A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this website, the terms "trademark" and "mark" refer to both trademarks and service marks.
All trademarks are automatically protected under federal US common law in accordance with the Trademark Act of 1946. Therefore, it is actually not necessary to register a trademark. However, there are a number of benefits for doing so:
- Constructive notice nationwide of the trademark owner's claim.
- Evidence of ownership of the trademark.
- Jurisdiction of federal courts may be invoked.
- Registration can be used as a basis for obtaining registration in foreign countries.
- Registration may be filed with US Customs Service to prevent importation of infringing foreign goods.
When you decide to trademark something, you should immediately check if anyone else has using this trademark or a mark that is substantially similar to the one you’re thinking of using. So, the first step is to check other people’s applications to the US Patent and Trademark Office (USPTO). There are two key tests for “substantial similarity.” First, is it likely that the trademark causes confusion among consumers? This is also called traditional trademark infringement. For example, a new cartoon called Mick Mouse can be easily confused with the already existing Mickey Mouse. The second question deals with whether the new trademark is likely to cause dilution of respect for the older one? Unlike traditional trademark infringement, neither likelihood of confusion, nor competition between the parties' goods is required. The owner of a "famous" mark is entitled to stop another person's commercial use of its mark that dilutes, blurs or tarnishes its "distinctive quality."
To do a trademark search you could either use the USPTO searchable database – but bear in mind that only federally registered trademarks are registered here. Unregistered trademarks that have common law protection are not registered here. To do a complete trademark search, you could use nameprotect.com, an online database that let’s you do trademark research for free. It’s advisable to contact an attorney should you have any questions concerning trademark research.
When you’re ready to register your trademark, registration applications can be submitted at the USPTO. There are two different application tracks. The first one is the “use” application. This one is applicable if you have already begun using the trademark in commerce. The second one is the “intent-to-use” application, applicable when you haven’t used the trademark yet, but intend to do so.
The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application. An applicant residing outside the United States may list a domestic representative, that is, the name and address of any person residing in the US “upon whom notices or process may be served for proceedings affecting the mark.”
The duration 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.
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 is issued.
Disclaimer: Data and information is provided for informational purposes only, and are not intended to provide, and do not constitute, legal advice. Persons who need legal services should contact a duly licensed professional.