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Learn About Trademarks

Before you use a name in commerce – whether it be the name of your business, the names of your products and services, or the names of your slogans – you need to find out whether anyone else is using the name or has rights to the name.

What Is A Trademark?

A Trademark is one of the most valuable assets of any business. A Trademark is a word, name, symbol, design, phrase or sound that identifies a business organization, or its products or services, and distinguishes it from other business organizations. In other words, a Trademark is how potential customers recognize your business and set you apart from your competitors.

A Business must be extremely careful in choosing the names associated with it, as it can be exorbitantly expensive to change names midstream. As thousands of businesses have learned, the result can be devastating in terms of lost business.

Why Run A Trademark Search?

One of the first steps to starting your business is naming your business. One of the first steps in launching a product or service is naming the product or service. 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 up front, before time, 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 mitigates the risk 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. Submitting a trademark registration application blindly risks a considerable amount of time and money.

Why Register My Trademark?

Registering a Trademark puts the world on notice that you are using the mark, that it is your mark, and that no one else can use it. It also generates an indisputable record of your use, which is vital in defending your rights if another business were to come along at a later date and use the mark in violation of your rights. Trademarks should be registered by businesses that use the mark in interstate commerce, or plan on using the mark in interstate commerce.

Furthermore, registering a trademark will give your trade name and brand names more credibility with the public and with other business you deal with.

What is the Difference Between Registered Trademarks and Common Law Trademarks?

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’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.

Registered Trademarks: Registering a trademark gives the owner a presumptive right to the use of the trademark. Registering puts the world on notice that you are using the mark, that it is your mark, and that no one else can use it. It also gives your trade name and brands more credibility.

How Do I Avoid Infringing On Another’s Name or Mark?

To avoid infringing on another business’s name or trademark, a competent Trademark Search should be undertaken.

What is the Difference Between a Trademark and Servicemark?

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.

What Is Required of an Owner of a Trademark?

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.

    Examples of Clearly Stated Goods and Services: Computer Software Products, Accounting Services, Guitar Strings.

  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.

    When you are ready to register your trademark, you can mail us the specimen, or send us a JPEG image of the specimen.

    Example of “use in commerce”: A widget company already has product, called an XYZ widget, that it has been selling for two years. The company is registering a trademark for “XYZ widget.”

    If “intended use” is your basis for filing, you must have a bona fide intention to use the mark in commerce on or in connection with ALL the listed goods and services. Here, you must list the date you intend to start using the trademark.

    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.

    Example of “intended use”: A widget company has already developed, and is planning to put the product, ABC widget, on the market. The company is registering a trademark for “ABC widget.”

  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.

What Happens After The Application to Register a Trademark?

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.

What Are The Most Common Reasons For Refusal Of Trademark Registration?

  1. Likelihood of Confusion

    The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO.

    The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks do not have to be identical or the goods and services the same; instead, it is sufficient if the marks are similar and the goods and or services related. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.

    When a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.

  2. Merely Descriptive and Deceptively Misdescriptive

    The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. A mark will be refused as deceptively misdescriptive if:

    1. the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and

    2. the misrepresentation conveyed by the mark is plausible.


  3. Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive

    The examining attorney will refuse registration of a mark as primarily geographically descriptive if:

    1. the primary significance of the mark is geographic;

    2. purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and

    3. the mark identifies the geographic origin of the goods or services.

    A mark will be refused as primarily geographically deceptively misdescriptive if:

    1. the primary significance of the mark is geographic;

    2. purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and

    3. the goods or services do not originate in the place identified in the mark.

  4. Primarily Merely a Surname

    The examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a surname.

  5. Ornamentation

    In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the "dress" of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant's goods from those of others.

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.

Design Elements In A Trademark.

In most cases a trademark is simply a word, or a combination of letters and numbers. However, some trademarks include a design element, which may require a drawing to be submitted with the application. Contact one of our Trademark Consultants today to discuss your Design/Logo Trademark, 877 281 6496.

 


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