If you’re a business owner seeking clear, straightforward information on trademarks and the USPTO, this book is a must-read. Highly recommended, it offers practical advice on whether and when to file a trademark with the USPTO, along with step-by-step instructions for registering a mark. Written in plain English with clear examples, it demystifies the process. In this blog post, you’ll find brief answers to 20 of the most common trademark questions. For more in-depth information, consider borrowing the book from your local library or purchasing it from online bookstores.
Source: NOLO Trademark Legal Care for Your Business & Product Name by Stephen Fishman – 11th Edition
20 Frequently Asked Trademark Questions
What does it mean to “trademark” a business or product name or logo?
When people say they plan to “trademark” a name or logo, they generally mean they intend to register the name or logo with the U.S. Patent and Trademark Office (USPTO). Though federal registration provides important benefits, trademark ownership is actually determined by who uses the mark first in a commercial setting. A trademark is created, and trademark ownership is established when someone uses a name, logo, or other symbol to identify goods or services in the marketplace.
What is the difference between a trademark and a service mark?
A trademark is any name, logo, symbol, or other device used to distinguish a product from competing products in the marketplace and to identify the product’s source. A service mark is any name, logo, symbol, or other device used to distinguish a service from other competing services in the marketplace and to identify the source of the service. Legally, there is no difference between the two; the terms “trademark” and “mark” are often used to refer to all types of marks, including service marks.
How long does it take to get a trademark registered?
The typical time it takes to federally register a trademark is between 12 and 18 months.
Suppose I register a trademark for a particular product. What happens when I want to use the same trademark for a different product?
Each product or service must be registered within one or more classes. If you begin using your trademark on a product or service in a different class than the one for which you originally registered your mark – for example, you use your logo on a paint product when you originally registered it for painting services – you should file another application to register the new use of the mark (in the appropriate class). However, you must check that the mark is not being used by another business for a similar product. If it is, you may need the assistance of a trademark attorney before proceeding.
Can I apply to register a logo, name, and slogan all in one application? What happens if I want to use them separately?
If you want to use and protect each separately, you should register each separately. However, you can – if you wish – register them as one trademark and claim rights for cumulative use.
What happens if I register my mark and later find out that someone else was already using the mark, but never got around to registering it?
If the other mark was being used nationally, as is the case with most catalog and internet sales, then your trademark registration may be subject to cancellation. In any event, the registration will not protect you from an infringement suit if the first user can establish that your use of the mark has created a likelihood of customer confusion. If the other mark was only being used locally, you will probably be entitled to use the name in any region of the country where the first user had not established a presence.
I’ve been told to do a trademark search before applying to register my mark. Why should I, if the USPTO does one when it gets my application?
In general, there are three good reasons:
– The filing fee for an electronic application for federal trademark registration ranges from $250 to $350 (current fees as of 08/01/2024) There is no point in filing an application – and paying these fees – for a name that the USPTO will reject because it’s already owned by someone else.
– It is up to you to decide whether the mark you eventually choose is both registrable and free from infringing use of an existing mark. The USPTO may find a potentially confusing mark in the course of its search but still decide to register your mark on the basis of its internal guidelines. However, the USPTO’s decision to register your mark doesn’t get you off the hook if the owner of the existing mark decides to take you to court.
– The USPTO search primarily covers the federal trademark register, which does not include trademarks that are in use but not registered. Because use, rather than registration, determines ownership, the USPTO search will not be as complete as your own search of both registered and unregistered marks.
What is a “common law” trademark, and what rights does it give me? A common law trademark is any device (name, logo, slogan, and so on) that is being used to identify a business’s goods or services in the marketplace and that has not been registered with the state government or with the USPTO. The owner of the common law trademark that is used in more than one state can use the federal courts to enforce its rights in the parts of the country where the mark is being used.
Why should I bother to register a trademark I’m already using on my business or products if I already have rights under the common law? It’s a lot easier to win a federal lawsuit against infringing later users by establishing certain presumptions. Presumptions are facts that you don’t have to prove in court and that the other side must rebut. Federal registration gives you two presumptions: that you are the mark’s owner and that the later user deliberately copied the mark. These presumptions also make it easier to prove infringement and collect damages and attorney’s fees.
Can I do the trademark application myself or should I hire an attorney?
Most people can handle their own trademark applications without attorneys. The USPTO provides easy-to-use instructions for filing your own trademark registration online using its Trademark Electronic Application System (TEAS) at its website https://www.uspto.gov. If however, you have questions that the USPTO or online registration help files don’t answer, you should consult with an attorney. Also, if the mark you are planning to register is unusual (a color, sound, or scent, for example), or if for some reason the USPTO doesn’t want to accept your application, you will need to consult with an attorney.
What if I find an exact match or near-exact match in my search? Can I still use my proposed trademark anyway? What’s the worst that can happen if the other trademark owner finds out about my use?
Practically speaking, if you are able to keep the dispute out of the court by immediately stopping your use of the mark, you may escape with only having to pay all or part of the trademark owner’s attorney’s fees incurred up to that point. This is usually true if you are a small business, because, the owner would have no reason to try to pick your pockets. However, the larger your business, or the more your business competes with the owner’s, the more likely it is that any settlement will also involve some cash to make up for the harm caused by your infringement, real or imagined.
If you are sued for damages, you may be ordered to pay:
actual money damages suffered by the owner as a result of your infringement, or the amount of profits you earned while using the mark.
punitive damages in the amount of three times the amount of actual money damages or profits awarded to the owner in bringing the infringement suit.
In addition, of course, the court may order you to stop using the mark, which may result in additional expense, as well as the need to rebuild goodwill around the new mark.
Can I register my domain name/internet website address as a trademark?
Yes, you may apply to federally register your domain name as a trademark, provided that it is being used to market goods or services on the Internet. If, on the other hand, the domain name is not used to sell goods or services – for example, it is only being used for personal or family reasons – registration will be denied.
What’s the difference between state and federal trademarks?
A state trademark is one that is used within the state and registered on the state’s trademark list. A federal trademark is one that is used in more than one state or in any commerce regulated by Congress.
If my trademark search finds a mark identical or similar to mine and I find out that the owner is no longer in business (or that the mark is no longer being used by the business), am I free to use it? Can I register it with the USPTO?
Not necessarily. Even if the original owner is no longer in business, the mark itself may have been assigned to another business, which is using it. The same is true if the original owner is still in business but no longer using the mark. Finally, if the mark is a creative graphic, such as a logo or trade dress, it may still be protected by copyright law (which protects creative works or expression).
If I combine my business or product name with a logo, does the combination distinguish the name from other names that are already registered or in use?
If the name accompanying your logo is the same as or very similar to a name that is federally registered or in use, you will be precluded from using or registering the name/logo combination, even though the appearance of your name/logo combination is completely different.
How thorough should my search be?
At the very least, you should search the federal trademark register for names or other marks that possibly conflict with yours. In addition, you should search relevant trade publications, as well as the Internet.
What is the Official Gazette, published by the USPTO, and who reads it?
The Official Gazette is read by anyone whose business involves keeping up with the latest USPTO announcements and rules – mostly patent and trademark attorneys, patent agents, and so on. However, it is also useful because all trademarks proposed for federal registration are published in the Gazette, alerting the public in the event that there is an objection to registration. You can read the Gazette for free online at the USPTO website (https://www.uspto.gov/learning-and-resources/official-gazette).
I’ve learned that I’ll have to renew my trademark registration in a few years. Will the USPTO notify me when the time comes, or do I have to keep track of this date myself?
Beginning in 2015, the USPTO’s Trademark Status and Document Retrieval (TSDR) system includes a “Maintenance” tab that lists documents that must be filed to maintain registration and when they are due. To locate this tab, search for your registration in the TESS database and click the TSDR button. In 2015, the USPTO also began sending courtesy email reminders of registration renewals to owners who:
- had live registrations in progress
- provided the USPTO with a valid email address, and
- authorized email communication from the USPTO
The USPTO does not send reminders by regular postal mail, and it does not attempt follow-up emails for undeliverable emails. The USPTO’s failure to provide such courtesy email reminders does not excuse an owner who fails to file documents on time. If you miss the deadline, your trademark registration will be canceled. This does not affect your ownership of the mark, assuming you are still using it, but you will have to register the mark to maintain the benefits of registration.
How do I get the official USPTO form to apply for a federal trademark registration?
The USPTO discourages the use of paper applications and has changed its filing fees to reflect this preference (see below). (In fact, the USPTO no longer provides a paper form for trademark applications.) The online application process, with its interactive help, is less likely to result in errors for first-time filers. Filing electronically also gets you directly into the USPTO system and allows you to file an application from anywhere. Currently, when applying for registration, you can:
- use the TEAS program to file the application online at the USPTO website in two ways: TEAS Plus and TEAS Standard
Chapter 7 explains the registration process in more detail.
How do I get an international trademark?
There is no such thing as an international trademark. However, it is possible to file one trademark application for a group of countries using a procedure known as the Madrid Protocol. The Madrid Protocol includes 96 countries. In addition, you can file one application and obtain protection (known as a Community Trademark) in 27 European countries. Otherwise, you must seek protection on a country-by-country basis.
Source: NOLO Trademark Legal Care for Your Business & Product Name by Stephen Fishman – 11th Edition, August 2016
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