Trademark
A Trademark is a word, name, symbol, design, phrase or sound that identifies a
business, and distinguishes it from others.
One of the first steps to starting your business is naming your business. Before
you use the name, YOU NEED TO KNOW IF THE NAME IS BEING USED BY
SOMEONE ELSE. Finding out the hard way can have a devastating effect on
your business: fines, legal liability, the lost opportunity cost of having to switch
names midstream…
Even if no one else is using the name in your state or geographic region, a
Trademark Search will reveal if someone is using the name in any part of the
country. This is important to businesses that envision expansion. Every year,
thousands of business owners find out that they are practically frozen out of
expanding to an area with their business or brand name, as someone in that
area has Common Law Rights to that business name. A Trademark Search will
reveal this scenario upfront, before a tremendous of money and effort is put
into building a trade name or brand.
The Trademark Search ensures that you can use the name you want to use in
your business. It also ensures that your trademark registration application will
not be rejected by the United States Patent and Trademark Office (USPTO). It is
your responsibility to have the search done before you submit your application
to the USPTO.
Registering a Trademark records an indisputable record of your use, which is
vital in disputing the rights of another business were to come along and use the
mark at a later date. Trademarks should be registered by businesses that use
the mark in interstate commerce, or plan on using the mark in interstate
commerce.
Common Law Trademark Rights: A business using a trade name in commerce
may very well have Common Law Rights in that name. Basically, the only
requirement is that the business was the first to use the name in that
geographic area. Here, it wouldn’t matter if you registered the Trademark with
the USPTO. The business that first used the name would have the right to the
name, in that area. But practically speaking, you could be blocked out from
using this name anywhere. Common Law Trademark rights are extremely
prevalent. Several million US business have Common Law Trademark rights in
their trade names. This is why running a Trademark Search is extremely
important.
Though we use the word “Trademark” on this site to describe Trademarks and
Servicemarks, there is a distinction. A Trademark serves to distinguish goods or
products from similar goods or products. A Servicemark serves to distinguish a
given service provided by one business from similar services provided by
another, and to distinguish the marketing or sales promotion of a business
organization.
The right and obligation of a trademark owner is to take legal action against
anyone who is infringing on its trademark. The owner must be consistent and
thorough in asserting its rights to ownership. Furthermore, the owner of the
trademark must be diligent in asserting its claims of ownership. If the owner is
not consistent and diligent, the law may deem the owner to have waived such
rights to ownership.
What Do I Need to Know To Register My Trademark?
(1) The Goods and Services you want to register in relation to your trademark:
You must clearly state the goods and services in relation to which you want to
use the mark. It is best to use simple, easy to understand language. You only
get the trademark registration in relation to the stated goods and services. After
the application is filed, you will be able to limit the goods and services, but will
not be able to expand the identification of goods and services.
(2) The Basis For Filing:
If “use in commerce” is your basis for filing, you must already be using the mark
in commerce (in your business) in relation to ALL the goods and services listed.
Here, you must list the date you first started to use the trademark.
If you are filing your application based on “use in commerce,” you must submit
an example (called a “specimen” by the USPTO) of how you are using the
trademark in commerce. For a trademark for GOODS, you could submit a tag,
label, container for the goods, a photo of the goods. For a trademark for
services, you could submit an advertisement, sign, brochure, business card,
letterhead, or photo showing the trademark being used in connection to the
services.
It is a good idea to submit the application for registration if you clearly intend to
use a trademark. However, the USPTO will not officially register the trademark
until the mark has been used in commerce and the USPTO receives an
“Allegation of Use” statement from you. In our registration package, we include
the proper form, along with detailed instructions on how to complete it.
(3) Name of Applicant:
The name of the applicant should be the name of the owner of the trademark.
The owner is the entity who controls the use of the mark, and can be an
individual person, corporation, partnership, or other legal entity.
(4) Representative:
You must list a representative’s name and address. The representative is the
person where the USPTO will send communications concerning the application.
The representative of the trademark does not need to be a US Citizen.
However, if the owner does not have a US presence, it will need to appoint a
“domestic representative” in the application.
When it is determined that your application meets the required guidelines, the
application will be forwarded to an examining attorney within the USTPO. The
examining attorney will determine whether the application complies with
applicable regulations, and will determine whether the trademark conflicts with
any other trademarks registered or pending within the USPTO records. This
step could take months to complete.
Next, the examining attorney might decide that the trademark should not be
registered. If so, the examining attorney will contact the applicant by mail,
phone, or e-mail (called “Office Action”) describing the reasons that the
trademark should not be registered. The applicant must respond to the Office
Action within six months of the communication, or the application will be deemed
abandoned.
A “Final Refusal” will be issued, if the applicant cannot overcome the examining
attorney’s objections to the application.
However, if the applicant overcomes all objections, OR, if no initial objections
are raised, the examining attorney approves the trademark. The next step is for
the trademark to be published in the Official Gazette, a publication of the
USPTO. Anyone who feels that its own trademark may be damaged by
registration of the trademark has thirty days to file an opposition to registration.
If no opposition is filed, the USPTO will issue to the applicant a “Certificate of
Registration” (for application based on use), or a “Notice of Allowance” (for
application based on intent to use).
From the issuance of a Notice of Allowance, the applicant will have six months to
use the mark and submit a state of use, or request a six month extension.
Difference Between State TM and Federal TM
Federal Trademark Registration gives national protection, and puts parties on
notice of the trademark across the nation. State Trademark Registration can
put parties on notice on a statewide basis, and can give some protection
against infringement. However, merely registering a trademark in a single state
will give no protection against infringement in another state. Furthermore, if a
company does not register a trademark federally, the company may find it’s
precluded from expanding with the trademark to other states, where competitors
are already using the mark.
A Trademark is a word, name, symbol, design, phrase or sound that identifies a
business, and distinguishes it from others.
One of the first steps to starting your business is naming your business. Before
you use the name, YOU NEED TO KNOW IF THE NAME IS BEING USED BY
SOMEONE ELSE. Finding out the hard way can have a devastating effect on
your business: fines, legal liability, the lost opportunity cost of having to switch
names midstream…
Even if no one else is using the name in your state or geographic region, a
Trademark Search will reveal if someone is using the name in any part of the
country. This is important to businesses that envision expansion. Every year,
thousands of business owners find out that they are practically frozen out of
expanding to an area with their business or brand name, as someone in that
area has Common Law Rights to that business name. A Trademark Search will
reveal this scenario upfront, before a tremendous of money and effort is put
into building a trade name or brand.
The Trademark Search ensures that you can use the name you want to use in
your business. It also ensures that your trademark registration application will
not be rejected by the United States Patent and Trademark Office (USPTO). It is
your responsibility to have the search done before you submit your application
to the USPTO.
Registering a Trademark records an indisputable record of your use, which is
vital in disputing the rights of another business were to come along and use the
mark at a later date. Trademarks should be registered by businesses that use
the mark in interstate commerce, or plan on using the mark in interstate
commerce.
Common Law Trademark Rights: A business using a trade name in commerce
may very well have Common Law Rights in that name. Basically, the only
requirement is that the business was the first to use the name in that
geographic area. Here, it wouldn’t matter if you registered the Trademark with
the USPTO. The business that first used the name would have the right to the
name, in that area. But practically speaking, you could be blocked out from
using this name anywhere. Common Law Trademark rights are extremely
prevalent. Several million US business have Common Law Trademark rights in
their trade names. This is why running a Trademark Search is extremely
important.
Though we use the word “Trademark” on this site to describe Trademarks and
Servicemarks, there is a distinction. A Trademark serves to distinguish goods or
products from similar goods or products. A Servicemark serves to distinguish a
given service provided by one business from similar services provided by
another, and to distinguish the marketing or sales promotion of a business
organization.
The right and obligation of a trademark owner is to take legal action against
anyone who is infringing on its trademark. The owner must be consistent and
thorough in asserting its rights to ownership. Furthermore, the owner of the
trademark must be diligent in asserting its claims of ownership. If the owner is
not consistent and diligent, the law may deem the owner to have waived such
rights to ownership.
What Do I Need to Know To Register My Trademark?
(1) The Goods and Services you want to register in relation to your trademark:
You must clearly state the goods and services in relation to which you want to
use the mark. It is best to use simple, easy to understand language. You only
get the trademark registration in relation to the stated goods and services. After
the application is filed, you will be able to limit the goods and services, but will
not be able to expand the identification of goods and services.
(2) The Basis For Filing:
If “use in commerce” is your basis for filing, you must already be using the mark
in commerce (in your business) in relation to ALL the goods and services listed.
Here, you must list the date you first started to use the trademark.
If you are filing your application based on “use in commerce,” you must submit
an example (called a “specimen” by the USPTO) of how you are using the
trademark in commerce. For a trademark for GOODS, you could submit a tag,
label, container for the goods, a photo of the goods. For a trademark for
services, you could submit an advertisement, sign, brochure, business card,
letterhead, or photo showing the trademark being used in connection to the
services.
It is a good idea to submit the application for registration if you clearly intend to
use a trademark. However, the USPTO will not officially register the trademark
until the mark has been used in commerce and the USPTO receives an
“Allegation of Use” statement from you. In our registration package, we include
the proper form, along with detailed instructions on how to complete it.
(3) Name of Applicant:
The name of the applicant should be the name of the owner of the trademark.
The owner is the entity who controls the use of the mark, and can be an
individual person, corporation, partnership, or other legal entity.
(4) Representative:
You must list a representative’s name and address. The representative is the
person where the USPTO will send communications concerning the application.
The representative of the trademark does not need to be a US Citizen.
However, if the owner does not have a US presence, it will need to appoint a
“domestic representative” in the application.
When it is determined that your application meets the required guidelines, the
application will be forwarded to an examining attorney within the USTPO. The
examining attorney will determine whether the application complies with
applicable regulations, and will determine whether the trademark conflicts with
any other trademarks registered or pending within the USPTO records. This
step could take months to complete.
Next, the examining attorney might decide that the trademark should not be
registered. If so, the examining attorney will contact the applicant by mail,
phone, or e-mail (called “Office Action”) describing the reasons that the
trademark should not be registered. The applicant must respond to the Office
Action within six months of the communication, or the application will be deemed
abandoned.
A “Final Refusal” will be issued, if the applicant cannot overcome the examining
attorney’s objections to the application.
However, if the applicant overcomes all objections, OR, if no initial objections
are raised, the examining attorney approves the trademark. The next step is for
the trademark to be published in the Official Gazette, a publication of the
USPTO. Anyone who feels that its own trademark may be damaged by
registration of the trademark has thirty days to file an opposition to registration.
If no opposition is filed, the USPTO will issue to the applicant a “Certificate of
Registration” (for application based on use), or a “Notice of Allowance” (for
application based on intent to use).
From the issuance of a Notice of Allowance, the applicant will have six months to
use the mark and submit a state of use, or request a six month extension.
Difference Between State TM and Federal TM
Federal Trademark Registration gives national protection, and puts parties on
notice of the trademark across the nation. State Trademark Registration can
put parties on notice on a statewide basis, and can give some protection
against infringement. However, merely registering a trademark in a single state
will give no protection against infringement in another state. Furthermore, if a
company does not register a trademark federally, the company may find it’s
precluded from expanding with the trademark to other states, where competitors
are already using the mark.
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