Many trademark applications can be handled by the business owner. Some of the common questions asked are answered below. For more complex issues or just to make sure that your application is right the first time, give me a call and I can help.
A trademark (or service mark) is a branding of a product or service. It can be a word, phrase, or graphic that is recognizable to the public.
The basic process of applying for a trademark is on-line through the USPTO website. If the trademark meets all of the USPTO requirements, and is not opposed by any party, the USPTO will allow it. There are some restrictions associated with what can and can't be trademarked and the fees are non-refundable once submitted. Contact me to discuss your particular product or service before you file so I can advise you on the best approach.
Using ™ indicates that you are using the trademark in your area but have not registered it. It is called a common law trademark and puts others on notice that you claim the mark as your own.
Using ® indicates that the trademark has been officially registered with the United States Patent and Trademark Office. Using the ® symbol without first obtaining registration is a crime.
Registration of a trademark is not required - but it's usually a good idea.
If the mark you want to use is not registered and is not being used by someone else in your geographic area, you can ‘own’ it simply by using it to identify your products or services. This is called a common law trademark. Your rights to prevent someone else from using that mark, however, only extend to the geographic area where you have used it.
To prevent someone else from using your mark in a larger area (state-wide, interstate or international) you need to register the mark. If your business is limited to a single state, you can register the mark only in that state. If you do interstate trade, you can file an application for federal trademark registration with the U.S. Patent and Trademark Office. This will protect your rights throughout the United States.
First, you need to make sure your mark is “trademarkable.” This is where a trademark attorney can be helpful. There are some limitations on what can be registered and what cannot. For example, phrases or names that are descriptive of your product can’t be trademarked except in certain cases and with special caveats.
The next step is to ensure that nobody else has registered the mark, or a similar mark, for similar goods or services. Conducting a search BEFORE using your trademark can save you a lot of time and money - and prevent you from being sued for infringement. A trademark attorney can conduct the necessary searches and provide an analysis of availability for your trademark.
Finally, you must use the trademark in commerce. At the state level, this means selling your goods or services within the state. At the federal level, you must sell to someone outside of your state. As a trademark attorney, I can help you identify the type of proof you will need to show “use in commerce.”
BEST: Made Up Words
The best trademarks use totally made up words, e.g. ‘Roku’ for the TV—internet connection device, or Swiffer for a broom. Using made-up words increases the chances that no one else is using it and provides your product or service with a unique identity.
GOOD: Arbitrary Words
The second best are real words that have no meaning when applied to the product. ‘Apple’ for computers is a great example. If you plan to use real words, a good idea is to use words that seem random at first but hint at a quality of the product and let the consumer make the connection, e.g. ‘Quicken’.
NOT RECOMMENDED: Descriptive Words
The weakest trademark is a ‘descriptive’ trademark. It uses words that directly describe the product. The catch with using descriptive words is that you have to demonstrate that the market recognizes the word as a trademark and not simply as a descriptor. In addition, if you have a descriptive word within a logo or a phrase, it must be disclaimed when filing your application. In general, it is best to avoid descriptive words when choosing a trademark.
NOT ALLOWED: Generic Terms
Trademarks with ‘generic terms’ that ARE the product cannot be registered, e.g. ACCOUNTING cannot be registered for an accounting firm (but since it would have no direct meaning to baked goods it could be used for a bakery, see the Arbitrary Words section).
Most countries, including the U.S., have renewable terms for trademarks. Once a trademark is registered, you simply need to meet the on-going filing requirements and prove continued use in commerce to renew your trademark.
Any unauthorized use of the same (or confusingly similar) trademark for similar products would be trademark infringement. The basic test is whether consumers would be likely to mistake the maker of the goods or services.
There is no trademark police. It is your responsibility as the trademark owner to monitor for and identify any infringement. In most cases a ‘Cease and Desist’ letter from an attorney is enough to stop the infringement or trigger a discussion about licensing terms.
Yes. Trademarks can be licensed as long as you maintain the right to control how it is used and the quality of the product. This prevents the consumers from being misled about the product.
U.S. registration does not protect your trademark in other countries. International trademark protection is available on a country-by-country basis. A trademark attorney can assist with the planning and execution of international trademarks.
Note: Pursuing cases of international trademark infringement can be very complex and expensive. Only large multi-national corporations typically pursue this action. For small companies, the best strategy typically is to enforce the trademark on any imports into the US.
No. Domain names (URLs) are internet addresses and do not typically identify the source of a product so they are not trademarks. They can become trademarks if, instead of simply being an internet address, they come to identify the product. For example, ‘Yahoo Dot Com’ is used in advertising to identify Yahoo so it can be a trademark.
Yes– but only if they are using it for legitimate business purposes. This is a little confusing, but since domains are not trademarks, if the person is using the trademark for legitimate (not confusing) business purposes, they can use the mark. But they cannot just hold it hostage. In 1999, Congress passed the Anticybersquatting Consumer Protection Act, which makes it an infringement to hold someone's trademark hostage.
.
Bartels Law is a minority-owned sole-practioner law practice specializing in Patents, Trademarks, Business Contracts (with experience in local specialties including Winery, Vineyards and Marijuana) and Real Estate.
