|
What Is A Trademark?
A trademark is a word, a group of words,
a symbol, a design/logo, or a combination of words,
symbols and design/logo, used by a business to clearly
and effectively inform current and potential customers
about the origin of its goods or services. In
other words, a trademark is the brand or the ID
card for a good or service a business is offering in the
marketplace. The consumers are relying on the trademark
to identify the source of the goods or services they are
interested in, and they make quick buying decisions
based on the reputation of the trademark owner. A
trademark generally identifies a good or a class of
goods (e.g., Lipitor - for cholesterol drug, Pepsi - for
soft drinks, Nike - for athletic shoes, etc), while a
service mark identifies a service or a class of services
(e.g., AT&T- for telecommunication services, Wal-Mart -
for retail business services, McDonald's - for
restaurant services, etc).
Do I need A Trademark?
If you are in business offering to sell
something (goods or services), the answer is yes. A
trademark helps you stand out from the crowd. It is an
excellent marketing tool, which helps you compete in the
marketplace. Without a strong trademark, consumers may
be confused and buy from your competitors even if your
good has or your service is of superior quality. This is
why, all major companies, like the ones enumerated
above, are carefully planning the selection, the
protection, and the promotion of their trademarks. This
companies hire professionals to perform
trademark searches to ensure that the trademark they
want is not claimed or used by anybody else. They
register their trademark nationally (federal
trademark registration - USPTO) and even
internationally. Today, as the cost of these services
continues to decrease, small business too can afford to
make use of this powerful marketing tool, the trademark.
A strong trademark is one of the most important assets a
business may acquire.
Do I need to register my trademark at
federal level (USPTO)?
In the past, if you ran a small car
repair shop for example, in a small town, with no plans
to expand, the answer was probably no. You may have not
even needed to register your trademark in your state.
Someone else could run a similar operation under the
same name in another state, or even in the same state.
Irrespective of who used the mark first, because of
geographically separated markets, both users (or many
users) could use the mark simultaneously. However, in
today's Internet environment, these geographical
boundaries are becoming increasingly meaningless. You or
another user may start a website, or advertise online in
another way, and here you are, consumer confusion and
trademark conflict may occur. Therefore, even for a
small business, federal trademark registration is
generally deemed a wise investment in today's
marketplace.
What are the benefits of a USPTO
trademark registration?
While rights in a trademark may be
acquired by using the trademark in commerce, owning a
federal trademark registration on the Principal Register
provides several advantages, as for example:
-
constructive notice to
the public of the registrant's claim of
ownership of the trademark;
-
a legal presumption of the
registrant's ownership of the trademark
and the registrant's exclusive right to
use the trademark nationwide on or in
connection with the goods and/or services listed
in the registration;
-
the ability to bring a lawsuit
concerning the trademark in federal court;
-
the ability to file the U.S.
registration with the U.S. Customs Service
to prevent importation of infringing foreign
goods.
-
the use of the U.S registration
as a basis to obtain registration in foreign
countries.
May I register any word(s) or design
I want as my trademark?
First, generally you may not register
with USPTO an identical or similar trademark, which was
previously registered by someone else. A similar
trademark will not be registered if it conflicts (i.e.,
it is "confusingly similar") with another pending or
registered trademark. To determine this, USPTO looks
primarily at the similarity of the marks, and the goods
or services associated with each mark. Furthermore,
generally it is not wise to register a trademark used by
someone else, even if it was not registered, because the
mere use of the trademark may give trademark rights to
that other user.
Secondly, USPTO will not generally register trademarks
if they include geographic names, as for example
"California Apple" proposed to be used to identify
apples. Also, generally the USPTO will not register a
generic mark, as for example "Apple" to sell apples, or
a descriptive mark (e.g., "Juicy Apple" for apples). The
mark has to be fanciful (e.g., "Alpexis" for apples),
arbitrary (e.g., "Apple" to sell computers), or at least
suggestive (e.g., "Polar Bear" for refrigerators). This
is not an exclusive list, but a list of some common
reason why registration may be denied by the USPTO, and
why you may be denied any rights in a trademark even if
you were the first to use it in commerce.
What is the meaning of the symbols ®,
™, or SM?
You can use the symbol ® next to your
trademark only after you received a registration
certificate from the USPTO. By doing so, you alert
others that your trademark or service mark is
registered. The ™ or SM
symbols can be used before registration, anytime you
want to alert others that you claim some trademark
rights in your unregistered trademark (™), or service
mark (SM).
Do
I have to use the trademark before I apply for federal
registration?
No. USPTO allows you to also apply for
trademark registration based only on your declared good faith
intent to use the trademark in commerce. The application
is called 'intent-to-use' application. If approved, you
have approximately six month to start using the mark and
submit an 'allegation-of-use' form to the USPTO,
together with a specimen (see below). LegalArrow®
can prepare and file both applications for you.
What is a 'specimen'?
A specimen is a proof that the trademark is
actually used in commerce in connection with the goods
or services listed in the application. For goods, an
acceptable specimen is a picture showing for example a
label which contains the trademark on the goods or their packaging. For services,
an acceptable specimen is an advertisement showing that
the respective services are marketed using that service mark. A specimen is required
at the time of filing if applying for
registration on the 'use-in-commerce' basis, meaning
that you are currently using the mark to sell your goods or to
advertise your services. It is also required within
approximately six months after filing an 'intent-to-use'
application.
|
1-800-314-3972
M-F 8-6 PST
