Trademark FAQs

What is a trademark?

A trademark identifies and distinguishes the source of a product or service of one party from those of others. A trademark does not describe what goods or services are, but indicates the source of the goods or services. Trademarks may be words (Xerox or Apple), letters (IBM or HBO), designs (the golden arches), shapes and configurations of products or packaging (the shape of a Coke bottle), or even a sound (the NBC chime).

Trademark law protects both consumers and sellers by avoiding situations where the marks of two sellers are so similar that a consumer familiar with one mark might believe that products sold under the other mark are produced by or associated with the owner of the first mark. Trademark protection helps to ensure that a consumer making a purchase is not deceived as to the source of the goods. This protects consumers, so that they get what they think they are getting, and protects sellers from competitors who might unfairly sell products using a mark that is likely to be confused with an earlier mark.

You obtain rights in a trademark by using the mark in commerce in connection with the sale of goods or with the promoting and providing of services. A earlier user of a mark will enjoy protection against later users of confusingly similar marks. Traditionally, a trademark could not be reserved in advance; it had to actually be used before any rights in the mark arose. But now, a federal trademark application can be filed without actual use if it is based on an “intent to use” the trademark within a specified amount of time.

Registration for a trademark is not required. You can establish common law rights in a mark based on legitimate use of the mark in commerce. However, registration gives the owner of the mark greater rights and power than mere usage, such as,

• constructive notice to the public of the registrant’s claim of ownership of the mark;
• a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration;
• the ability to bring an action concerning the mark in federal court;
• the use of the US registration as a basis to obtain registration in foreign countries; and
• the ability to file the US registration with the US Customs Service to prevent importation of infringing foreign goods.

Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol ® may only be used when the mark is federally registered with the USPTO. It is improper to use this symbol at any point before the registration issues. The symbols are to designate the mark as protected, and are not considered part of the mark.

A good, strong trademark can become a very valuable asset of your business because it helps to identify you and separate you from your competitors, and your customers may continue to buy from you and buy new products from you based purely on the strength of your mark.

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What is the difference between a ™, SM, and ®?

A “TM” symbol signifies a trademark and is typically used for that purpose in connection with some product. The “SM” symbol signifies a service mark and is typically used in connection with some service. However, the “TM” symbol is also commonly used as an alternative to “SM” in connection with services as well. A ® symbol may be used interchangeably for either a trademark or a service mark. Note, however, that the ® symbol denotes a federal registration and should be used exclusively for federally registered marks. On the other hand, the “TM” and “SM” designations may be used in connection with registered or unregistered marks.

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What steps are required to obtain trademark protection?

“Common law” trademark rights arise automatically simply through using the mark in commerce in connection with the sale of goods or provision of services. Common law trademark rights are limited to the geographic area(s) where the mark is used.

Statewide protection for a trademark may be acquired by registering the trademark at the state level. This is accomplished by making intra-state use of the mark and filing an application with the appropriate state office.

Lastly, nationwide protection for a trademark may be acquired by federally registering the trademark. This is accomplished by making interstate use of the mark and filing an application with the U.S. Trademark Office. A trademark can also be reserved in advance of interstate use by filing a federal trademark application based on a legitimate intent-to-use the mark. As explained further below, federal registration of a trademark has significant benefits and is typically the preferred option for securing trademark rights.

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What is the difference between a state registration and a federal registration?

State registrations only protect a trademark in the state in which it is registered. A federal registration provides nationwide protection. A state registration does not give the owner the right to use the ® symbol. To register a mark at the state level, use of the mark in intra-state (i.e., within the state) commerce is required. To register a mark at the federal level, use of the mark in interstate (i.e., between states) commerce is required.

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Is registering a business name with the state the same as trademark protection?

No, creating a formal entity (e.g., an LLC or a corporation) or registering a business name (e.g., a “DBA”) with the Secretary of State confers no trademark rights in the name. In this regard, a business name is simply the official name under which a company, partnership, or sole proprietorship chooses to do business. The reasoning for registering a business name is primarily for administrative and tax purposes. Registering a business name does not prevent anyone else from operating a business under a similar name even in the same state.

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Should I register my trademark?

Determining whether, when, and how to register a trademark requires considering a number of factors.

One factor is whether any unrelated parties are using the same or a similar mark such that a likelihood of confusion between the marks could arise. This can often be determined by a trademark attorney during a trademark clearance search. The outcome of this search, including the marks located and the rights of the owners of those marks, often impacts whether a mark is adopted and how it is protected.

Another factor used in making this determination is the nature and scope of use of the mark. As discussed above, a mark may be registered at the state level once the mark is used within the state in intra-state commerce. However, in order to register the mark at the federal level, the mark must be used between states in interstate commerce. For this reason, if a mark is only used and marketed within a single state, federal registration likely is not appropriate or available.

Two other factors are time and cost. Generally, registering a mark at the federal level requires more time and is more expensive than obtaining a registration at the state level.

However, when federal trademark protection is available, the additional time and cost for obtaining the federal registration are justified.

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What are the benefits of federal registration?

Federal registration of a trademark provides significant benefits for the owner of a mark. Among other things, a federal registration provides constructive notice to the public of the registrant’s claim of ownership of the mark. It also provides a legal presumption to the registrant’s ownership of the mark, the validity of the mark, and registrant’s exclusive right to use the mark nationwide in connection with the goods or services listed in the registration. When a mark is federally registered, it will bar registration of another confusingly similar mark in an application filed after the date of the registrant’s application. A federally-registered mark may also be used as the basis to obtain a registration in foreign countries. Importantly, the registration may also become “incontestable” after five years, which creates conclusive evidence (i.e., more than a mere presumption) of the registrant’s exclusive right to use the mark, subject only to limited statutory defenses. As a result, once a mark becomes incontestable, its is significantly more difficult to challenge by third parties.

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Should I conduct a trademark search?

Searches are recommended before adopting a new mark that has never been used or attempting to register an existing trademark that has already been used. A primary purpose of the trademark search is to determine whether the trademark is available for use and registration. The search encompasses pending federal applications and federal registrations, state registered trademarks, and common law usage of third party marks.

During the search, the trademark attorney will examine the marks located to evaluate the potential risks involved in adopting, using, and registering a particular trademark, including whether such adoption and use will cause a likelihood of confusion with another registered or senior mark. If the attorney determines that a likelihood of confusion may arise, he may recommend against the adoption and use of the mark or provide some other recommendation intended to minimize cost and risk to the client while achieving their objectives.

In addition to reviewing and considering others’ trademarks in a likelihood of confusion analysis, the trademark attorney will also consider other potential issues that could impact use or registration of the mark.

Although not required, a search is strongly suggested. In many cases, the problems and costs that can be avoided and time saved by conducting a search before a mark is adopted more than justify its cost.

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What are the costs for filing a trademark application?

The cost for filing a federal trademark application can be broken up into two portions:
First, is the amount paid paid to the Trademark Office for filing the application, which ranges from $225 – $275 per class.

Second, is the cost for the attorney’s services. At a minimum, these services should include collecting and assembling the necessary documents and information to prepare and file the application. When it comes to pricing an attorney’s fees, you will receive various figures depending on who you ask, how the attorney’s fees are calculated, and what services are included in the trademark filing process.

Luedeka Neely offers a comprehensive trademark search and application package for $950. For more information or to start the process, visit our online trademark registration portal.

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What is the difference between a “use-based” application and an “intent-to-use” application?

Use-based applications require current use of the mark in interstate commerce. Use in commerce is established by filing of the trademark application with a statement of use and a specimen showing the mark in use in commerce.

Intent-to-use applications allow an applicant to seek registration of a mark before the mark is in use in interstate commerce. An intent-to-use application must include a declaration of a bona-fide intent to use the mark in commerce on specific goods or services. The application is examined for registrability in the same way a use-based application is examined. However, a statement of use and specimen showing the mark in use in commerce is not submitted with the initial filing. However, the statement of use and specimen must be submitted before a registration certificate will be issued. Once the examination process is complete and a notice of allowance is issued by the trademark examiner, the trademark applicant has an initial 6 month period to file her statement of use. The period for submitting a statement of use may be extended in 6-month increments up to 3 years after the notice of allowance. If no statement of use is filed within that time, the application will become abandoned.

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What happens after a trademark application is filed?

The application filed in the U.S. Patent and Trademark Office is submitted to an examining attorney for consideration. Examination begins approximately 3 months after the application is filed. At that point, the examining attorney searches pending and issued federal registrations and determines whether the mark of the application is confusingly similar to any of the marks located. Additionally, the examining attorney will review the application to determine if the mark is capable of functioning as a mark. More particularly, the examiner determines whether the mark is merely descriptive or generic.

The examining attorney may initially reject the application, and state his reasons for doing so in a document called an “office action.” We send a copy of the Office Action to you, with our opinion of the examining attorney’s rejections. It is for you to decide whether to continue the prosecution of the application. If you decide to continue, we prepare a written response that sets forth the reasons why the mark is registrable. The back-and-forth Office Action and response procedure is called the “prosecution” of the application. In some cases, if the examining attorney maintains his rejection of the application, the rejection may be appealed.

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What is required to maintain a federal trademark registration?

The term of a federal trademark registration is 10 years. As long as the mark remains in use, a renewal application may be filed prior to the end of each term, and the registration can be renewed indefinitely with additional 10-year terms.

During only the first ten-year term of registration, an affidavit of continued use (a “Section 8 affidavit”) must be filed with the Trademark Office between the fifth and sixth year of registration. Additionally, at the end of each 10-year term, a Section 8 affidavit must accompany the renewal application. The Section 8 affidavit must include a statement that the mark is in use in commerce and a specimen demonstrating use of the mark.

If the Section 8 affidavit is filed and accepted, the registration will remain active for the balance of the 10-year term (when filed during the initial term) or will be renewed for a new 10-year term. If the Section 8 affidavit is not filed before the deadline or is not accepted by the Trademark Office, the registration will be canceled. Cancellation may be avoided if a registrant pays a late fee and then files the Section 8 affidavit within a 6-month “grace period” that follows the 6th year of registration.

If the mark has been used continuously in commerce for a period of five years, then a “Section 15 affidavit” may also be filed within one year of that five-year period to make the mark “incontestable.” Once a mark has become incontestable, it enjoys a number of benefits, is much more valuable, and is much more difficult to challenge by third parties. Among other things, once a mark is incontestable, it may no longer be canceled on the grounds of descriptiveness or prior use. Typically, a Section 15 affidavit is filed concurrently with the initial Section 8 affidavit.

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What can I do to protect my trademark in addition to federal registration?

Trademark registration is only the first step in protecting your trademark. In order to ensure that the value and goodwill associated in your mark remains strong, you will need to monitor your trademark from unauthorized and potentially damaging use by third parties of similar trademarks. Luedeka Neely provides a watch service to proactively detect any trademark applications for related marks that were allowed over your federal registration. If a potential conflict is detected, an opposition proceeding may be initiated to prevent registration of the conflicting trademark. In addition to this service, periodic monitoring for potential infringements via the Internet and other types of searching is highly recommended.

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What is the difference between registration on the Principal Register and registration on the Supplemental Register?

The Supplemental Register is for marks that are not registerable on the Principal Register because they are descriptive (including geographically descriptive) or are surnames. The Supplemental Register provides protection for such non-distinctive marks that have the potential of acquiring distinctiveness. A Supplemental Registration is not prima facie evidence (provides no presumption) of anything except that the registration issued. A mark registered on the Supplemental Register can become eligible for registration on the Principal Register upon a showing of acquired distinctiveness of the mark.

The following is a comparison of the benefits provided by the two registers.

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