- What is a Trademark?
A federal trademark provides a trademark owner with the exclusive right to use a particular name, logo or slogan in connection with your chosen goods or services within the United States. A trademark application may be based on your current actual use of a mark in commerce, or may be based on your intent to use a particular mark. Trademark applications may also be based on either a foreign trademark application or a foreign trademark registration.
A trademark for a name only is called a standard character mark. A standard character mark provides broad protection for that name in connection with the goods or services that you are offering for sale. Another type of mark is a logo, or a depiction, that may be registered as a trademark to identify your goods or services. For example, the word NIKE is a standard character mark identifying products sold by Nike, Inc. The famous Nike Swoosh® is an example of a logo that is also a registered trademark of Nike, Inc. Slogans may also be registered as trademarks. BMW’s ‘The Ultimate Driving Machine’ is an example of a slogan that is a registered trademark.
- What is the difference between a trademark and a service mark?
Trademarks identify a mark that is used in connection with the sale of goods. Service marks are the same as trademarks, but identify the provision of services in connection with a particular mark. For instance, a consulting company that does not sell any products will obtain a service mark, rather than a trademark. Both registered trademarks and registered service marks prevent all others from using that same name, logo or slogan in connection with the chosen goods or services.
The United States Patent & Trademark Office (USPTO) provides 34 different classifications of goods and eight classifications of services that may be used in registering your trademark or service mark. A mark may be registered in more than one classification.
- Can I register my mark in a foreign country?
Trademark protection may be obtained in virtually all foreign countries where a person may reasonably do business. Foreign trademark applications are generally filed through the World Intellectual Property Organization (WIPO).
- What do the symbols TM, SM, and ® mean?
Prior to obtaining an actual registered trademark, the owner of a mark selling goods may use the symbol TM. Similarly, a person selling services may use the SM symbol prior to obtaining a registered service mark. Using either the TM or SM symbols tells the world that you believe you have some common law rights in the mark. After you receive your federal trademark registration, however, you may use the ® symbol, which denotes that you have a federal registration for your trademark.
- What is the trademark application process?
After filing a trademark application, the application is sent to a trademark examiner for an examination to determine whether, and on what terms, the examiner will issue the trademark.
Most applications receive at least one Office Action from the trademark examiner. An Office Action initially rejects the trademark application. The Office Action may be based on a number of different factors, such as a likelihood of confusion with another, existing mark; you may need to disclaim certain portions of the mark; the goods selected may need refinement, etc. There are a number of reasons for receiving an Office Action.
It is then the job of the trademark attorney to convince the examiner at the Trademark Office that the mark should be issued in spite of the objections raised in the Office Action. Fees related to responding to Office Actions are not included within the initial application fee.
Once the examiner approves the trademark, it is published for 30 days in the Official Trademark Gazette. During this period of time, anyone who believes that the issuance of the mark will harm his or her own mark may file a notice of opposition also called an ‘opposition proceeding’. An opposition proceeding is essentially a lawsuit filed with the Trademark Trial & Appeal Board to determine whether the published mark should issue, in light of an existing registered trademark or trademarks.
In the event that no opposition proceeding is filed, or if you prevail on the opposition, then the examiner will issue a Notice of Allowance. If you were not using the mark in interstate commerce at the time you filed your trademark application, then you must file a specimen showing that you are using the mark in interstate commerce in order to obtain a formal registration. There is an additional government fee, and attorney charge, to file a statement of use.
- What protection is afforded by a trademark?
A trademark allows the owner of the mark, or its licensees, the exclusive right to use the mark in connection with the goods or services stated in the registration. If another person uses that mark, or a similar mark, in connection with the same or similar goods or services, then the owner may sue for infringement. The remedies for infringement of a trademark may include an injunction to stop the infringer from further use of the mark, damages, costs and, in some situations, attorney’s fees.
- May I sell my trademark?
Once a trademark issues, you now have a recognized property interest in that trademark. Because you own a recognized property interest in the mark, a trademark may be sold or assigned to another person or entity.