Trademark FAQ

What is a trademark?

A trademark is a word, symbol, slogan or device (design) that identifies the goods and services of one party and distinguishes them from those of another. As well as identifying the goods and services with which it is associated, a mark serves as a guarantee of quality.
Over the years, the practical definition of a trademark has expanded continually. Initially only words, numbers and designs were considered to be able to function as marks. Over the years, however, the definition of a trademark has been expanded by judicial decisions to include:

  • configurations of the goods themselves
  • containers for the goods
  • colors
  • fragrances
  • decor and ambiance (for restaurants)

Trademarks? Service marks? What is the difference?

While all marks are commonly referred to as trademarks, several different types actually exist. While trademarks and service marks are the best known types, there are also several others:

Trademarks are used on products (goods) (SARA LEE cakes, DELL computers).
Service Marks are used to identify services (MCDONALD’S restaurant, WALT DISNEY WORLD amusement park).
Collective Membership Marks identify members of an organization, association or union (AFL-CIO union, PHI BETA KAPPA honorary fraternity).
Collective Trademark/Service Marks are used to identify the products or services of all of the members of an organization (QUALITY CHEKD dairy products and BETTER BUSINESS BUREAU for information services relating to business practices).
Certification Marks identify marks that are used by a party other than its owner to certify quality, origin, material, or mode of manufacture of goods or services. These marks also show that the product or services are manufactured or provided by members of a union or other organization. (UNDERWRITERS LABORATORIES certifying adherence to specific safety standards.)

How do I get rights in a mark? (use v. registration)

In the US, rights in a trademark have historically come from use. The common law basis of our legal system gives ownership of a mark to the first party to use it on goods or in association with services. Both the federal government and the 50 states offer registration of trademarks that satisfy various statutory requirements.

Registration of a mark with the United States Patent and Trademark Office (USPTO) merely provides procedural advantages relating to the enforcement of those basic rights. An essential benefit is the right for a trademark registrant to file an infringement suit in a federal (rather than a local/state) court. The owner of a registration also starts with several presumptions — including ownership of the mark and an exclusive right to use it. Another advantage of registration is that other parties are given notice of your claim of ownership of the mark. The USPTO even helps you protect your mark by refusing registration to other parties that apply for similar marks.

What is infringement? What is the standard?

Most trademark owners are extremely serious about protecting their marks. Get too close to their badge of quality and it’s “we’ll see you in court.” When developing a mark, a business owner must be sure that the mark that it wishes to adopt and use is not likely to cause confusion with existing marks. The legal standard is the “likelihood of confusion.”

Marks need not be identical or virtually identical for problems to arise. The test is whether the marks in question as used on their respective goods and/or services are confusingly similar. A variety of factors are considered, including:
how similar the marks are in terms of sound, appearance, and meaning
whether the goods and/or services are related or are sold/used together
the channels of trade in which the product(s) are sold
the sophistication of the average purchaser (of the products/services)

Take these considerations into account whenever you search and be sure that you extend your queries broadly enough to catch all of the similar marks.

What do the ™ and ® symbols mean?

™ means “trademark” and indicates that the owner is using the word or design as a trademark. It is commonly used prior to registration with the USPTO. (Similarly, “SM” denotes a service mark.) The R in a circle symbol (®) indicates that the trademark is registered with the USPTO

What is a device?

A design mark or logo. For example, McDonald’s “golden arches.”

Why Search?

Searching a mark before adopting and using it is best practice for minimizing the risk associated with the adoption and use of new trademarks. A trademark search uncovers potential conflicts — identical or similar marks that are already in use and owned by third parties for identical or related goods and services.

Most searches are undertaken to help determine trademark availability, registrability and protectibility of new marks.

What is Intent-to-Use?

Since the trademark statute (the Lanham Act) was revised in 1989, applicants can file an application to register a mark without first using it in commerce. As long as the applicant has a bona fide intention to use the mark in commerce, the USPTO will examine the application just as if it is based on actual use.

The examination process for applications based on actual use and intent-to-use is quite similar. The main difference comes when the Attorney-Examiner accepts the application and passes it to be published for opposition purposes. If no opposition is filed (or if the applicant “wins” the opposition) and use has been alleged, a registration will be issued. If no use has been claimed, a Notice of Allowance of the mark is sent. The applicant has six months (plus up to 5 extensions) to make actual use of the mark and file a Statement of Use. Once this action is taken, a brief second examination follows and, in most cases, a registration issues.

How do I register my trademark? Do I need an attorney?

All that is necessary is that you fill out an application and send it, a “drawing” of the mark, specimens showing how the mark is used (or intends to be used), and the appropriate filing fee(s) to the USPTO. (Currently these fees are $245 per class.) The USPTO does not require that the applicant be represented by an attorney.

However, the process can be extremely intricate especially if the USPTO cites a “confusingly similar” mark or other statutory prohibitions, or finds other technical problems with the application. You will also need an attorney if a third party (after publication) opposes the mark’s registration. Further, assigning the appropriate goods and/or services classes is an important step – – and regarded by some as an art form. For these reasons, Luzcad strongly recommends that you seek the services of an experienced intellectual property attorney. If you need a referral in your geographic area, please phone us toll free at 1-(732)536-5181

If I register my mark, how long does the registration last?
It all depends. If all of the necessary documents (affidavits of use and renewals) are properly filed, a registration can last indefinitely. If not, it could be cancelled as soon as the sixth anniversary of the date it is registered. The oldest living registration currently in effect (No. 11,210 registered in May, 1884) covers the mark SAMSON. As long as it is renewed every 10 years, it will last well into the coming millennium.

If I register my mark, how long does the registration last?

It all depends. If all of the necessary documents (affidavits of use and renewals) are properly filed, a registration can last indefinitely. If not, it could be cancelled as soon as the sixth anniversary of the date it is registered. The oldest living registration currently in effect (No. 11,210 registered in May, 1884) covers the mark SAMSON. As long as it is renewed every 10 years, it will last well into the coming millennium.

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