Frequently Asked Questions About Trademarks

Basic Definitions:

Q: What is a trademark?

A: A trademark is a word, name, symbol, device or combination used to identify and distinguish the source of the goods of one party from those of others.

Q: What is a service mark?

A: A service mark is a word, name, symbol, device or combination used to identify and distinguish the source of the services of one party from those of others.

Q: What is the difference between a Trade Name and a Trademark?

A: A trade name is used to identify a business. However, the trade name may also be used as a trademark to identify products or as a service mark to identify services.

In other words: Trademarks identify products; Service marks identify services; Trade names identify businesses.

Initial Considerations:

Q: How are trademark rights established?

A: In the United States, trademark rights are created through actual use of a trademark. However, as of 1989, a trademark may be reserved by filing an Intent to Use trademark application prior to actual use.

Q: What is the difference between state registration and federal registration of a trademark?

A: State trademark registration is not recommended because trademark law in the United States is controlled by federal statute (the Lanham Act).

Q: What are the advantages in registering a trademark at the United States Patent and Trademark Office?

A: An issued U.S. trademark registration can provide priority to the trademark owner against all users of conflicting marks who had not used the conflicting mark before the filing date of the trademark owner’s application. For this reason, it is very important to prepare and file a trademark application as soon as possible. A U.S. registration also provides the following benefits: evidence that the trademark is valid and that the owner of the registration is the owner of the valid registration, evidence of continued use of the mark since the filing date of the application, incontestible status after five (5) years which prevents an attack of the registration on the grounds of prior use by others or that the trademark is descriptive, the right to sue an infringer, statutory damages which can include up to three times the actual money damages and the ability to bar the importation of infringing imports at U.S. Customs entry ports.

Selection of a Trademark:

Q: Is the selection of a trademark important from the standpoint of registration and protection?

A: Yes. It is much better to start with a strong trademark that is not confusingly similar to other existing trademark registrations or applications. This improves the probability that the application will not be encounter difficulties at the U.S. Patent and Trademark Office and also provides the owner with a trademark that is easier to protect from would be infringers.

Q: How do you know if a trademark is strong?

A: Trademarks are classified into four (4) categories, in order of increasing strength:


Category:


Definition:


Example:


Comments:


1. Generic


The common name for the kind of product
— can never become a protectable trademark.



Automobile, consumer electronics
(magazine title)



Rational: The public has a fundamental
right to the use of all generic terms.



2.Descriptive


A term which describes something about
the product or service — can be protected if secondary meaning is
established.



Super Steel Radial, Hoagie, Video Buyer’s
Guide, Quick Print



Secondary meaning requires proof that the
relevant purchasing public associates the term with a single source.


3.Suggestive



A term that subtly suggests something
about the product or service — can be protected immediately upon use.


habitat (for home furnishings),
skinvisible (for transparent medical adhesive tape), orange crush (for
beverage)


Generally requires purchaser to
exercise some imagination
to determine product or service.



4.Arbitrary/
Fanciful



A term that bears little or no
relationship to the product or service – Immediately protectable.


Arbitrary:


Horizon (for banking services), Tide (for laundry detergent)


Fanciful: Kodak, Rolex, Exxon, Motorola

 


If no prior conflicting or similar marks,
arbitrary or fanciful mark will be the strongest possible mark.


Although either an arbitrary or fanciful mark may be equally strong, there is a slight difference between the two classifications. An arbitrary mark is an ordinary term applied to a good or service in a totally arbitrary or non-descriptive manner. A fanciful mark is a made-up term that does not have any dictionary meaning.

Costs for the Registration of a Trademark:

Q: What does it cost to register a trademark with the U.S. Patent and Trademark Office?

A: It costs $995. to place a trademark application in a single class on file with the U.S. Patent and Trademark Office. This includes a preliminary online search of the federal trademark records,  attorney fees for application preparation and filing and government filing fees. The search can be extended to include nationwide telephone directories, trade name sources and state trademark registers.

Q: What other costs are involved with obtaining a trademark registration?

A: If the trademark examining attorney decides that the proposed trademark is confusingly similar to another existing trademark registration or application, then additional legal fees to respond to the examining attorney may be required.

Q: What is the best way to improve the probability that a trademark application will not encounter difficulties after filing with the U.S. Patent and Trademark Office?

A: The best strategy is to select a strong trademark that is not confusingly similar to any other existing trademark registration or pending trademark application.

Preserving the Rights in a Trademark:

Q: What steps must be taken to preserve the rights in an existing trademark registration?

A: First, the trademark must not be abandoned. It must be used continuously and the mark must be affixed to the goods (or tags or packaging) or displayed in association with the services. An affidavit of continuous use must be filed during the fifth year after the registration issues. An affidavit of five years of continuous use should also be filed to establish incontestible rights to the trademark. The trademark registration should then be renewed every ten (10) years thereafter.

Q: Are there any special ways that a trademark should be used?

A: Yes. A trademark should always be used as an adjective, and never as a noun. In other words, the trademark should always be accompanied with a generic term. For example, Kleenex is used together with the generic term tissue. Xerox is used together with the generic term copier. Better yet is to include the term “brand” between the trademark and the generic term. Hence, Xerox brand copying machine. The consequence of not using (or educating the public) is that the trademark can be forever lost to the public domain as a generic term. Examples of generic terms that once were trademarks are: aspirin, escalator and yo-yo.

Selection and Use of a Trademark:

Q: What is the proper way to designate a trademark?

A: Prior to registration, a trademark may be designated with the superscript TM, and a service mark with the superscript SM. After a federal registration has issued, the trademark or service mark may be designated with the registration symbol ®.

The Federal Registration Process:

Q: Are there different types of trademark applications?

A: Yes. A trademark application may be filed as a use based application or as an Intent to Use Application.

Q: What are the requirements for filing a use based trademark application?

A: First, the trademark must have been actually used in interstate commerce. Second, three (3) specimens of the trademark as actually used must be provided. Third, a drawing of the mark must be provided for a design trademark. Fourth, the application and corresponding filing fee must be provided.

Q: What are the requirements for filing an intent to use trademark application?

A: If you honestly plan to use a trademark in the future, you can reserve the use of the trademark by filing an intent to use trademark application. You must actually use the trademark in interstate commerce before a federal registration will issue. It is possible, however, to postpone the filing of the proof of use after the application has been approved by the U.S. Patent and Trademark Office.

Q: How are trademarks classified?

A: Trademarks are classified into 41 numerical international classifications based generally upon the type of goods or services. For example, International Class 9 includes scientific instruments while International Class 35 includes advertising and business.

Q: Can a trademark application be filed in more than one class?

A: Yes, but there is an additional government filing fee required for each additional classification. In many cases, it is preferable to file a separate application for each appropriate classification.

Q: What happens to the trademark application after it has been filed?

A: The application is assigned to a trademark examining attorney who examines the application to determine whether it is confusingly similar to any existing trademark registrations or pending applications.

Q: How do you know if a proposed trademark is confusingly similar to another trademark?

A: There are several factors which are evaluated to determine likely confusion, which is also the test used to determine whether one trademark is infringing another (See infringement below). In general, the examining attorney considers similarity in spelling, sound and appearance.

Q: What happens if the trademark examining attorney decides that the mark is confusingly similar to another mark?

A: The applicant or the applicant’s attorney is notified that registration of the mark is refused. The examining attorney provides an official action which includes the trademark registration(s) and/or pending trademark application(s) that are the cause of the conflict. If the applicant or the applicant’s attorney believe that the examining attorney’s position in not well founded, a response to the refusal may be filed.

Q: How long does it usually take for a trademark registration to issue after filing?

A: Presently, it takes approximately 18 months from the date of filing for a trademark registration to issue. The goal set by the Trademark Branch of the U.S. Patent and Trademark Office is to reduce the time period to 13 months.

International Protection:

Q: Is it possible to register a trademark internationally?

A: Yes the United States is a member of the Madrid Protocol which allows an international application to be filed.  A single international trademark application can be filed in the US that will extend into each country that is a member of the Madrid Protocol.  A list of the member countries is available here.

Q: How are trademarks protected internationally?

A: We file the Madrid Protocol Trademark Application and select each non-US country in which the application will extend.

Q: What is the typical cost for registering a trademark internationally?

A: The cost to file an international trademark application is $900 per mark, plus filing costs and drawing costs, if any.  The International Trademark Application Filing Cost calculator is available here.  In general, the international filing cost will be approximately $802 plus between $65-450 per designated non-US country plus an additional cost per classification.

Contact us for a specific quotation on the filing cost based on the countries in which you want to file your international trademark application.

Trademark Infringement:

Q: What exactly, is meant by trademark infringement?

A: Trademark infringement occurs when a later used trademark is confusingly similar to an earlier used trademark. The following factors are evaluated to determine whether the two marks are confusingly similar:

* The strength of plaintiff’s mark;

* The degree of similarity between plaintiff’s and defendant’s marks;

* The proximity of the products or services;

* The likelihood that the plaintiff will bridge the gap;

* Defendant’s good faith in adopting the mark;

* Evidence of actual confusion;

* The sophistication of the buyers; and

* The quality of defendant’s products or services.

Q: How are rights determined if neither trademark has been registered at the U.S. Patent and Trademark Office?

A: Absent Federal registration, trademark rights in the United States are established through use. It is possible for two (or more) users to use the identical mark on identical goods if each user occupies mutually exclusive geographic market areas. Obviously, this can and does cause problems when one of the users attempts to expand its business. The best way to avoid the conflict is to clear the mark and then register it with the U.S. Patent and Trademark Office.

Q: What actions should be taken if a trademark owner believes that its trademark is being infringed?

A: Usually, a letter is sent to the alleged infringer informing them to discontinue the use of the infringing mark. If this is not successful, a lawsuit may need to be filed in the appropriate Federal District Court. The decision whether or not to file a lawsuit will depend primarily upon the value of the mark and the probability of successfully prevailing at trial.

Q: What is the best way to improve the probability of successfully prevailing at a trademark infringement trial.

A: Although a descriptive mark which has established secondary meaning through extensive marketing and promotion can be strong, usually the strongest marks are arbitrary or fanciful.

File Trademark Application Now

NOTE: Because of the complexities, risks and potential rewards involved with intellectual property matters, it is strongly recommended that you seek the advice of an intellectual property attorney to assist you with your creative developments.