Many people assume they can protect their trademark simply by using the mark in commerce. It is true that you are not required to register a trademark to achieve some level of protection and that one establishes common law rights simply by using a mark in commerce.
However, having a federally registered trademark on the USPTO's principal register provides several advantages:
Federal registration also allows you to use the ® (the "Circle-R") symbol. Any time you claim rights in a trademark, you may use the TM (trademark) or SM (service mark) symbol to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you can only use the federal registration symbol ® after the USPTO has actually registered the trademark, not without an application or while an application is pending. Following registration, you can only use the ® symbol on or in connection with the goods and/or services listed in the federal trademark registration.
Not to use it. However, federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the trademark, a legal presumption of ownership nationwide, and the exclusive right to use the trademark on or in connection with those goods or services set forth in the registration. Federal registration also allows the owner of a trademark to sue for infringement in federal court and to stop the importation of infringing material.
No. However, the applicant's citizenship must be included in an application. If an applicant (such as a corporation) is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, he or she must choose which citizenship will be printed in the Official Gazette and on the Certificate of Registration.
Not formally. Certain countries, however, do recognize a U.S. registration as a basis for registering the trademark in those countries. Many countries maintain a register of trademarks and some will act to protect the holders of U.S. trademarks from activity that occurs abroad which would, if transacted in the U.S., infringe upon the owner's trademark.
Furthermore, a suit in U.S. Federal Court can be brought by a U.S. trademark owner against another U.S. citizen for exportation of goods wholly for sale abroad that would confuse foreign consumers as to whether the goods were those of the trademark owner.
Finally, the holders of "famous" trademarks may be able to block foreign registration of confusing (same or similar) trademarks abroad (e.g., someone other than Disney registering Mickey Mouse in Iran). Each country's laws about registration should be consulted.
Federal registration is not required to establish trademark rights. "Common law" rights arise from the actual use of a trademark without federal registration. Generally, whoever first uses a trademark in commerce has the ultimate right to use that trademark in that way. However, there are many benefits of federal trademark registration.
Only a trademark's owner can file an application for its registration. An application filed by a person who is not the owner of the trademark will be declared void. Generally, the person who uses or controls the use of the trademark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the trademark's owner.
It is hard to predict how long it will take for an application to mature into a registration since many factors can affect the process. Generally, an applicant will receive a filing receipt almost instantly after filing. In addition, you should receive an initial response from the US Patent and Trademark Office (USPTO) within approximately three months of filing the application.
However, the total application processing time may be anywhere from 6 months to a year, or even longer. Most applications are processed completely in slightly less than one year. Overall processing time depends on your basis for filing and any legal issues that arise in the examination process.
Current status on trademark applications and registrations can be obtained by accessing the Trademark Applications and Registrations Retrieval database online at http://tarr.uspto.gov/. To check on average processing times, please visithttp://www.uspto.gov/dashboards/trademarks/main.dashxml.
For a trademark registration to remain valid, a Declaration of Use must be filed: (1) between the fifth and sixth year following registration and (2) within the year before the end of every 10-year period after the date of registration.
Assuming that a Declaration of Use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term. Registrations granted on or after November 16, 1989 have a 10-year term. Trademarks can be renewed for additional 10-year terms. There is no limit to the number of times a trademark can be renewed, as long as use of the mark by its owner continues.
There are several ways to dispute use of your trademark by someone else. Because each situation has unique facts, you should consider contacting an attorney, preferably one specializing in trademark law. Onbic's Business Advantage Pro can put you in touch with an experienced attorney in this area.
Yes. All trademarks can be sold or assigned. The "goodwill" of any business associated with that trademark must be included in any such transfer. Even trademarks that are unregistered or are the subject of pending applications can be sold or assigned. Written assignments of registered trademarks are recommended, and may be recorded with the USPTO for a fee. The USPTO's Assignments page is www.uspto.gov/ebc/help_assignments_p.htm. Specific inquiries should be referred to the Assignment Division at (571) 272-3350.
When you file a trademark application, your proposed trademark will go through two main types of review. First, the USPTO will review your application to determine whether or not you have met the minimum filing requirements. Next, the application is forwarded to an examining attorney. (Note: this transition can take several months.)
The examining attorney will then review the application to determine whether it complies with all applicable rules and statutes and includes all required fees. A complete examination includes a search for conflicting trademarks (both registered and pending) as well as a review of the written application, drawing and any specimen. If the examining attorney decides, based on your application, that your trademark should not be registered, he or she will send you a letter, called an Office Action. This letter explains the reasons for the refusal and any technical or procedural problems with your application. Most often, you will have a chance to cure any deficiency in your application, other than a conflict with another trademark.
If minor corrections are all that is required for filing the trademark, the examining attorney may contact you by phone or email. If the examining attorney sends a written Office Action, you have six months from that letter's mailing date to respond with corrections or the application will be declared abandoned.
If your response to an Office Action does not overcome all of the examining attorney's objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, you can appeal to the Trademark Trial and Appeal Board (TTAB) for an additional fee. This board is an administrative tribunal within the USPTO.
Once your trademark application passes the examining attorney's review, your mark will be published in the Official Gazette. This gives the public an opportunity to object to the mark if they believe they will be damaged by that registration. If no objections are filed within 30 days of publication, the mark will typically be registered in 3-12 months. At that point, you are an official holder of a federally registered U.S. trademark.
Onbic includes a Basic Federal Direct-Hit Search with your application. This is a search of the USPTO database for potential conflicts with your trademark.
The government will not let you register a pre-existing name or one that is too similar to a name that has already been registered. This means a search of the USPTO database is essential before starting the registration process.
Yes. The examining attorney will search the USPTO records to see if a conflict exists between the trademark in your application and another trademark that is live and registered with or pending with the USPTO. In doing this, he or she will also look for other trademarks that might be confused with yours. The USPTO does not provide preliminary searches for conflicting trademarks before an application is filed.
In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the trademark is:
Registration of your company name as a trademark is the same for USPTO purposes as all other trademark registrations.
However, before you register your company name, you want to determine if your company name is already in use in your state. Your state will generally not let you use a name that is too similar to an already registered business. For this reason, whenever you consider registering your company name as a trademark, you want to research your state's database for registered corporations, LLCs and partnerships with similar names.
Onbic's U.S. Comprehensive Trademark Search can help you find these conflicts before starting a trademark application.
A service mark is simply a type of trademark. In fact, the words "trademark" and "mark" often refer to both trademarks and service marks. Trademarks help the government and consumers distinguish manufacturers of goods or products from one another. A service mark helps the the government and consumers distinguish service providers from one another. Common law service marks are accompanied by SM as opposed to the TM of common law trademarks. Both goods and services with federally registered trademarks use an ® symbol.
Onbic can help you apply to register your trademark or service mark with the U.S. Patent and Trademark Office in three easy steps. Get started today and protect your trademark!
You can usually obtain the protection of state trademark registration by applying for and paying a fee to the Secretary of State (or comparable office) in the state where you are using the trademark. However, federal registration provides more widespread notice to the public and in some cases, may supercede a filing at the state level. Federal registration also provides for greater benefits.
The choice between registering a trademark and a copyright is not always a clear one. Trademark and copyright registration are both means of protecting your intellectual property rights. There are, however, important differences between trademark and copyright protection.
Copyrights are a form of protection for the authors of "original works of authorship," including literary, dramatic, musical, artistic, and certain other creative works.
Copyright does not cover intellectual property such as titles, names, short phrases, and slogans; familiar symbols or designs; or mere variations of typographic ornamentation, lettering, or coloring. This type of intangible property is often more appropriately protected by a trademark. Think of memorable advertising slogans you have heard. Chances are these slogans are protected by a trademark of some sort, while they are unlikely to qualify for copyright protection.
A trademark protects a word, phrase, symbol or design (or a combination of these), that identifies and distinguishes the goods or services of one person or company from those of others.
Some things, such as more complex logos, may qualify for both trademark and copyright protection. This is because the amount of original authorship in a logo can vary greatly. Most highly recognizable logos are extremely simple objects, such as the Nike "swoosh," and would not qualify for copyright protection. However, a more ornate logo with a great deal of creative authorship might qualify for both trademark and copyright protection.
To protect the name of your company, your newly designed name, logo or a catchphrase, a trademark is probably what you need. To protect your latest painting, the next great American novel or even a brilliantly choreographed dance sequence, a copyright is probably the best route for you.
Whether you need trademark or copyright protection, Onbic makes the process quick and easy.
Appropriate use of a trademark is important to comply with federal law (and if applicable, state law). Trademarks include words, symbols or designs that specifically identify and distinguish the source of an owner's commercial goods. This means uses of the trademark that are likely to confuse the public as to whether the use is made by the owner or by another are generally prohibited.
Some trademark owners assume no one else has a right to independently use the mark in any capacity whatsoever. This is not necessarily true. One can refer to a trademark for a legitimate, noninfringing purpose as long as no more of the trademark is being used than is necessary for this purpose. Generally, trademark laws merely control commercial use of the name.
Under the trademark version of "fair use" doctrine, the more common and generic the word(s) are or have become in the English language, the less likely the trademark owner may be able to regulate them. This doctrine also protects "nominative" use of the trademark name, as is often done by competitors in marketing materials.
Trademark owners often have their own policies as to how their trademark may be used. Here are some typical ways in which use of a trademark by a non-owner might be authorized:
When setting up and maintaining a business, a business owner will need to accomplish many tasks, many of which involve filings with the state or states in which he or she wishes to do or is doing business. These filings include things like registering your business name, setting up a d/b/a, getting an EIN, etc. It is important that business owners understand that NONE of these things give them ANY trademark rights, and especially not federal trademark rights. ONLY use of a trademark to sell or advertise goods or services affords a business trademark rights, and ONLY federal trademark registration carries the benefits of federal trademark registration.
On the flip side, simply registering your trademark with the USPTO does not necessarily mean that someone has not already registered to do business under such a name with a state, since the USPTO does not search state business filings when determining whether your trademark is registrable. The USPTO also does not search to see whether someone else may already be using the name you are seeking to register as a trademark. For these reasons, Onbic strongly recommends a Comprehensive Trademark Search as part of your trademark package.
|Be specific and concise||I'm using this trademark for computer graphics software||Computer graphics software|
|Include field or topic where possible||Consulting services||Consulting services in the field of energy efficiency|
|Do not leave your description open-ended||Clothing, such as hats, scarves, gloves, etc.||Clothing, namely hats, scarves, and gloves|
|Do not include a trademark name||Computer game software for use on iPhones||Computer game software for use on mobile and cellular phones|
|Divide product or service list by class type||Hats, shirts, scarves, socks, and motorcycles||Clothing, namely hats, shirts, scarves and socks
Motor vehicles, namely motorcycles
Here are some important guidelines to follow when writing a list of products and/or services for a trademark application:
If registered, your trademark will be protected for use in connection with the products and services listed in your application. If you plan to apply for and protect your trademark to cover different products and/or services later, you will need to submit a new application for the additional items at a later time.
No. You can prepare and file necessary paperwork yourself, or you can use The Company Corporation to incorporate your business. If you are unsure if incorporating will benefit your business, please call us at 800-818-6082, our Business Specialists are happy to answer your questions.