INTELLECTUAL PROPERTY

Trademarks

Your brands are the trademarks of your business that identify you as the source of the goods and services that you sell to your customers. Since your brands are identified with you, those brands store the goodwill that you have developed with your customers. As such, trademarks can be an extremely valuable intangible asset of a business. For example, consider the value of the iPhone trademark and numerous other famous brands.

Trademark registration is how you protect the intangible value of your goodwill.

WHAT IS A TRADEMARK?

A trademark is a mark (text and/or graphic) that is used to identify the owner as the source of the goods and services being sold.

WHAT DOES THE REGISTERED TRADEMARK SYMBOL MEAN?

The ® means that the trademark is registered with the US Government, more specifically the United States Patent and Trademark Office (USPTO). It is a fraudulent business practice to use the ® with a mark that is not registered with the USPTO.

WHAT DOES THE TM SYMBOL MEAN?

The ™ means that the business that placed the TM symbol near a mark is using that mark as a trademark, irrespective of whether the business has registered the mark.

SHOULD I REGISTER MY US TRADEMARK?

In most instances, the answer is yes, because US trademark registration provides many benefits.

HOW DO I PROTECT MY TRADEMARK(S)?

US trademark applications are filed with the Unites States Patent and Trademark Office (“USPTO”). US trademark registrations provide nationwide protection for trademarks that are used in more than one state. State trademark applications can be filed in the individual states to protect marks used in only one state. Brands that are used internationally can be protected by filing trademark applications in foreign countries.

HOW LONG DOES IT TAKE TO REGISTER A TRADEMARK?

Unfortunately, the registration process has dramatically slowed in the past couple of years as new applications now wait in the examination queue for nearly a year before the examination commences. The extended wait results in the registration process taking approximately a year and a half for a typical application. The USPTO now posts the approximate wait time here.

WHAT IS A BASIC US TRADEMARK APPLICATION?

A basic trademark application is a trademark application that is prepared and filed in only one class of goods or services using information provided by the owner. The owner must provide the information needed for the application, as well as a specimen showing the use of the mark on the goods and services for a use application. It is highly recommended that a trademark applicant perform trademark searches before adopting a trademark and filing a trademark application so that you do not waste your money and time pursuing a trademark that is already taken.

SHOULD I FILE MY OWN TRADEMARK APPLICATION?

Only if you are very comfortable with trademark law and the application process as mistakes could affect your rights in your brand. If you are not very comfortable with the process, then it is probably worth a few hundred dollars to have a professional file the application.

DO I NEED TO PERFORM A TRADEMARK SEARCH BEFORE I BEGIN USING A TRADEMARK OR FILING A TRADEMARK APPLICATION?

Absolutely yes, you do not want to adopt a trademark that is already being used by someone else for similar goods and services. Making sure that someone else is not already using a trademark at the beginning of the process is the least expensive time to check the availability of the mark.

DO I NEED TO BE USING A TRADEMARK ON GOODS AND SERVICES TO FILE A US TRADEMARK APPLICATION?

No, in the US, applicants can file trademark applications for marks that they 1) are currently in use of goods and services, and 2) intend to use in commerce.

WHEN SHOULD I FILE A TRADEMARK APPLICATION?

As soon as you decide that you plan to use a mark for an extended period of time.

WHAT HAPPENS IF SOMEONE ELSE IS ALREADY USING MY TRADEMARK?

You may have to change trademarks if there is a likelihood of confusion between your mark and their mark.

CAN I BE SUED FOR USING MY TRADEMARK?

If someone else has registered or is using a trademark before you started using your mark, it is possible that you may be sued for infringing on the other person’s trademark.

WHAT HAPPENS IF I GET SUED FOR USING MY TRADEMARK?

It is possible that you may have to stop using your trademark and may have to pay damages for infringing the other person’s trademark.

WHAT HAPPENS IF SOMEONE ELSE STARTS USING A TRADEMARK THAT IS THE SAME OR SIMILAR TO YOUR TRADEMARK?

Your rights and ability to stop the other party from continuing to use the similar mark may depend upon whether or not you are using the mark and if it is registered.

CAN I REGISTER THE NAME OF A BOOK AS A TRADEMARK?

The name of a book has been held to be inherently descriptive, but you may be able to register the name as a trademark in certain instances.

CAN I REGISTER A MARK THAT IS MERELY DESCRIPTIVE OF MY GOODS AND SERVICES?

Merely descriptive marks can be registered on the supplemental register. Generic descriptions of goods and services can not be registered at all. Learn more about a supplemental register.

WHAT IS A GENERIC DESCRIPTION? THE ACTUAL NAME OF A GOOD OR SERVICE?

Escalator was once a trademark for moving stairs, but then it became the generic name for the product. Be careful to not use your trademark to name a product or service or else, you might just lose your trademark rights.

WHAT HAPPENS IF I TRY TO REGISTER A TRADEMARK THAT INCLUDES GENERIC DESCRIPTORS?

If your trademark only includes generic descriptors, your application for registration will be refused. If your trademark include some aspects that are not generic, then the trademark office will require you to disclaim any exclusive right to the generic descriptors in the trademark before it will be registered. For example, to register Acme Toy Store, an applicant would have to disclaim the words “Toy Store” as those words are the generic name for a toy store.

DO I NEED A US ATTORNEY TO FILE A US TRADEMARK APPLICATION?

If you are not a US company or citizen, the answer is YES. US companies or citizens can file their own US trademark application at https://www.uspto.gov/trademarks-application-process/filing-online.

WHAT IS THE DIFFERENCE BETWEEN THE PRINCIPAL AND SUPPLEMENTAL REGISTER?

The Supplemental register is for the registration of trademarks that are not eligible for registration on the Principal register, because the trademarks are merely descriptive and ornamental in nature and have not acquired distinctive in identifying the owner as the source of the goods and services. Registration on the supplemental register provides a trademark owner with several important rights, but not as many as registration on the principal register. Learn more about the difference between the principal and supplemental registers.