FAQ – Why Obtain a Trademark?
It is not necessary to register a trademark in order to do business. A limited common law protection is automatically attached when a trademark is used in commerce. However, federal registration has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
Trademark v. Domain Name
If you register a domain that is in conflict with a trademark, you may lose rights to the domain.
Advantages of Federal Registration
1. Constructive notice nationwide of the trademark owner’s claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries. 5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
(TM) v. ®
You may use the symbol “TM” (or “SM” for service marks) suffixed to your trademark before a trademark registration is granted. The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.
Before you register a domain or start using a mark on products, it is a good idea to order a search report from a trademark search firm. Imagine having to recall products and/or reprint product labels due to a trademark infringement action by the owner of another trademark because your trademark infringes the other trademark.
Common Law Rights
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration.
Does Filing a Trademark Application Guarantee Registration?
Filing a trademark application does not guarantee a registration. After the application is filed, a USPTO examiner performs a trademark search and reviews your application in view of the existing and pending registrations and other evidence. Among other things, the registration may be denied if your proposed mark is descriptive, generic, similar to other marks or is likely to cause confusion in the marketplace.
What happens after a Trademark Application is Filed?
The application is reviewed by the Trademark Office and if there are grounds for rejection, an office action is sent to the applicant. The Applicant then must respond to the office action. If no grounds for rejection are found, the registration is granted.
What is Descriptiveness?
If a mark describes, either directly or indirectly, the product or service on which the mark is used, then the mark is considered “descriptive.” Descriptiveness is a ground for the rejection of the registration. However, a descriptive mark that has been in use for a long period of time may be registered. Further, even if a “text” mark may not be registered due to descriptiveness, it may still be possible to register a distinctive logo that depicts the same “text.”
Patent v. Trademark
In some cases, a distinctive design may also be patentable. A design patent may be filed to protect the ornamental design of an object.
Can rights a Trademark be Sold?
In general, yes. An exclusive or non-exclusive assignment may effectuate full or partial rights in a trademark. However, the assignor (i.e., the seller) must also transfer the goodwill associated with the trademark. Further, since intent-to-use (ITU) trademarks have no goodwill associated with them (because they have not yet been used in commerce), ITUs may not be assigned.
In-Use Marks v. Intent-to-Use Marks
There are two types of trademark applications. If a mark is already in use in commerce, the application for the registration would lead to the registration of the mark, if no ground of rejection if found. However, if the application for registration is based on an “intent to use,” the registration will take place only after the applicant begin actual use of the mark in commerce. A proof of actual use in commerce must be submitted within a certain period of time after allowance.
Why use an Attorney for TM filings?
There is no requirement that a trademark application be filed by an attorney. However, a attorney may provide valuable counseling as to the likelihood of registration. Some marks may not be registrable and an attorney should be able to provide an early input as to this fact before you pay filing fees and make other investments to use the mark in commerce.
How to Protect a Mark?
Now that your mark is registered, you should start protecting it. First, you must start using the symbol ® with the mark to give notice to the world that the mark is a registered mark. Second, on product packaging and other places where you use the mark, print the mark so that it stands out and distinguishable from the surrounding text/graphics. Never use the mark as a verb or a noun. Be careful when you license the mark because acts of licensees with regards to the usage of the mark may also have detrimental affect on the mark.
A registered mark may be considered abandoned and ceased to be registered, among other things, due to non use for a number of years.