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?
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
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
How Long Does a Trademark
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
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
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
How do I File an Application?
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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