FAQs about Trademarks
Updated: May 17, 2020
This blog post provides answers to questions people frequently ask me about trademarks.
What is A Trademark? A Service Mark?
A trademark is the brand name for a product. A service mark is the brand name for a service. Trademarks usually are used on labels or tags attached to the goods or their containers. Service marks usually are used in advertising and marketing materials. Marks can consist of letters, words, numbers or symbols or any combination thereof.
Why Should I Care About Protecting My Mark?
Trademarks are exclusive property rights. If you have built up goodwill in your mark, someone might use a similar mark on inferior goods or services to confuse consumers. Their use might destroy your reputation and business. A well-protected mark also might be a valuable asset that generates income for your business through licensing or a sale of your business. In addition, a well-protected mark can help guard against cybersquatters that register your mark as a domain name and demand a ransom for its return.
How Do I Select A Mark?
From a business perspective, you want to select a mark that will help consumers decide to buy your products or services. From a legal perspective, you want to select a mark that is protectable, available, and registrable.
How Do I Know if My Mark is Protectable?
The more distinctive a mark, the more protection it receives. There are three categories of distinctiveness: (1) fanciful/arbitrary, (2) suggestive and (3) descriptive. Fanciful/arbitrary marks are made-up words or symbols, or common words or symbols arbitrarily applied to goods or services (e.g., EXXON, REEBOK, SHELL, CAMEL) Suggestive marks suggest a benefit, quality or characteristic of the product or services (e.g., CITIBANK, COPPERTONE, L’EGGS). Descriptive marks describe the purpose, use, size or characteristic of the goods or services (e.g., CHAP STIK, RICH/N CHIPS). Fanciful/arbitrary marks receive the most protection, suggestive marks receive moderate protection, and descriptive marks receive the least amount of protection. Descriptive marks can acquire distinctiveness, and thus more protection, over time. If you have been exclusively using a descriptive mark for more than five years, its distinctiveness probably has increased. Generic words, phrases, and symbols are never protected.
How Can I tell If My Mark is Available?
A mark is available if no one else is already using a similar mark. The best way to check on availability is to conduct a trademark search.
How Can I Tell if My Mark is Registrable?
A mark is registrable if (1) no one else has already registered a similar mark and (2) it does not consist of prohibited material. The best way to check on registrability is to conduct a trademark search. The federal Trademark Act prohibits registration of, among other things, immoral or deceptive marks; marks that disparage or falsely suggest a connection with a person, business or country; surnames; geographically descriptive marks; merely descriptive marks; and names, portraits or signatures of a living person without his or her consent.
What Is A Trademark Search, What Does It Tell Me, Who Should Do It and How Much Does It Cost?
A trademark search is a search of registered and unregistered marks. A thorough search looks for similar marks that have been registered or are pending with the federal government or any state government, are in use, but unregistered, or are in use as Internet domain names. An experienced trademark researcher should conduct the trademark search. An experienced trademark attorney should review the search report. A search by a reputable search firm can cost approximately $700. Legal fees associated with review can vary depending on the level of review requested.
Do I Need A Search If I Have Been Using My Mark for Some Time?
It depends on your goals. If you intend to apply for a federal registration, a search still provides valuable information that will help your trademark attorney assess the potential risks associated with the application.
Can I Do A Trademark Search Myself?
While certain free or low-fee resources are available to the general public for researching trademarks, you basically get what you pay for. If you are unable to afford a professional trademark search, you should at least consult with an experienced trademark attorney to understand the risks you assume by doing it yourself and to obtain some guidance in interpreting the results of your search.
How Can I Protect My Mark?
Marks automatically obtain protection through exclusive use. The first person that uses a mark in a geographic area has superior rights to that mark in that area. Registration enhances protection by increasing the geographic scope of your rights and providing greater remedies if someone infringes on your mark.
What Types of Registration Are Available?
You can register your mark nationally at the U.S. Patent & Trademark Office (the “PTO”) and/or in any state at that state’s trademark office.
What are the Benefits of Federal Registration?
Federal registration gives you nationwide rights to your mark, even if you are only using it in a limited geographic area. The potential threat of a lawsuit in federal court and, in some cases, court orders prohibiting the sale of products with infringing marks, the ability to recover lost profits, actual damages and/or statutory damages and attorney’s fees are some of the benefits obtained by federal registration. A federal registration also will help you stop illegal importation of infringing goods. In addition, it can be used to stop cybersquatters and infringement of your domain name. You also are able to use the ® notation with your mark as a deterrent to potential infringers.
Describe the Federal Registration Process.
The federal registration process starts with submission of an application to the PTO. The application can be submitted either before or after you actually begin using the mark. If you submit the application before you start use, the PTO will “reserve” a registration that will be issued after you satisfy certain requirements. The PTO will assign an examining attorney who will correspond with you or your attorney to resolve any issues that arise from the application. Many times, registration hinges on an applicant’s ability to respond appropriately to the examining attorney’s questions. After these issues have been resolved, the mark will be published for opposition. The public will have 30 days from the publication date to oppose your application. If no one opposes your application, the PTO will issue your registration soon after publication. The entire process can take from 12 to 18 months from the date you file your application.
How Much Does Federal Registration Cost?
The filing fee currently is a minimum of $275 (for online filings), and can increase if you use your mark on a number of different types of goods or services. Legal fees associated with the application process vary depending on the degree of interaction with the PTO required to complete the application process and can increase significantly if someone opposes your application. You should plan on spending between $1,000 to $1,500 for an application that does not result in significant correspondence from the PTO.
Can I Apply for A Federal Registration Myself?
The PTO does not require that you use an attorney to file an application, but an experienced trademark attorney will increase your chances of obtaining a federal registration because he or she will understand the large volume of PTO regulations and practices associated with examining applications. An attorney also will be able to resolve PTO issues more effectively and efficiently.
What are the Benefits of State Registration?
State registration does not give you as many benefits as federal registration, but it is appropriate for several reasons. First, a state registration will give you exclusive rights to the mark within the state of registration. Second, it will show up when another person conducts a trademark search for a similar mark, and, therefore, might cause them to reconsider using that mark. Third, it might act as a deterrent. Fourth, it is much less expensive than a federal registration. Fifth, registration typically is easier to obtain due to a less comprehensive application examination process. Sixth, a registration will issue more quickly than a federal registration. And seventh, it may make available some added statutory remedies if you have to sue for infringement in state court. The disadvantage to state registration is that your trademark rights are limited in scope.
Describe The State Registration Process.
An application for state registration can be submitted only after you have begun using your mark in the state. The application typically is a one- or two-page form. The completed form and filing fee are submitted to the state trademark office. A state trademark office representative may correspond with the applicant or its attorney to resolve certain issues. Usually, however, that correspondence is much less involved than the correspondence involved with a federal application. Virginia does not publish its applications for opposition. After the examining representative’s issues have been resolved, registration will issue. The state registration process generally takes between 30 and 90 days.
How Much Does a State Registration Cost?
The filing fee for a Virginia state registration currently is a minimum of $30, and may increase depending on the number of goods and services identified by the mark. Legal fees associated with the application process vary depending on the degree of interaction with the state trademark office required to complete the application process. You should plan on spending between $300 and $500 for an application that does not trigger significant correspondence from the state trademark office.
Can I Apply for A State Registration Myself?
State trademark offices do not require that you use an attorney to file an application, but an experienced trademark attorney will increase your chances of obtaining a state registration because he or she will understand the state’s regulations and practices associated with examining applications. An attorney also will be able to resolve application issues more effectively and efficiently.
What Do “TM,” “SM,” and “®” Mean, and When Should I Use Them?
“TM” is a notation that stands for “trademark” and is used with unregistered trademarks. “SM” is a notation for “service mark” and is used with unregistered service marks. Neither has any legal significance, but is used as a possible deterrent and to put the world on notice that you consider the mark to be yours. After you have received a federal registration, you may use the ® notation with your mark. If you use the ® notation before receiving a registration, the PTO may refuse to issue your registration. A notation should appear in close proximity to the mark.
What if Someone Else is Using My Mark Without My Permission?
That person is infringing on your rights. You should consult with an experienced trademark attorney to develop a strategy to prevent further use of your mark, which might include filing a trademark infringement lawsuit. Having a federal or state registration for your mark will provide more opportunities for resolution and give the attorney more leverage in negotiations. If you fail to enforce your rights, you could lose them along with all the goodwill you have built up in the mark.
Who Can I Contact for More Help?
You can contact Joel Ankney at 757.216.4578 or email@example.com. Joel has over 20 years of experience registering and protecting marks.