Your Concerns Addressed by Experienced Trademark Attorneys
What is the difference between a trademark and a service mark?
Trademarks are words, phrases, symbols, designs, or any combination thereof that helps identify the source of a specific product or good. Service marks are similar to trademarks, but identify the source of a specific service. Services, by definition, are performed activities, either for pay or otherwise, and can be performed by either a business or a person for the benefit of others. Often the term “trademark” is also used to describe a service mark.
What is a certification mark?
A certification mark is used to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of the goods or services or that the work or labor on the goods or services was performed by members of a union or other organization. The owner of a certification mark controls use of the mark, but a certification mark is used by persons or entities other than the owner to indicate certain standards are met by their goods or services. The owner
Can my design be a trademark?
Yes. A design can be a trademark, so long as it is used to identify and distinguish a source of the goods and/or services.
How do I get a trademark?
Trademark rights can arise from the actual use of the mark or from filing for registration of the mark with the United States Patent Trademark Office (USPTO). Though federal registration is not required, it secures additional benefits over the mere use of the mark.
There are two related but distinct types of rights in a trademark: the right to register and the right to use. While the right to register is granted by the USPTO to the first party who either uses a mark in commerce or files an application, the right to use a mark can be more complicated to determine, and can only be decided by federal courts. This is particularly true when two parties began use of the same or similar marks without knowledge of one another, and when neither has federal registration. If the issue is litigated, a federal 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 trademark litigation.
What are the benefits of registering a trademark?
There are many benefits provided by federal registration:
- Evidence that will be accepted as correct until proven otherwise (“prima facie”) of owning a registered mark, and owning exclusive rights to use the registered mark in the U.S.
- Upon the date of registration, constructive notice of your ownership of the mark is established, and no one will be able to claim to have begun use of the mark in ignorance of your registration
- Your pending application or completed trademark registration will be searchable by others, which could prevent trademark conflicts before they occur
- It may provide access to the federal court system
- If litigated, you may be entitled to recover attorney’s fees from the opposing party
- If litigated, you may be entitled to initiate a seizure action against the counterfeit goods with help from the U.S. Marshall
- If necessary, you may take action to stop the importation of infringing goods with help from the U.S. Customs authorities
- May be used as collateral if needed and is easily transferrable
What is involved in the trademark registration process?
The trademark process starts by submitting your application to the USPTO.Though an application may be filed at any point, filing an application does not guarantee registration. To increase your chances of securing a registered trademark, it is encouraged that you work with a skilled lawyer.
Your application is received and reviewed by the USPTO. A trademark examiner may reject the application for procedural or substantive issues. An applicant is permitted to respond to the rejection with amendments, arguments, or necessary evidence to overcome the rejection. Multiple rejections may issue during examination and an applicant may eventually appeal an adverse decision by the trademark examiner to the Trademark Trial and Appeal Board for review.
After examination and prior to registration, all marks must be published in the Official Trademark Gazette. For a 30 day period after publication, any third party who may be affected by registration of the mark is allowed to oppose the registration. Once the opposition period has passed withoutincident or once an applicant has successfully overcome all oppositions, the mark may register. If the mark is filed on an intent-to-use basis, the applicant must still file a Statement of Use prior to registration.
Are there other ways of protecting my trademark other than through federal guidelines?
Though federal trademark registration is ideal for many individuals, there are other alternatives. If you are planning to only use your trademark in your state, you may wish to file a state registration. Filing for state registration simply means that you will not have the right to prevent others from using your trademark outside of your state.
How long does it take to go through the application process?
The time frame for the application process will range on a case-by-case basis, depending on the circumstances involved. Typically, the process from start to finish takes anywhere from six months to eighteen months.
I see the ‘™’, ‘®,’ or ℠’ symbols after a mark. What do these mean?
The ™ (trademark) or the ℠ (service mark) designation can be used by an individual claiming rights in a mark. The mark will be used as a sign to prove the claim to the public. Having a registration or filing an application for registration will not be needed in order to use these symbols.
The ® (registration symbol) is only permitted for use when the mark is officially registered in the USPTO. If this symbol is used prior to registration of the mark, it can be considered improper. State registration will not allow you the right to use the ® symbol.
How long does trademark protection last?
Registration lasts for 10 years and may be renewed for subsequent 10 year periods. Once registered, proof of continued use must be provided periodically to the USPTO in order to maintain the registration.
Prior to adopting a trademark, what actions should I take?
Trademarks can be used if the mark is not confusingly similar to a currently used mark or a mark that has been registered by another entity. To identify potential conflicts or problems before they arise, it may be advisable to speak with a skilled trademark attorney. They can help obtain a trademark clearance search and discover any potentially conflicting marks before you adopt the trademark.
What is a trademark search?
Trademark searches may be customized for unique goals. Knock-out searches may cover exact matches on file at the USPTO, while more complex searches may identify all similar marks used in connection with similar goods or services through a query of all trademark registrations and trademark applications on file at the USPTO, state registrations, domain names, and databases of company and trade names..
If my property is protected by a federal registration, will it be protected internationally?
Unfortunately not. In order to be granted international protection, you will need to register your mark in every country in which you would like to establish protection. An attorney can assist in establishing a cost effective strategy to protect your mark internationally.
Can trademarks protect an internet domain name?
So long as the internet domain identifies or distinguishes the source of products, goods, and/or services, a trademark registration can be used for its protection. Because all websites contain the same opening sequence of a URL (http://www.), and the top-level domain name (such as “com,” “net,” or “org”), these specific elements are not identifiers of the source of goods or services.
Take Advantage of Unique Trademarking Opportunities Today
A trademark lawyer is experienced and well versed in all laws and regulations pertaining to trademarks. Competent legal counsel can be the difference between approval and rejection in your application process.
Call a trademark attorney today to get started on your trademark process!