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Practice Areas > Trademarks

Practice Areas/Services: Trademarks

What is a trademark? (top)

Trademarks are images, symbols, words or even an overall "look" that identify a trademark holder's goods or services from those of another. Trademarks are distinct from copyrights, which protect original works of authorship, and patents, which protect inventions. They are the brand names like "IBM," or "Volkswagen" that we associate with a particular product, and they are symbols - like the NBC peacock, or the "Coca-Cola" script that we associate with a provider of goods or services. Trademarks are significant in that they allow a consumer to be sure that they are getting the particular goods or services that have come to be associated with a certain seller - the "goodwill" associated with a particular brand. For this reason, trademarks are a very valuable commodity and thus, when they are infringed, serious issues are raised.

How do I get a Trademark?  (top)

Contrary to what many people believe, trademark rights are gained by actual use of a mark rather than by registration. Generally the first party who uses a mark in commerce has the right to use the mark in that geographic area, and the natural zone of expansion therefrom. Thus, if you have a band using the name "The Bugs" in the New York area, and you are the first person to use that name, you hold the superior right in that mark in the New York area where you are actually using the mark and any surrounding areas in which the use of the mark would naturally extend.

However, if you are not actually using a mark, but have the "bona fide intent" to do so in the future, you can secure use of the mark by filing what is known as an "Intent to Use" Application with the United States Patent and Trademark Office ("USPTO") which will essentially reserve the mark for you in incremental periods of six months. If you are not thereafter able to satisfy the USPTO that you are using the mark, you will lose your right.

As a side note, some people who are using a mark locally will chose to file for state trademark registration. This really gives you nothing in addition to what you gain by actually using the mark in commerce, but will serve to put the world on notice of your use of the mark.

So What is Federal Trademark Registration?  (top)

As set forth above, registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, Federal (as distinct from state) registration with the USPTO can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a Federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide, as opposed to just in the area of actual use and the natural zone of expansion therefrom, as is the case without registration. For these reasons, a federal registration can provide significant advantages to a party involved in a court proceeding.

How Long Does a Trademark Last?  (top)

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Trademark, Service Mark, and Registered "TM," "SM" and "" Symbols  (top)

Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, , may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues. All of these symbols allow you the mark owner to put the public on notice that you are claiming rights in the marks.

How Do I Register a Trademark with the USPTO?  (top)

As set forth in part above, there are two types of trademark applications: an Intent to Use Application and an Actual Use Application, for marks that are actually being used in interstate commerce. Comprehensive information and downloadable forms for registering a trademark are available from the United States Patent and Trademark Office Website. However, for ease of reference I will go over some basics here.

As a preliminary matter, prior to registering a trademark, one should ensure that one has the right in the intended mark, or else one risks suit and/or the prospect of having to change their mark in the future. An applicant is not required to conduct a search for conflicting marks prior to applying with the USPTO. However, in my opinion it is advisable to do so for the reasons I just stated (so you don't get sued and/or need to change your mark later.) Unfortunately, however, trademark law is far from black and white. The standard for evaluating whether a prospective mark is infringing is "whether there is a likelihood of consumer confusion regarding the source or origin of goods or services." In English, this roughly translates to whether someone will confuse your mark with someone else's. For the uninitiated, making this determination can be a daunting task, and so usually it is best to hire an attorney to undertake an analysis for you if you are unsure.

Should you chose to undertake an analysis yourself, there are several commercial services available that will provide information from searchable databases regarding potentially conflicting prior uses of your intended mark. The most well-known and comprehensive, albeit expensive, of these services is Thomson & Thomson. You can also now search for free at the U.S. Patent and Trademark Office's web site, which will provide you with basic information about prior (U.S.) federal registrations.

How do I File an Application?  (top)

Once you have determined that you want to file for registration of your trademark, you will need to fill out an appropriate application, available for download from the USPTO Website. There are several elements required in completing an application, and those are gone over in detail on the USPTO website. Filing your trademark application will cost $325 per mark per class.

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