark is available for use and registration.

You cannot “trademark” a name. You can’t own a word.  But you can claim trademark rights to a word or phrase in connection with a specific product or service. In order to claim TM rights in a word or phrase, you need to make valid trademark use of the word or phrase you are claiming.

We can provide advice about the correct way to use your trademark to promote and sell your product or service so as to establish trademark rights and maintain your trademark rights.

Can I Claim A Scent As A Trademark?

Yes, you can claim a scent as a trademark. Anything – visual, aural, olfactory, or tactile – that can serve the purpose of designating the source of the product or service in connection with which it is used, can serve as a trademark.

Can I Claim A Color As A Trademark?

Yes, you can claim a color as a trademark. Anything – visual, aural, olfactory, or tactile – that can serve the purpose of designating the source of the product or service in connection with which it is used, can serve as a trademark.

Can I Claim A Musical Motif As A Trademark?

Yes, you can claim a musical motif as a trademark. Anything – visual, aural, olfactory, or tactile – that can serve the purpose of designating the source of the product or service in connection with which it is used, can serve as a trademark.

What is trademark infringement?

Trademark infringement occurs when a business uses the same or similar name in commerce in a way that may lead to confusion with the trademark owner’s service/product. Trademark infringement is based on this element of “confusion” that is a function of the mark’s meaning. In general, infringement does not require the infringer to be a competitor, but infringement requires a similar product. If there has been an infringement of your trademark, you can file a claim under the federal and state laws. As the plaintiff, you have the burden to prove that the use of a similar mark by the defendant has created a likelihood of confusion.

If my mark consists of foreign wording is it still capable of being registered in the United States?

Yes, marks consisting of foreign wording may be registered as trademarks in the United States. However, under the doctrine of foreign equivalents, the foreign wording may be translated to English when the USPTO examines the trademark application.

How long will it take to register the trademark with the USPTO?

The applicant should receive a response to the application from the USPTO within six months from filing the application. However, the total time for an application to be processed may be anywhere from a year to two years.

What is an Allegation of Use?

This is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner, to declare the use of the mark in commerce. An Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use and an Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use. The Allegation of Use must be filed along with, (a) a filing fee of $100 per class of goods or services, and (b) a specimen showing use of the mark in commerce for each class of goods or services listed in the original application.

When to file an Allegation of Use?

An Allegation of Use can be filed only, (a) on or before the day the examining Representative approves the mark for publication in the Official Gazette, or (b) on or after the day the USPTO issues the Notice of Allowance. An Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use and an Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use.