Law Office of Tom James
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FAQs about trademarks

Q: What is a trademark?

A: A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs that identifies and distinguishes the source of goods.

Q: What is a service mark?

A: A service mark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs that identifies and distinguishes the source of services.

The term “trademark” is often used to refer to both trademarks and service marks.

Q: Can a design or a logo be a trademark?

A: Yes, if they identify and distinguish the source of goods and/or services.

Q: What are collective marks and collective membership marks?

A:A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services. A collective membership mark is any word, phrase, symbol or design, or a combination thereof which indicates that the user of the mark is a member of a specific organization.

Q: What is a certification mark?

A: A certification mark is a mark that its owner permits others to use in commerce to certify the quality, or some other characteristic, of particular goods.

Q: Can you register the name of a musical group or band?

A: Yes. A band name may function as a service mark for “entertainment services in the nature of performances by a musical group” if it is used to identify live performances.

Q: How are trademark rights created?

A: Trademark rights arise in two ways: (1) use; (2) registration. Some kinds of trademark rights arise from use; other kinds of trademark rights arise from registration. Registration is not required in order to establish rights in a mark, but registration confers additional rights that do not arise from mere use alone. For example, mere use may confer a right to use a mark in the geographic region in which the mark is used, but federal registration creates a presumption that the registrant is the true owner of the mark. Federal registration also creates a presumption that the registrant is entitled to use the mark nationwide. The right to the benefit of these presumptions gives a federal registrant a very significant advantage over a mere user of the mark if a dispute arises between them.

Q: Should I register my trademark?

A: Yes. Federal registration not only makes it much easier to enforce your rights, but it also can help protect you against claims that you are infringing someone else’s trademark. Some benefits of registration include:

  • furnishes evidence of the existence, validity and ownership of the mark
  • establishes prima facie right to use the mark anywhere in the United States
  • establishes prima facie right to prevent others from using the mark in connection with similar goods or services
  • may prevent others from unfairly capitalizing on your reputation and goodwill
  • is constructive notice of a claim of ownership throughout the United States, preventing infringers and diluters from asserting lack of knowledge as a defense
  • enables the registrant to use the federal courts to enforce his rights
  • sometimes makes it possible to recovery attorney fees from the other party in trademark litigation
  • creates rights to prevent the importation of counterfeit goods into the United States
  • may be transferred, or used as collateral for a loan.

Q: Should I have a trademark search done?

A: It is a good idea to have a trademark search done prior to using a desired mark. A search may identify marks that are confusingly similar to the one you intend to use. Trademark application fees can be substantial, even more so if registration in more than one category is sought. They generally are not refundable. Moreover, the costs of defending an opposition proceeding can be significant. There is also a risk that you may incur substantial liability for damages and attorney fees if your mark is determined to infringe another person’s mark.

Q: Can I apply to register a mark before I’ve started using it?

A: Yes. An application for federal registration of a mark may be based on either existing use or intended future use. A registration based on intended use will not issue, however, until you actually begin using the mark and file a statement of use.

Q: What happens after an application for federal registration of a trademark is filed?

A: The application will be assigned a serial number, and a trademark examiner will review it. The examiner will determine whether the application will be permitted to proceed or not. This can take several months. If the application is rejected, the applicant normally will be given an opportunity to submit additional documentation and arguments to change the examiner’s mind.

Before making a final determination about whether registration of the mark will be permitted or not, it will be published in the Official Gazette. This allows others to become aware of the attempted registration, so that they may object to it if they believe it should not be allowed. An objection that is filed with the Trademark Office at this stage is called an “opposition.” The filing of an opposition commences an opposition proceeding, which is heard and decided administratively by the U.S. Trademark Trials and Appeals Board. If an opposition is successful, registration will be denied. If it is not successful, or if no opposition is filed within the requisite time period, then the registration process will continue.

If the examiner has not rejected the application, and if no opposition has been filed, then a registration will be issued shortly after the end of the publication period, if the application is based on existing use of the mark. If the application is based on intent to use, then the registration will issue after the applicant files a statement of use.

Q: How long does the federal registration process take?

A: Typically between six and eighteen months. An opposition proceeding, or an appeal of a rejected application, can sometimes add a year or more to the duration of the process.

Q: Can trademarks be registered with a state?

A: Yes, but state registration will not enable you to exclude others from using the mark in other states.

Q:When can I use the ®, ‘TM’ and ‘SM’ symbols?

A: The ‘TM’ symbol may be used by anyone claiming to have trademark rights. The ‘SM’ symbol may be used by anyone claiming to have service mark rights. These symbols may be used whether or not the mark is registered. The registration symbol, ®, may only be used in connection with a mark that is registered with the United States Trademark Office. State registration alone does not give a person a right to use the ® symbol.

Q: How long does a trademark last?

A: 10 years, unless it is canceled sooner.

Q: Can trademarks be renewed?

A: Yes. Trademarks may be renewed for ten-year periods. An affidavit and evidence of continued use of the mark must be filed during the sixth year of registration. Otherwise, registration of the mark may be cancelled.

Q: Can trademarks be transferred?

A: Yes.

Q: May a trademark owner permit others to use the mark?

A: Yes, but care must be taken to preserve the owner’s rights. For example, the owner may lose his rights if he engages in “naked licensing” of the mark.

Q: Can I register a trademark for a product if someone else is using the same trademark to sell another kind of product?

A: Sometimes. Trademark registration only protects rights to use the mark in connection with the category(ies) of goods or services in which the mark is registered. Because of this, it is possible for one person to register a mark for one category of goods or services, while another person registers the same mark for a different category of goods or services. For example, one person  might register the mark “Avatar” for lightbulbs, while another person might register it for his educational services.  The U.S. Trademark Office has established a detailed classification system that includes hundreds of categories of goods and services. An applicant may request registration in more than one category, but a separate fee must be paid for each category of goods or services for which registration is sought.

There is a significant exception to the rule that trademark protection only exists with respect to categories of good or services as to which the mark is used. A famous trademark may receive protection even in categories, and in countries, in which it is not registered. For example, even though “Pepsi” may not be registered as a trademark for tax preparation software, the owner of the “Pepsi” trademark may nevertheless have exclusive rights to use it even in that category, because it is a famous mark.  

Q: Does federal registration protect a mark in other countries?

A: No. You must register your mark in each country in which you wish to protect it. In some cases there are treaties that may simplify the process, but none of these treaties removes this basic requirement.

Q: Should I hire an attorney to handle the registration of my trademark?

A: According to the U.S. Patent and Trademark Office, "if you are ready to apply to register your trademark, we strongly advise that you contact an attorney who is experienced in trademark prosecution. The PTO does not maintain a roster of trademark attorneys. An attorney who is a member in good standing of a state bar association may prosecute your application for trademark registration."

Q: Is there any reason I shouldn’t use LegalZoom, or another trademark-filing company or document-assembly service, to prepare my trademark application?

A: Only licensed attorneys may represent a trademark applicant before the U.S. Patent and Trademark Office. According to their Web site, LegalZoom is “not a law firm or a substitute for an attorney or law firm” and “cannot provide any kind of advice, explanation, opinion, or recommendation about possible legal rights, remedies, defenses, options, selection of forms or strategies.” Not being attorneys, LegalZoom will not respond on your behalf, or instruct you how to respond, if your application is rejected, or if an opposition to it is filed. Also, LegalZoom will not review your application before filing it for you. They will not attempt to determine whether your desired mark is legally eligible for registration or not. Yet there are many categories of words, symbols and designs that are not eligible for registration either because they are confusingly similar to an existing trademark, or they are merely descriptive, or a number of other possible reasons. You may hire LegalZoom to conduct a trademark search, but they will not analyze the results for you. It will then be up to you to decide for yourself whether your desired mark is “confusingly similar” to other marks, or ineligible for registration for some other reason. Hiring an attorney early on can save you time and unnecessary expense in the long run.

Q: Can rights be lost after a trademark is registered?

A: There are a number of ways trademark rights may be lost even though it has been registered. Failure to timely renew a trademark may result in cancellation of the registration. Abandonment, naked licensing, and failure to use the mark in connection with the goods or services for which it is registered, are also ways that trademark rights may be lost. Genericisation is yet another way that trademark rights may be lost. This occurs when a trademarked term loses its significance as an indicator of source, and instead becomes a generic term for the product itself. “Aspirin” is an example of a trademark that lost protection through genericisation. This is not, by any means, a complete list of the ways in which trademark rights may be lost. A trademark attorney should be able to give you specific suggestions and advice about how to protect trademark rights both before and after registration.