We've compiled this
list of Frequently Asked Questions, as well as our answers to those
questions, to help you understand the "ins-and-outs" of trademarks and
trademark registration. If you don't find the answer you need
here, please give us a call at 858-777-5545.
What is a trademark?
What types of names,
slogans, phrases are not really trademarks?
is my trademark?
Is my domain
name a trademark?
What is the difference between a trademark and a
What is the difference between the ™ symbol and the ®
What is a
Why do I
need a trademark search? What if I don’t want to spend the money on a
How do I “get”
How do I
protect my trademark?
What information and materials do I need to file a
What if I’m not using my trademark yet? Can I still
file a trademark application?
Can I register my name and logo together in the same
How long does it take to get a trademark
What is involved in the trademark application
What other documents must be filed after I file my
initial trademark application?
Why can’t I just prepare and file the application
do I need to register my trademark?
company name was already approved when I incorporated, does this protect
my company name as a trademark?
What is a trademark?
A trademark is a word, phrase or symbol that is used to distinguish your
products or services from those of another company. In short, a
trademark is a brand name and can consist of words, like NIKE or JUST DO
IT, or symbols, like the NIKE “swoosh.”
Keep in mind that trademarks don’t have to be product names. For
instance, slogans or taglines like “DON’T LEAVE HOME WITHOUT IT” are
also trademarks because they identify the source of goods or services.
When you see DON’T LEAVE HOME WITHOUT IT, you (hopefully) think of
A trademark is different than a patent and a copyright. A patent gives
the owner the exclusive right to make, sell and use an invention. A
copyright protects the expression of original ideas, writings and works
What types of names, slogans, phrases
are not really trademarks?
Words or symbols that are generic names for a type of product or
service, like “Overnight Delivery Service” and “Breakfast Bagel” are not
trademarks at all because they don’t distinguish your products or
services from those of other companies. Also, these types of generic
names for particular products or services must be available for everyone
to use and so no single company can claim exclusive rights in them.
How “strong” is my trademark?
When considering a name for your product or service, it is important to
keep in mind the relative strength of the mark so that you will have an
idea, in advance, whether you can protect the mark from use by others.
Generally, the more unique a trademark is, the more you will be able to
protect it and prevent others from using it. There are three basic
categories used to classify marks in terms of type and strength.
Fanciful Marks – these can be invented words (like Xerox or Pentium) or
they can be ordinary words that have no connection to your product or
service (like Apple for computers or Amazon.com for online book sales).
Fanciful marks are the strongest marks because they are the most
Suggestive Marks – these trademarks don’t immediately describe the goods
or services, but they require some amount of imagination to understand
the exact nature of the goods or services. For example, the word
Coppertone probably makes you think of a bronzed, tan skin tone. But,
the word doesn’t immediate and directly describe suntan lotion.
Suggestive marks are not as strong as fanciful marks, but they are
stronger than descriptive marks (described next).
Descriptive Marks – these are trademarks that directly or indirectly
describe the products or services or certain characteristics or features
of the products or services.
Sometimes the line between suggestive and descriptive marks is difficult
to draw and can be somewhat subjective. For this reason, it is helpful
to consult a trademark attorney who has had extensive experience looking
at proposed trademarks and determining their relative strength.
Is my domain name a
Maybe, maybe not. Whether your domain name is a trademark depends upon
how you are using it. If it is a distinctive name that is also happens
to be your company name for example, then it is probably a trademark (Amazon.com
is a good example). If your domain name is simply an address for your
customers to find you on the internet and you don’t use the name in any
other way, then it is probably not a trademark.
What is the difference between a trademark and a service mark?
A trademark is a brand name used for a product (SONY, for example),
whereas a service mark is a brand name used for services (FEDEX, for
instance). The term “trademark” or “mark” is used generally to refer to
both trademarks and service marks.
What is the difference between the ™ symbol and the ® symbol?
The ™ symbol is used to identify a trademark (and the SM symbol
identifies a service mark) that has not yet been registered with the US
Patent and Trademark Office. Once a mark is registered with the USPTO,
then the owner may use the ® symbol.
What is a trademark search?
Before adopting a trademark it is important to consider whether the mark
is available. That is, you must ensure that the trademark is not already
in use or registered by another person or company. To do this, a
trademark attorney can check the records of the USPTO, the individual
state trademark databases as well as other sources of listings for
company names and products and services.
Why do I need a trademark
search? What if I don’t want to spend the money on a trademark
Without conducting a trademark search, you could waste time and money
using a trademark or filing a trademark application for a mark that is
already in use by another person or company. Not only could your
application be denied, but you could also face litigation and
potentially be required to stop using the trademark and change all of
your marketing and product packaging materials. Of course, this could
mean disruption of your business and loss of goodwill associated with
How do I “get” a trademark?
Trademark rights are established through use of a mark. This means that
the first person or company to use a trademark for a particular product
or service has rights in that mark for those products or services. In
other words, you don’t have to register a trademark in order to have
trademark rights. By contrast, in many other countries trademark rights
are established through registration, not use.
How do I protect my
Simply put, the best way to secure your rights and protect your
trademark is through a federal registration.
What information and materials do I need to file a trademark
In order to prepare your trademark application we will need the
following basic information from you:
- your name or company name and all contact information
- your proposed trademark (either the typed word or words or an
electronic copy or fax of your design)
- the exact goods and/or services on which you will use the mark (for
instance, “ceramic figurines” or “food catering services.”)
- information concerning your use or planned use of your trademark
- a specimen showing how your mark is used (if it is already in use)
- a check for the Patent and Trademark Office filing fee
What if I’m not using my trademark yet? Can I still file a trademark
Yes. If you haven’t yet starting using your trademark, but you plan to
in the future, you may file what is known as an Intent to Use trademark
application based on your good faith intention to use the mark. If you
file an application this way, the trademark registration will not issue
until you actually begin using the mark.
Can I register my name and logo together in the same application?
Yes, if you use your name and logo together on your products or on
promotional materials for your services. But, if you use or intend to
use the name and logo separately, two separate applications should be
long does it take to get a trademark registration?
Under normal circumstances, the trademark registration process takes
between 12 and 18 months. Keep in mind that this doesn’t mean you must
wait to use your trademark until the registration issues. In fact, since
your rights begin from the moment you start using your trademark, you
should certainly not wait until your registration issues.
is involved in the trademark application process?
Once your trademark application is filed, you will receive a Filing
Receipt from the USPTO that shows the filing date and the serial number
for the application. This indicates that the application has been
received and is being processed by the USPTO. Next the application will
be assigned to an Examining Attorney at the USPTO. This person will
review the application and make sure that it meets all of the
requirements for an application. He or she will also conduct a search of
the USPTO records to make sure that there are no other applications or
registrations for the same or similar trademark that could be
confusingly similar to your trademark. Assuming there are no potentially
conflicting marks and assuming that all of the other requirements are
met, approximately 6 to 9 months after filing, the application will be
published for opposition. The application is published in the USPTO’s
Official Gazette where other people or companies can oppose your
application if they believe they could be harmed by registration of your
mark. If no oppositions are filed, the USPTO will then issue either a
Notice of Allowance (if your application was based not on your current
use of the mark, but on your intent to use the mark in the future) or a
registration certificate. Under normal circumstances, the entire process
takes between 12 and 18 months.
What other documents must be filed after I file my initial trademark
If you filed an Intent to Use application, after the application has
been examined and approved, you will need to file a Statement of Use
before the registration will issue. Otherwise, during the examination,
other documents need to be filed only if the Examiner has problems or
questions concerning your application.
Why can’t I just prepare and file the application myself?
You can. However, an experienced trademark attorney can help you avoid
the common mistakes made on applications and ensure that your
application is filed correctly, saving you time and money.
Why do I need to
register my trademark?
Although you have certain rights in a trademark as soon as you begin
using the mark, a federal trademark registration gives you these
- gives you exclusive nationwide trademark rights - without a federal
registration, you only have rights in the geographical areas where you
are actually using the mark;
- allows you to bring an infringement suit in federal court;
- gives you a legal presumption of your exclusive ownership rights in
- discourages others from taking a similar name;
- protects your internet domain name (if you are using it as a
- allows you to file your trademark registration with the US Customs to
stop counterfeit products from coming into the US.
- shows your serious commitment to Intellectual Property rights to
If my company name was
already approved when I incorporated, does this protect my company
name as a trademark?
No. When the state where you incorporate approves your company name,
they are concerned only with ensuring that there are not two identical
company names in the state. Having a corporate name does not ensure that
there isn’t another company using the same trademark and it doesn’t
ensure that you will have exclusive rights to the trademark in your
field. Even with a corporate name approval, you should still conduct a
trademark search and register your trademark with the Patent and