Trademark Basics

What is a Trademark?

A trademark is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or 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. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services. A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.

Establishing Trademark Rights

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 Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. (See below, under “Types of Applications,” for a discussion of what is meant by the terms commerce and use in commerce.) Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, 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 PTO has the ultimate right to register that mark. The PTO’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 a federal registration can provide significant advantages to a party involved in a court proceeding.

The PTO 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 canceled.

Filing Process

On average, a trademark application takes as long as 18 months to register. However, once a trademark filing date has been established, a trademark owner can commence enforcement of a trademark by demanding that others who have adopted a trademark after the filing date cease and desist from using the trademark.

Due to subjectivity involved in examining a trademark application, there is no guarantee that any trademark will register. However, the chances of registration may best be determined by conducting an extensive trademark search before filing an application.

Once an application is filed, it would take anywhere from six to seven months before it is examined by an Examining Attorney, who may then refuse an application if it is not “perfect” when filed. If an application is refused, an applicant is then given six months to file a response. In some cases, an application may be suspended. Suspension normally occurs where there are one or more prior filed trademark applications that are relevant to the consideration of a trademark, and which must first register or abandon before examination of an application can continue.

Once a response to a refusal is filed, it can take anywhere from a couple of weeks to a couple of months before the response is considered by the Examining Attorney. If the response is acceptable, the application is then approved for publication. If the response is not acceptable, and assuming that no new issues are raised, the Examining Attorney will then issue a Final refusal. A Final refusal would then give the applicant six months to either draft an acceptable response or file an appeal with the Trademark Trial and Appeal Board.

Once an application is approved for publication, a publication date is set which would give potential opposers 30 days to file a notice of opposition or a request for an extension to file a notice of opposition. Once the 30 days has passed with no opposition, the application may register several months later, unless the application was filed based on an INTENT-TO-USE. An INTENT-TO-USE application is one in which use of a trademark had not commenced on the date the application was filed.

If an INTENT-TO-USE application was filed, then after the 30 day publication period, a Notice of Allowance is issued giving the applicant six months to either show that the trademark is being used (by filing a Statement of Use) or request an extension for an additional six months to file a Statement of Use. Once a Statement of Use is filed, the Examining Attorney will examine the statement to determine whether or not it is acceptable.

If the Statement of Use is accepted, the trademark application would then proceed to registration. If it is found to be unacceptable, the trademark applicant would be given six months to satisfy any objections the Examining Attorney may have before the application can proceed to registration.

Benefits and Advantages

Registering a trademark with the United States Patent and Trademark Office is not mandatory. However, there are several advantages to registering a trademark.

Firstly, consumers often purchase products or services based on a trademark because they have heard the trademark mentioned by others or because they have seen advertising for the goods or services. In the event a competitor uses the same or similar trademark, confusion among consumers may result, and the trademark owner with subordinate rights may be forced to change his trademark. Years of investing in advertising and the goodwill associated with the trademark may be lost.

Registering the trademark with the U.S. Patent and Trademark Office confers upon the trademark owner a legal presumption of the trademark owner’s exclusive right to use the trademark nationwide on or in connection with the goods and/or services identified in a trademark registration. This legal presumption means that the law already recognizes the registered trademark owner as the rightful owner, unless others can prove otherwise.

A registering a trademark with the U.S. Patent and Trademark Office serves to discourage others from adopting the same or similar trademark. Many persons conduct a preliminary trademark search of the U.S. Patent and Trademark Office database before adopting a trademark. If they discover that a trademark is already filed or registered, they may opt to choose another trademark that is not confusingly similar to one that is already filed or registered. This could save a trademark owner hundreds of thousands in potential legal fees by minimizing the risk of a future law suit resulting from two owners using the same trademark.

A trademark registration may be recorded with the U.S. Customs Office to prevent importers from selling goods under the same or similar trademark.

Finally, a registered trademark provides a trademark owner with the ability to bring legal action in federal court as trademark registered with the U.S. Patent and Trademark Office are governed by the U.S. Trademark Act (“Lanham Act”).

Types of Applications for Federal Registration

An applicant may apply for federal registration in three principal 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 which 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 a 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 PTO before the PTO 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.

For information regarding applications based on international agreements please call the information number provided on page 4. A 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 PTO 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 of a mark controls the nature and quality of the goods or services identified by the mark. See below in the line-by-line instructions for information about who must sign the application and other papers. The owner may submit and prosecute its own application for registration, or may be represented by an attorney. The PTO cannot help select an attorney.

Filing Fees

The filing fees for a trademark application depend on the number of classes identified in an application. The U.S. Patent and Trademark Office has categorized all goods and services under certain international classes. For example, electronic goods are in class 009, clothing are in class 025, furniture are in class 020, advertising and retail services are in class 035, toys and games are in class 028, telecommunication services are in class 038, etc.

Foreign Applicants

Applicants not living in the United States must designate in writing the name and address of a domestic representative — a person residing in the United States “upon whom notices of process may be served for proceedings affecting the mark.” The applicant may do so by submitting a statement that the named person at the address indicated is appointed as the applicant’s domestic representative under §1(e) of the Trademark Act. The applicant must sign this statement. This person will receive all communications from the PTO unless the applicant is represented by an attorney in the United States.

Searches for Conflicting Marks

An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO. 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.

To determine whether there is a conflict between two marks, the PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same.

Laws & Rules Governing Federal Registration

The federal registration of trademarks is governed by the Trademark Act of 1946, as amended, 15 U.S.C. §1051 et seq.; the Trademark Rules, 37 C.F.R. Part 2; and the Trademark Manual of Examining Procedure (2d ed. 1993).

Other Types of Applications

In addition to trademarks and service marks, the Trademark Act provides for federal registration of other types of marks, such as certification marks, collective trademarks and service marks, and collective membership marks. These types of marks are relatively rare. For forms and information regarding the registration of these marks, please call the appropriate trademark information number indicated below.

Use of the “TM,” “SM” and “(r)” 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, (r), may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues. Please omit all symbols from the mark in the drawing you submit with your application; the symbols are not considered part of the mark.