Business Law

Trademarks

A trademark is a word, name, symbol or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. In other words, a trademark is a brand name. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce. Just because you're running a small business doesn't mean that trademarks are less important to you than if your business was operating on a much larger scale.

The main purpose of a trademark in a small business is so that consumers will recognize a particular company as the source of particular products and services. Not only do you want to make sure consumers recognize your products or services but you will also want to prevent the unauthorized use of your trademark and be able to enforce legal protection by getting your trademark registered.

Types of Trademarks

Specific types of trademarks include the following:

  • Service marks identify and distinguish the source of a service rather than a product.
  • Certification marks are any word, name, symbol, device or any combination, used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such person's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
  • Collective marks are trademarks or service marks used, or intended to be used, in commerce, by the members of a cooperative, an association or other collective group or organization, including a mark that indicates membership in a union, an association or other organization.

The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks.

Trademark Rights

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the United States Patent and Trademark Office (USPTO).

Registration Process

There are several steps involved in the registration process. First, you need to determine if your product is even eligible for a trademark. Next, you need to conduct a trademark search. Finally, you need to register your trademark.

Determine if Your Product is Eligible

Most US applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future. Generally, acceptable use is as follows:

  • For goods: the mark must appear on the goods, the container for the goods or displays associated with the goods, and the goods must be sold or transported in commerce.
  • For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

Conduct a Trademark Search

The next step is to search the USPTO database before filing your application, to determine whether anyone is already claiming trademark rights in your mark. You may conduct a search online for free via the TESS (Trademark Electronic Search System) database. If your mark includes a design element, you will need to search it by using a design code. There is a Design Search Code Manual that you will need to refer to on the USPTO Web site.

Registering your Trademark

You may file your trademark application online using TEAS - the Trademark Electronic Application System. TEAS allows you to fill out an application form and check it for completeness, and then submit the application directly to the USPTO over the Internet. You may also contact the Trademark Assistance Center for a paper form, but paper forms are not processed as quickly as those submitted electronically.

After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, termed likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are the similarity of your mark with existing marks and the commercial relationship between the goods or services listed in the application.

There may be a conflict if the marks are similar and the goods or services are related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

Duration of Trademark

Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times.

Adding TM, SM or ® to Your Mark

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and services listed in the federal trademark registration.

Advantages of Registering Your Trademark

You have rights in a trademark based on legitimate us of the mark but if you register your mark on the Principal Register you will receive several advantages, including:

  • Constructive notice to the public of the registrant's claim of ownership of the mark
  • A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration
  • The ability to bring an action concerning the mark in Federal court
  • The use of the US registration as a basis to obtain registration in foreign countries
  • The ability to file the US registration with US Customs and Border Protection to prevent importation of infringing foreign goods

Registering a Trademark Overseas

Federal registration is not valid outside the United States. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in some other countries by filing a single application, called an "international application," with the International Bureau of the World Property Intellectual Organization, through the USPTO.

Questions for Your Attorney

  • I work from home and run an Internet based business selling products online, can I register my company's trademark?
  • I have designed a trademark for my company but haven't actually started using it yet, should I try to register it now or wait until I begin using it?
  • I haven't registered my trademark yet but would like to use "TM" with it on my company ads, is that legal?
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