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 American Express.

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 of art.

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 distinctive.

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 trademark?

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 search?

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 the trademark.

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 trademark?

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 application?

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 application?

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 filed.

How 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.

What 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 application?

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 additional benefits:

- 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 the mark;
- discourages others from taking a similar name;
- protects your internet domain name (if you are using it as a trademark);
- 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 potential funders/investors

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 Trademark Office.