A trademark is a word, name, symbol, or device used in trade to indicate the source of goods and to distinguish them from the goods of others. A servicemark is the same, except it indicates and distinguishes the source of a service rather than a good. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.
• The U.S. Patent and Trademark Office (USPTO) conducts reviews of trademark applications for federal registration and decides whether to grant federal registration or not. The USPTO does not: • make decisions on the applicant’s right to use a mark • conduct trademark searches for prospective registrants • comments on the validity of registered marks or eligibility of a particular mark • give legal advice or opinions
2.What is the difference between the notations TM, SM and ®?
Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending.
3.Should marks be registered?
Registration is not required, as the right or ownership of a mark is established by the legitimate use of the mark. However, securing a registered trademark is highly recommended because it provides exclusive rights to prevent unauthorized use of the mark. The main benefits of registering a trademark are that, it: • Gives a national scope and protection to the mark and its usage • Grants the right to use the “®" symbol that may deter potential infringements • Acts as a public notice and offers a legal presumption on the ownership as well as the exclusive rights to use the mark • Gives the right to sue for infringement in federal courts • Helps to obtain registration in foreign countries • Helps to prevent importation of infringing foreign goods
4.Do I need a trademark attorney to register the mark?
Not necessarily, as you can file the application yourself. However, the services of a skilled trademark attorney who is familiar with conducting searches, the detailed application filing procedure and maintenance requirements will help you to save time, ensure proper protection in the appropriate trademark classes and avoid unwarranted rejection.
5.Can I apply for a registration of the mark without actually using it?
Yes. You can file on the basis of a bonafide “intent to use” the mark in commerce in the future. Actual use of the mark should begin before the USPTO registers the mark. The applicant will have to file the ‘Allegation of Use’ form to establish the legitimate usage of the mark in commerce.
6.What is a search for a conflicting mark?
A search for conflicting marks is necessary to ascertain the uniqueness and ultimate registerability of your mark. A search will confirm that the mark or a similar mark is not already in use as a registered mark or part of a pending application. Bellizio & Igel, PLLC can assist you in your trademark search.
7.On what grounds might my application be rejected?
The application can be rejected on “relative” or “absolute” grounds. • Relative grounds The mark or a similar mark is already in use as a registered mark, or is part of a pending application.
• Absolute grounds • Generic Marks: The mark uses words that generically identify a good or service (e.g. ‘Pen’ for a pen manufacturer). • Merely Descriptive (or Misdescriptive) Marks: 1. Descriptive of the goods or service (e.g. ‘Small’ for a compact computer) 2. Descriptive of quality or feature of goods or service (e.g. ‘Fast’ for a super fast car) 3. Geographically descriptive (e.g. ‘California’ for a software company) 4. Descriptive of an individual by using merely a surname (e.g. ‘John’ for a law firm) • Deceptive Marks: The mark misleads people as to the nature, quality, feature or geographic origin of the goods • Immoral or Scandalous Marks • Government’s flag, armorial bearings, official hallmarks and emblems of states and international organizations • Name, portrait or signature of a living person (without first obtaining consent) • Name, portrait or signature of a US President Note: Though these are the main possible reasons for rejection, this is not a comprehensive list.
8.What is an "Office Action"?
An "Office Action" is a letter from the USPTO setting forth the legal status of a trademark application. The USPTO may refuse a trademark application after an initial review by an Examining Attorney. Refusals may be informal, requiring clarification or amendment of the application in order to place it in proper condition for publication. Informalities include problems with the identification of goods or services, the legal entity status or citizenship of the applicant, improper specimens, or improper dates of use. More complicated problems may involve substantive legal refusals based on statutory prohibitions, such as refusals based on mere descriptiveness (or generic marks), likelihood of confusion or scandalous marks. If your trademark application receives an "Office Action" from the USPTO, you may require legal assistance to properly respond to the issues raised by the Office Action. Absent such a response, your trademark application may go abandoned, and you may lose your rights. Bellizio & Igel, PLLC can assist you with a proper response to an Office Action.
9.What is publication for opposition?
Once the USPTO is convinced about the credentials and uniqueness of your mark, your mark will be published in the Official Gazette. The USTPO offers thirty (30) days from the date of publication for any party to file an appeal against the approval of your mark. If there is no opposition (or if the opposition is unsuccessful) a Certificate of Registration will be issued for applications based on use or a Notice of Allowance will be issued for “intent to use” applications.
10.What is a Certificate of Registration?
If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published.
11.What is Notice of Allowance?
If the mark is published based upon the applicant's bona fide intention to use the mark in commerce, and no party files an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about twelve (12) weeks after the date the mark was published. The applicant then has six (6) months from the date of the Notice of Allowance to either: (i) use the mark in commerce and submit a statement of use plus a filing fee of $100 per class of goods or services and the required specimens, or (ii) request a six (6) month extension of time to file a statement of use plus a filing fee of $150 per class of goods or services. The USPTO will issue the registration certificate only after the statement of use is filed and approved.
12.What is an Allegation of Use?
This is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner, to declare the use of the mark in commerce. An Allegation of Use can be filed only: (i) on or before the day the USPTO approves the mark for publication in the Official Gazette or (ii) on or after the day the USPTO issues the Notice of Allowance. The USPTO will return any Allegation of Use filed in the interim period between the date of approval of the mark for publication and the date of issue of the Notice of Allowance. An Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use. An Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use. The Allegation of Use must be filed along with: (i) a specimen showing use of the mark in commerce for each class of goods or services listed in the original application and (ii) a filing fee of $100 per class of goods or services.
13.What is a Request for an Extension of Time to file a Statement of Use?
This is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner to declare that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee of $150 per class of goods or services must accompany the Extension Request. If granted, the owner receives an additional six (6) months to either: (i) use the mark in commerce and file a Statement of Use; or (ii) file another Extension Request. You can file a maximum of six (6) Extension Requests. However, you must use the mark and file a Statement of Use within three (3) years of the date the Notice of Allowance issues.
15.How long will it take to register the trademark with the USPTO?
You have to be patient as the completion of the registration process may take a long time. The applicant should receive a response to the application from the USPTO within six (6) months from filing the application. However, the total time for an application to be processed may be more than a year, depending on the basis for filing, and the legal issues which may arise in the examination of the application.
16.Is my US registration valid in foreign countries?
No. US registration protects your rights only within the US. For protection in foreign countries, you need to register your mark internationally. This is typically accomplished on a country-by-country basis. However, there are a few international agreements that give the benefit of multiple filings across different member countries by filing just one application. This system is mainly governed by two treaties set forth by the World Intellectual Property Organization (WIPO) - the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. At present, more than 60 countries including the United States are party to these agreements.
17.How can I protect my registered trademark?
The golden rule is to continue to use your mark in trade and commerce. At the same time, be wary of potential infringers and counterfeiters. If you happen to come across any misuse of your registered mark, you must notify the infringing parties or risk losing your trademark rights. A classic example is ‘Aspirin’ that lost its trademark status due to the failure of the owner to prevent others from using it. Bellizio & Igel, PLLC can assist you in protection your trademark.
18.What if there is a trademark infringement?
If there has been an infringement of your trademark, you can file a claim under the federal and state laws. As the plaintiff, the onus will be on you to prove that the use of a similar mark by the defendant has created a likelihood of confusion. If you are successful in establishing that there has been an infringement: (i) the court will grant an injunction against further infringement, (ii) your attorney’s fees will be refunded, if the mark is federally registered and (iii) you may be awarded monetary damages.
19.Can I register my domain name as a trademark?
Yes, provided the domain name is used to provide a unique and distinct image and identity to your goods or services. Simply registering your domain name does not mean that the domain name is protected as a trademark.
20.Is a "trademark" the same as a "trade name?"
No. A "trade name" is a name an owner uses to identify his or her business. It normally ends with “Inc.,” “Ltd.,” etc. Trade names are typically registered with the county in which the business operates.
21.What is a “copyright”?
A copyright is a legal right granted to authors of “original works of authorship” that are fixed in a tangible form of expression, whether published or unpublished. Copyright protection is available for the following types of works: Literary, Musical, Dramatic, Choreographic, Architectural, Pictorial, Graphic, Sculptural, Sound recordings, Motion pictures and other audiovisual works.
22.What are the benefits of timely copyright registration?
While conventional wisdom suggests that copyright protection exists once a work is reduced to writing (or any other tangible medium, as in the case of software code written to disk), a copyright must be registered with the U.S. Copyright Office before a party may sue in federal court for its infringement. A bonus is granted to those that register their copyrights immediately, or within three (3) months of publication, in the form of statutory damages and attorney’s fees for infringement. Bellizio & Igel, PLLC can assist you in filing the documents needed to register your copyright.