Frequently asked questions.

Everything you need to know simply explained.

A trademark includes any word, name, symbol or device, or any combination used or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from the goods manufactured or sold by others and to indicate the source of the goods. In short, a trademark is a brand name.

A servicemark is any word, name, symbol or device, or any combination used or intended to be used, in commerce to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.

Hereinafter, we will use the name “trademark” to refer to both trademarks and service marks, as it is easier that way.

Trademarks protect words, names, symbols, sounds or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce. Trademarks are registered with the United States Patent and Trademark Office (USPTO).

There are times when you may desire a combination of copyright, patent, and trademark protection for your work. You should consult an attorney to determine what forms of intellectual property protection are best suited to your needs.

It is advisable to conduct a search before filing an application. A search for pending, registered and dead trademarks may be conducted on the USPTO website using the Trademark Electronic Search System (TESS) and for common law use through Google and other search engines.

Only the owner of the trademark may file an application for registration. The owner controls the use of the mark and controls the nature and quality of the goods to which it is affixed or the services for which it is used. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.

Owning a federal trademark registration provides several advantages, including: Public notice of your claim of ownership of the trademark;
A legal presumption of your ownership of the trademark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
The ability to bring an action concerning the trademark in federal court; The use of the U.S. registration as a basis to obtain registration in foreign countries;
The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; The right to use the federal registration symbol ®; and Listing in the United States Patent and Trademark Office's online databases.

A common law mark is obtained simply by using the trademark in association with your business or product. Unlike a Federal registration, there is no application process for common law trademarks; additionally, there are no fees associated with attaining a common law mark. While common law marks are effortless to obtain, enforcing them is much trickier–and while the trademark owner can prevent those in their locale from using marks similar to theirs, that authority does not have the same nationwide range as a Federal registration.

A copyright protects authors of "original works of authorship" including literary, dramatic, musical, artistic and certain other intellectual works, both published and unpublished. By way of example, a book may be copyrighted, as the copyright will protect the words in the book taken together as a literary expression (i.e., think of Ernest Hemingway’s book, “The Old Man and the Sea.”). the use of copyright protection has also been expanded over time to cover products such as software, because the written code (or language) in which the software is written has been deemed to be a literary work.

But the title of the book and the name of the author (“Old Man and the Sea” and “Ernest Hemingway”) may be trademarked, as a trademark protects a name, logo or tagline, and not an entire literary work.

The 1976 Copyright Act generally gives the owner of a copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

Copyrights are registered by the Library of Congress' Copyright Office, and not the USPTO.
There are times when you may desire a combination of copyright, patent, and trademark protection for your goods or services. You should consult an attorney to determine what forms of intellectual property protection are best suited to your needs.

The registration is valid so long as you timely file all post registration maintenance documents. You must file a "Declaration of Use under Section 8" between the fifth (5th) and sixth (6th) year following registration. In addition, you must file a combined "Declaration of Use and Application for Renewal” under Sections 8 and 9 between the ninth (9th) and tenth (10th) years after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated.

Aside from our fees, the USPTO charges the following fees for filing a trademark application:
$250 per class of goods or services for a TEAS Plus application that meets the requirements of 37 C.F.R. §2.22; or
$350 per class of goods or services for a TEAS Standard application.
If your application is filed based on a bona fide a future intent to use the mark in commerce (i.e., and not a current use), additional documents and fees will be required at a later time. At Trademarky, we generally file all applications using the TEAS Plus application ($250 per class).

Trademark registration must be sought in one of 45 categories maintained by the USPTO. This allows the goods and services of one applicant to be distinguished from those of another who use similar names but for vastly different purposes and that seek protection in different categories. Applicants pay a separate fee for each category for which protection is sought.

For example, an applicant using the name “blue diamond” for light bulbs may file in one category, while an applicant using the same name for car parts may file in a different category. The USPTO will generally allow both marks to register because they seek registration in different categories and for different purposes, so there is no likelihood of confusion among consumers as to the source of the goods or services (i.e., no purchaser would confuse a car parts manufacturer with a distributor of light bulbs).

Furthermore, if the car parts distributor sells car parts over the internet, it may seek protection in one category for car parts, and another for internet sales. In this instance, the applicant pays two (2) separate filing fees with the USPTO, because it seeks protection in two (2) distinct categories.

No. A lawyer from the USPTO will review your application within 4 months of its filing and decide if the name, logo or tag line is suitable for protection under the US trademark laws. The USPTO may refuse registration under the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2. The most common reasons for refusal are because the mark is:

Likely to cause confusion with a mark in a registration or prior application;
Descriptive for the goods/services (i.e., describes an activity, and is not a name);
A geographic term;
A surname;
Ornamental as applied to the goods.

You will provide us with information, and we will do the rest. Generally speaking, we require the following information:
A completed on-line questionnaire (i.e., completed by you as the applicant);
Pre-payment of our fees and the applicable USPTO filing fees;
A picture of the mark to be registered including any requested spacing, colors, stylized fonts, or other particulars that you require;
Specimens of use of the trademark if the application is based on your current and actual use of the trademark if you seek registration as “actual” (i.e., you are currently using the trademark in commerce to sell goods or services). Furthermore, we will need an image of a logo for which you seek protection.

No. The USPTO examines trademark applications to determine if there is a likelihood of confusion between the applied-for trademark and a previously registered trademark. If no conflict is found and all other statutory requirements are met, the examining attorney may approve the trademark for publication. The USPTO has no powers of enforcement concerning the use of trademarks in the marketplace.

Once the USPTO approves a trademark (i.e., all USPTO issues are resolved or the USPTO has none from the outset), the proposed trademark will be published for opposition in an online publication maintained solely by the USPTO. The publication period is 30 days. Anyone using a similar name may oppose registration. Objections, although rare, must be resolved before the USPTO or between the applicant and the objector through direct negotiations. A trademark cannot register until the opposition is resolved. Once resolved, a trademark will register and USPTO protection will be afforded the proposed trademark.

No. However, certain countries recognize a United States registration as a basis for filing an application to register a trademark in those countries under international treaties.

The total time for an application to be processed may be anywhere from 8 months to 1.5 years, depending on the basis for filing and the legal issues that may arise in the examination of the application.

The basic difference between these two filing bases is whether you are using the trademark in interstate commerce to sell goods or services or whether your use will commence in the future. If you have already commenced use of your trademark in commerce, you may file under the "actual” use basis. Filing under “actual use” will allow for a faster approval process with the USPTO.

If you have not yet used your trademark in commerce, but intend to use it in the future, you must file under the "intent to use" basis. An "intent to use" filing will require the filing of additional forms, and the payment of additional fees, at a later date when “actual use” commences.

For goods, "interstate commerce" generally involves sending the goods across state lines with the mark displayed on the goods or their packaging. For services, "interstate commerce" generally involves rendering a service to customers in another state or that affects interstate commerce (e.g., bus services, rental car services, restaurants, gas stations, hotels).

You may challenge use of a trademark application filed in the USPTO by another person or entity if the proposed trademark closely resembles your trademark, regardless of whether your trademark has been registered with the USPTO. For this to occur, you must monitor trademarks filed with the USPTO. Separately, you may also file a lawsuit against a possible infringer. Finally, you may speak to the infringer and seek to establish co-existence arrangement with them under which you may both use the name subject to various geographic or other restrictions. These are complicated matters, and you should consult an attorney.

Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to use a name or logo. The federal registration symbol, the R enclosed within a circle (®), may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.

The TM and SM symbols may be used to show common law rights in a name, but does not imply that the underlying name has been registered as a trademark or service mark with the USPTO.

There are no specific requirements on where the "®" symbol should be placed relative to the trademark, but most businesses use the symbol in the upper right corner of the mark. The "®" symbol indicates that you have federally registered your trademark with the USPTO.

It puts the public on notice that your trademark is Federally registered and that you have nationwide rights in it. You may only use the registration symbol with the trademark on or in connection with the goods/services listed in your Federal trademark registration while the registration is still alive (you may not continue to use it if you don't maintain the registration or it expires).

The trademark process is somewhat lengthy and laborious. Initially, you will complete our questionnaire and work with us to prepare your application for filing with the USPTO. Once we file your application, a period of 4 months will pass before an attorney employed by the USPTO reviews it to determine whether it meets various USPTO requirements, and whether the name, logo or tagline is already registered for similar goods and services. If the USPTO approves your application, your trademark will be published for opposition in a trademark “Gazette” maintained by the USPTO. Many lawyers read the Gazette” to search for competing marks for their clients. The publication period is 30 days. If the 30-day period passes without objection by someone holding a similar name, logo or tagline, your trademark will register. This process will take at least 8 months to 1.5 years.

If the USPTO does not approve your mark, you may oppose the USPTO’s refusal. You will have 6 months to file opposition. Once you have done so, the USPTO will issue a decision agreeing or disagreeing with you. If it agrees, the USPTO will withdraw its refusal and your mark will proceed to publication. If it disagrees, you may be allowed another opportunity to file opposition, or you may need to appeal the USPTO’s refusal to the US Patent and Trademark Appeals Board. You should have a lawyer to handle these matters, as they can be tedious, complex and highly specialized.