Frequently Asked Questions
What's the difference between a patent and a trademark?
A patent protects new and nonobvious inventions whereas trademarks protect branding associated with goods or services.
What is a trademark?
A trademark is a source identifier. It can include any word, name, symbol, device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.
Trademarks are also important because they serve as symbols of quality assurance and good will associated with a particular company’s product or service. The quality assurance function requires the trademark owner to maintain consistent quality standards so that the consumer gets what he or she expects. Correspondingly, trademarks serve as symbols of good will because they help to ensure a producer that it, and not an imitating competitor, will reap the financial, reputation-related rewards associated with a desirable product being marketed and sold under a certain brand name.
Trademarks can consist of a variety of words and symbols. For example, trademarks can include the following:
• A design – such as the NIKE swoosh
• A product shape – such as the shape of the COCA-COLA bottle
• A number – such as 311 covering entertainment services provided by a popular music group
• A slogan – such as JUST DO IT associated with NIKE product lines
• A sound, color, or smell – such as the NBC chimes associated with NBC radio and television programming or the use of the color pink by Owens-Corning to identify its fiberglass insulation products
The critical element in all of these trademarks, whether they consist of words, designs, or numbers, is that they identify and distinguish one company’s products and/or services from another’s.
Please contact us if you have any questions about what can constitute a protectable trademark.
What are the benefits of U.S. trademark registration?
U.S. trademark rights originate when a mark is used in commerce in association with specific goods and/or services. When considering adoption and use of a particular mark, a company should consider pursuing a federal registration for the mark to more fully protect and promote that brand name. Although trademark rights depend on use and not registration in the U.S., there are a number of substantive and evidentiary advantages to registration, such as the following:
Nationwide rights to the mark
The right to bring suit in federal court
Prima facie evidence of continued use since the filing date of the application
Prima facie evidence of the validity of the registered mark and registration, the registrant’s ownership of the mark, and the exclusive right to use the mark in commerce in connection with the specified goods or services
Statutory remedies, such as mandatory treble damages and criminal penalties in counterfeit cases
Constructive notice of the registrant’s claim of ownership of the mark
The right to use the symbol ® next to the mark
The right to registration abroad based on registration in the United States
The ability to bar importation of goods bearing infringing trademarks by depositing the registration with U.S. Customs
“Incontestability” after 5 years of continuous use, which can preclude cancellation of the registration on the basis of prior use or descriptiveness
There are also significant intangible benefits associated with federal registration of a trademark. For example, by obtaining a federal registration, a trademark owner may deter a second comer from adopting a similar mark. In so doing, the registration effectively serves to preserve and promote the value of the mark, and may also help the trademark owner to avoid expensive and time-consuming litigation.
Furthermore, the federal registration also adds a greater degree of credibility to the trademark owner’s use of the mark. Namely, the official government stamp of approval symbolized by a registration offers a greater impression of legitimacy to competitors, courts, and juries alike.
Please contact me if you have any questions or would like more information about the benefits of U.S. trademark registration.
What are the procedures for U.S. trademark registration?
The USPTO offers applicants three primary options as the underlying basis for pursuing and obtaining registration:
A. Use-based Applications
A separate application must be filed for each mark an applicant wishes to register. In addition, if an applicant wishes to register more than one version of the same mark (i.e., a stylized or graphic version), a separate application must be filed for each version. The application must clearly identify the specific goods and services for which the registration is sought. It must also state whether the applicant has actually used the mark in commerce or has a bona fide intent to use the mark in commerce.
Use in commerce is defined by statute as “bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. In a use-based application, the goods must be transported from one state to another (interstate commerce) or between the U.S. and some foreign country, or used and sold in some territory controlled by the U.S. The registration procedures vary somewhat depending on whether the applicant files a used-based or intent to use application.
The procedure for obtaining registration for a use-based application includes:
Filing a trademark application, including a statement of use and one specimen;
Examination of the trademark application by the U.S. Patent and Trademark Office (“USPTO”) to determine:
That the mark acts as a mark, or is capable of becoming a mark; and
That the mark does not conflict with any previously registered mark.
Publication for opposition as to mark found registrable by Examining Attorney;
Opposition period for persons who believe they would be damaged by the registration to oppose or file an extension of time to oppose; and
Issuance of registration – about two to four months after close of opposition period.
B. Intent to Use Applications
The procedure for registration based on an intent-to-use application differs somewhat from a use-based application, and can be summarized as follows:
Filing a trademark application, including a declaration of bona fide intent to use the mark in commerce on specific goods or services;
Examination for registrability and, if acceptable, publication for opposition;
Issuance of notice of allowance following expiration of opposition period; and
Submission of a statement of use within six months of notice of allowance. Extensions of time for an additional thirty months may be obtained.
C. Applications Based on Foreign Applications or Registrations
The third basis for registration in the United States is an applicant’s ownership of a home country registration for the identical mark covering the same goods as claimed in the U.S. application. This basis can include the applicant’s claim of priority relying upon a prior-filed foreign application (in which case the U.S. application must be filed within 6 months of the filing of the foreign application); and/or the applicant’s prior home country registration.
Although an applicant may claim an earlier filed foreign application as a basis to obtain a priority date, the USPTO requires that any applicant claiming the benefit of a foreign registration must establish a “country of origin” in the country which has issued or will issue the relevant foreign registration. The country of origin is defined as any country in which the applicant has a bona fide and effective industrial or commercial establishment, or if the applicant has no such an establishment, the country in which the applicant is domiciled.
Please me if you have any questions or would like more information about the U.S. trademark registration process.
What is the proper use of TM, SM, and ®?
The initials TM are a recognized abbreviation for trademark. The ™ symbol, which is usually placed behind the mark, indicates that the owner claims the term as a trademark. It is not necessary to have a registration, or even a pending application, to use this designation.
In the event the mark is to be used in association with particular services instead of goods, the mark owner may use the SM symbol to designate a term as a service mark. A service mark is simply a trademark used to identify a service rather than a product.
As an alternative to using the ™ or SM symbols, a trademark owner can use a trademark credit line at the bottom of the text to denote ownership of a mark. For example, at the bottom of a webpage or marketing brochure which contains a particular mark, the owner can indicate ownership of that mark by including language such as “ZZZZ is a trademark (or service mark) of ABC, Inc.”
If the trademark is registered, however, the owner may use the ® symbol next to the term. The registration symbol, ®, may not be used until the USPTO has issued a Certificate of Registration for the mark. In all cases, the mark should be used consistently to enable it to develop significance as a “source indicator.”
Please me if you have any questions or would like more information about the proper use trademark symbols.
What is the value of trademark searches?
Before filing an application for a trademark registration, it is prudent for applicants to first conduct a trademark search to identify potential conflicts that might arise as a result of their adoption and use of a desired mark.
A search is also beneficial because it outlines the likely scope of protection available for the mark. If a search reveals numerous references to similar marks for similar goods or services, for example, then the proposed mark may be considered weak and the scope of protection narrow. In this sense, a trademark search helps to determine the potential level of difficulty associated with building brand equity in the mark moving forward.
Various searching options are available, from narrow searches conducted in-house to comprehensive searches performed by outside vendors, with the associated costs varying as a result. The more comprehensive the search, the greater the likelihood that potential risks associated with the adoption and use of a proposed mark will be identified. The typical types of searches available include the following:
Knock-out Search: Includes an online search for exact marks. Results are reviewed and analyzed, and an email summary of the conclusion regarding level of risk associated with adoption and use of proposed mark is provided.
In-House U.S. Trademark Search: Includes a more expansive online search of federal and state trademark databases for exact and similar marks, as well as a limited search of common law marks. Results are reviewed and analyzed, and a full written opinion detailing the level of risk associated with adoption and use of the proposed mark is provided.
Full U.S. Trademark Search: Includes a comprehensive search of federal, state, and common law trademark databases performed by a third-party vendor. It also typically includes a search of additional resources, such as corporate information databases, internet domain names, periodicals related to the field of goods/services to be covered by the mark. Results are reviewed and analyzed, and a full written opinion detailing the level of risk associated with adoption and use of the proposed mark is provided.
If a company contemplates introducing its products or services outside of the U.S., international searches should also be considered. These searches can be worldwide, by region, or by key countries. These searches can include International Trademark Directories such as the International Register offered by the World Intellectual Property Organization that provide comprehensive listings of active trademark registrations.