Trademark Registration FAQ

by: Tamera H. Bennett

TRADEMARK FAQ

What is a trademark or service mark?
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms “trademark” and “mark” refer to both trademarks and service marks.

How do I secure a federal trademark?
You must be using your trademark or service mark in interstate commerce (that is outside the borders of a single state) or have an intention to use the mark in interstate commerce before you can apply for a federal trademark with the United States Patent and Trademark Office.

What is “use in commerce” For goods?
The mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

What is “use in commerce” For services?
The mark must be used or displayed in the sale or advertising of the services and the services must be rendered in commerce.

What is “intent to use”?
If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce. You do not have to use the mark before you file your federal trademark application.

How do I secure a state trademark registration?
You must be using your trademark or service mark within the state in order to file an application.

Does filing a federal or state application guarantee a registration?
No. Filing an application does not guarantee that either the United States Trademark Patent and Trademark Office (USPTO) or the applicable state will grant you a registration.

Do I have to secure a state or federal trademark registration to own a trademark?
No. A person acquires the right to exclude others from using a trademark by being the first to use it in the marketplace. Rights in a trademark are obtained only through commercial use of the mark. Coining a phrase or designing a logo is not enough to secure trademark rights. You must use the phrase or logo on or in connection with your product or service.

What is the trademark selection and application process? • Develop a list of possible names.
• Discuss this list with your attorney.
• Your attorney will conduct a trademark search or “knockout” to exclude any existing marks that are identical or confusingly similar.
• Prepare and submit an application.
• It may take seven to nine months before the USPTO will respond to your application. If there are any procedural or substantive changes requested by the trademark examiner (an Office Action), you will then have six months to respond.
• If the refusal is overcome, or if no refusal issued, the mark will move to publication.
• If the mark is published and no oppositions are filed, the mark will be registered if it was filed as a “Use” application. If it is an “Intent To Use” application, a Notice of Allowance will issue and the mark must be used in interstate commerce.

What should I consider in selecting a trademark? • Trademarks are subject to varying degrees of protection. The stronger the mark, the greater protection it will receive.
• The trademark examiner will categorize a mark in one of four general categories:
generic marks
descriptive marks
suggestive marks
arbitrary and fanciful marks
• On a scale of 1 to 5, a generic mark is a 1 and an arbitrary mark is a 5. A mark that is a 4 or 5 on the scale has the greatest level of protection and is either suggestive of the goods or service offered or has no connection to the goods, i.e., arbitrary. A mark that is a 1 on the scale has no trademark protection. A mark that is a 2 on the scale, has limited protection. A mark that is a 3 on the scale is usually a suggestive mark and is protected.
• Resist the temptation to select a mark that describes the goods or services. It is difficult, if not impossible, to protect a mark that is descriptive.
• If you decided to create a magazine about mountain climbing you might select names such as the “Mt. Climbing Magazine”, the “Climber’s Journal”, “Mt. Everest”, or even something arbitrary such as “Orion.”

When should I use the ™ symbol or the ® symbol? • While the federal application is pending ( from one to two years), the trademark should be identified with the ™ symbol. Use the mark with the ™ on the actual product to which the mark applies, if possible, and on product labeling and packaging, and also in brochures, catalogs, advertisements, letterhead, business cards, and signage, as appropriate.
• When using a word mark, or the word portion of a combination mark (word plus design), in a sentence, distinguish it from surrounding text by using all capitals and quotes.
• After federal registration the mark should be identified with the ? symbol. Do not use the ? prior to issuance of the Federal Registration.
• If you secure a state registration, you may use the ™ symbol.

[trademark]

About Tamera Bennett

Tamera Bennett, nicknamed by her clients as the IP quarterback, develops strategies to protect and leverage each client's intellectual property. She works closely with her clients to implement customized brand management programs. Her clients range from rock star to leadership coach and financial guru to custom motorcycle designer. Prepared with an undergraduate degree in Recording Industry Studies and a law degree from Texas Wesleyan University School of Law, Tamera represents clients throughout Texas and Tennessee in entertainment, trademark and copyright law related matters View all posts by Tamera Bennett

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