by Ron Bartels
A trademark is the one of the most important business assets you’ll ever own.
It’s your name, your logo, or any other symbol that distinguishes your company or products in the marketplace.
Business Justice – Trademark Education – The How To Process – Business Identity – Registered Trademark
Registering your trademark prevents others from using your business identity to market their own products, which can confuse your customers and damage your brand. LegalZoom can help you register your trademark in 3 easy steps.
First, some must know education about trademarks
1. Introduction to Trademarks
A trademark is anything that is used, or intended to be used, to identify the goods of one manufacturer from the goods of others. It is a brand name. Trademarks are important business tools because they allow companies to establish their product’s reputation without having to worry that an inferior product will diminish their reputation or profit by deceiving the consumer. Trademarks include words, names, symbols and logos. Anything that distinctly identifies your company can be a trademark, provided that it is for goods.
A service mark is very similar to a trademark, except that it is used to distinguish services in the stream of commerce. Like a trademark, a service mark can include words, names, symbols and logos. Typically, trademarks appear on the actual product or its packaging. Service marks appear mostly in advertising for the services. In this education center, when we use the term “trademark,” we generally mean both trademarks and service marks.
If you wish to register your trademark or service mark, LegalZoom can help you obtain one from the convenience of your home or office and without any hassles. Simply answer a few questions online and let us take care of the rest.
Trademark rights are established by either:
- actually using the mark or
- filing a proper application to register a mark with the U.S. Patent and Trademark Office (PTO).
Registering with the PTO is not necessary for establishing trademark rights. However, registering your mark can help secure benefits, such as an official notice of your claim to the mark, evidence of ownership, the ability to invoke federal court jurisdiction, a basis for obtaining registration in foreign countries and preventing the importation of infringing foreign goods.
There are two types of rights in a mark: (1) the right to register and (2) the right to use. Generally, the first party who either uses a mark in commerce or files an application with the PTO has the ultimate right to register. The right of use can be more difficult to determine. This is especially true when two parties begin using a similar mark without knowledge of each other and without registering the mark. In this case, only a court can decide who has the right of use. Federal registration does provide a significant advantage in court proceedings if you find someone is using your trademark.
While you are not required to search for conflicting trademarks, doing so can be a good idea. Should there be any existing trademarks already registered that conflict with yours, your application will be denied and filing fees are nonrefundable.
Additionally, since trademarks can be created through common law by using the mark, it is also advisable to search for common law trademarks. It is less important to conduct a common law search. If you wish to do so, start with phone books, industrial directories, state trademark registers, or a search firm that can research conflicts for you.
You can also search for registered trademarks on the PTO’s website: www.uspto.gov/main/sitesearch.htm.
Alternatively, you can use a professional trademark search company, such as LegalZoom, to research not only federally registered marks but also common law trademarks.
There are four basic requirements for filing a trademark (or service mark) with the U.S. Patent and Trademark Office.
- The mark must be filed under the actual owner’s name. The owner of the mark is the person who controls the nature and the quality of the goods sold or the services rendered under the mark. The owner does not have to be an individual. The owner can be a partnership, corporation or association. If the owner is a corporation, then the applicant’s name is the company name.
- The applicant must specify what type of entity it is (individual, corporation, etc.) and its national citizenship. The applicant is not required to have U.S. citizenship.
- The application must be based on actual use or a real intent to use the mark in business.
- For applications based on actual use, the applicant should indicate what products he or she has actually placed the mark on and sold for business. A mark for services will be considered “actual use” when it is used or displayed in the sale or advertising of services and the services are actually rendered.
- If you are filing an intent-to-use application, it is sufficient that you make a statement in good faith that you plan to use the mark in commerce. However, you will have to actually use the mark before it can be registered. The USPTO will issue a Notice of Allowance, which gives you six months to either use the mark in commerce or file for an extension. Once you file the Statement of Use, the USPTO will issue the registration certificate.
- You must submit a drawing of the mark and a specimen of the mark when the application is based on actual use. A specimen is a real-world example of how the mark is actually used on the goods or in a service. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising, such as magazine ads or brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual specimens are bulky, or larger than 8½” x 11″, then the applicant must submit facsimiles, (e.g., photographs or good photocopies) of the specimens.
A drawing is a page that depicts the mark you seek to register. In an application based on actual use, the drawing must show the mark as it is actually used (i.e., as shown by the specimens). For applications based on a real intention to use, the drawing must show the mark as the applicant intends to use it. A drawing is necessary even when a specimen is submitted.
The registration process generally takes six months from start to finish, although it can last longer if legal issues arise during the process. After filing an application, the USPTO will assign your file a serial number and mail you a receipt about two months after filing. An attorney for the USPTO will examine the application and publish the mark in the Official Gazette. Other parties will have thirty days from the publication date to object to the mark. Then, the USPTO will either issue a Certificate of Registration (if the application is based on actual use) or a Notice of Allowance (if the application is based on intended use).
The USPTO will refuse to register a mark if it does not function as a trademark or service mark. Not all words, names, symbols or devices function as trademarks. For example, names which merely describe the goods on which it is used cannot be registered. This means you cannot register the mark “keyboard” for a computer keypad.
Several of the most common (though not the only) grounds for refusing registration include:
- The proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods or services. Examples of merely descriptive marks which would be refused include: medical guide for website services featuring medical guides, denim for jeans, and spicy sauce for salsa.
- The proposed mark consists of or comprises immoral, deceptive, or scandalous matter.
- The proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute.
- The proposed mark consists of or comprises the flag, coat of arms, or other insignia of the United States or any state, municipality, or foreign nation.
- The proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased U.S. President during the life of his widow, if any, except by the widow’s written consent.
- The proposed mark resembles a mark already registered by the Patent and Trademark Office (PTO), so that use of the applicant’s mark would likely cause confusion, mistake or deception.
- The proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant’s goods or services.
- The proposed mark is primarily merely a surname.
- Matter that, as a whole, is functional.
Once you register your trademark, you will have legal ownership of the trademark. Additionally, you can have the U.S. Customs Service prevent the importation of goods that infringe on your trademark rights. However, if a domestic company infringes on your trademark, it is probably best to consult an attorney specializing in trademark law. The factual situation of your particular case will determine the best way to resolve the dispute. This is a decision an attorney can help you make.
Renewing a Trademark
For a trademark registration to remain valid, an Affidavit of Use must be filed:
- between the fifth and sixth year following registration, and
- within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a six month grace period after the end of the sixth or tenth year by paying an additional fee.
Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.
The registrant must file a renewal application within the year before the expiration date of a registration, or within a six month grace period after the expiration date by paying an additional fee.