You have questions, we have answers.
Here are a few answers to our most common trademark questions:
What is the difference between a trademark, patent, and copyright?
A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The word “trademark” is often used to refer to both trademarks and service marks.
A patent protects inventions or discoveries. It is a limited duration property right granted by the United States Patent and Trademark Office (USPTO) in exchange for public disclosure of the invention.
A copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture.
Do I need to register my trademark?
No. In the United States, a trademark owner obtains “common law” rights by being the first in a given market to use the trademark. A common law user can stop newcomers from using trademarks that are likely to cause confusion in the same market. The common law user may also challenge a federal trademark registration or application.
What are the benefits of federal trademark registration?
Owning a federal trademark registration on the Principal Register provides several important advantages over common law rights, including:
- A legal presumption of your ownership of the trademark;
- The exclusive right to use the mark nationwide in connection with the goods/services listed in the registration, which can mature into a conclusive right after 5 years of continuous use;
- A listing in the USPTO's database which will alert your competitors to your pre-existing rights in the trademark;
- The right to file a trademark infringement lawsuit in Federal Court;The right to recover enhanced damages and attorney's fees in Federal Court if the federal registration symbol ® is used;
- Public notice of the trademark regardless of whether the federal registration symbol ® is used, which defeats a claim that an infringer did not know about the trademark;
- The right to record the registration with the U.S. Customs and Border Protection Service to block counterfeits and infringing products at the port of entry;
- The ability to use the registration as a basis to obtain registration in foreign countries;
- A registration helps with the recovery of pirated domain names;
- A registration can be used as collateral for securing loans; and
- A registration makes your business more attractive to potential investors and buyers who can feel confident about the ownership of your intellectual property. Another benefit of the registration process is that trademark owners receive relatively quick feedback from the USPTO regarding possible conflicts with competitors, registrability issues, or other problems that may require choosing a different trademark. This can prevent wasting valuable time and resources on a trademark that ultimately cannot be registered and protected.
What is the difference between a state and federal trademark registration?
A federal trademark registration gives the registrant rights throughout the entire United States whereas a state trademark registration only gives the registrant rights within that particular state. As such, a state trademark registration only confers moderately more protection than a trademark user would already have received under the common law.
What is the Supplemental Register?
The Supplemental Register is the secondary register of trademarks maintained by the USPTO. It is reserved for nondistinctive marks that are capable of acquiring distinctiveness (i.e. “secondary meaning”), but have not yet done so.
A registration on the Supplemental Register does not provide all the protections of a registration on the Principal Register, but it does grant its owner the right to use the registered ® symbol when the mark is used with the products or services listed in the registration. A registration on the Supplemental Register will also block later-filed applications for confusingly similar marks for related goods.
Do I need an attorney to file a trademark application?
Filing a trademark application at the USPTO starts a legal proceeding. Although not required, most applicants hire attorneys like us who specializes in trademark matters to represent them in the application process and provide legal advice.
We can help before, during, and after the trademark application process. Before the application process, we can save you from future costly legal problems by conducting a search of federal registrations, state registrations, and “common law” unregistered trademarks before the application is filed. Searching is important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered.
During the application process, we can help with several things that could seriously affect your trademark rights, such as determining the best way to describe the goods and services and preparing responses to refusals to register that an examining attorney may issue. Finally, we can assist in the policing and enforcement of any trademark registration that may issue.
What is an Office Action?
After the application is filed, an examining attorney at the USPTO will review it to determine whether it complies with all applicable rules and statutes. If the examining attorney decides that a mark should not be registered, the examining attorney will issue an Office Action explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. The most common reasons for refusing registration are because the mark is:
- Likely to cause confusion with a mark in a registration or prior application;
- Descriptive for the goods/services;
- A geographic term;
- A surname;
- Ornamental as applied to the goods.
If the examining attorney sends an Office Action, a response must be submitted within six (6) months or the application will be deemed abandoned.
How long will it take for my mark to register?
The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.
How long does a trademark registration last?
The registration is valid as long as you timely file all post registration maintenance documents and pay any required fees.
What is the ® symbol?
The “®” symbol indicates that you have a federal trademark registration. It puts the public on notice that your mark is registered and that you have nationwide rights in it. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration and while the registration is still maintained.
What are the “TM” or “SM” symbols?
If you claim rights to use a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim of “common law” rights. No registration is necessary to use a “TM” or “SM” symbol and you may continue to use these symbols even if the USPTO refuses to register your mark.