What is a trademark or service mark?
A trademark or service mark is any word, name, phrase, design, symbol, or combination thereof that identifies the source of goods/services. A trademark or service mark distinguishes a provider of goods/services from other providers.
A trademark and service mark function exactly the same way with one difference. A trademark refers to goods and a service mark refers to services. People often use the word "trademark" to refer to both trademarks and service marks.
Examples of trademarks include Nike, the Nike Swoosh logo, Pepsi and its logo, Apple and its logo, McDonald's Golden Arches, Kodak, Amazon.com, and Taylor Swift's "THIS SICK BEAT."
What does it mean to register my mark and why should I do it?
When you register your mark with the United States Patent and Trademark Office (USPTO), you receive federal protection for your mark and brand. Your mark becomes part of an online searchable federal database called TESS and it puts others on official notice of your claim to that mark.
When you use your unregistered mark in commerce, you receive limited common law protection. This protection is limited geographically to the area in which your mark is used. For example, if you use your mark only in North Carolina, then your trademark protection is limited to North Carolina and you will not receive protection in the other 49 states. However, if you register your mark with the USPTO, then you receive federal protection across all 50 states against others who may try to use your mark without your permission.
In addition, a federally registered mark receives recognition in court during a trademark dispute, giving you the significant advantage. As the legal owner of a federally registered mark, the court assumes that you have the exclusive right to use the mark in connection with the goods/services listed in the registration.
When is it time to register my mark?
You can register your mark before or after you've started to use your mark in commerce. It's best to register your mark as soon as you can, so you can establish priority over others who may try to subsequently register or use the same or similar mark. The date that you file your trademark application serves as the date of your "constructive use" of the mark.
If you have not yet started to use your mark in commerce, then you can file an intent-to-use application. This option is beneficial because it secures your place in line before you have started to use your mark in commerce. For example, if you want to register the mark "ideasPLUS" but have not started to use it in commerce yet because you're not ready to launch your website or manufacture your products, etc., then you can still receive priority over another party who actually uses "ideasPLUS" in commerce before you but after your filing date.
With an intent-to-use application, you must actually use your mark in commerce and file a Statement of Use with the USPTO within six months of the filing date of your Intent to Use application. If you have not used your mark or filed the Statement of Use document with the USPTO within that six months, then you may for good cause request up to four six-month extensions.
Why hire an attorney?
Most trademark applicants decide to hire an attorney for the application process. Hiring an attorney to help you with your trademark application can help provide peace of mind.
Trademark law can often be complex and time consuming. Submitting a trademark application is the first step to establishing your trademark rights and a well-crafted application could save time and money in the long run. An attorney's knowledge of trademark law can greatly help reduce the chance of problems with the application or the mark itself.
When a trademark application is filed with the USPTO, an Examining Attorney reviews the application. If this attorney determines there is a problem with the application, then the attorney usually sends an Office action to the registrant explaining the legal issue(s).
The Office action could contain technical or substantive rejections. A technical rejection is any small procedural matter that be fixed by filing an amendment. The Office action may require you to supply a more definite description of your goods or services, to disclaim part of your mark, or to revise your specimen.
The Office action could also contain a substantial rejection or refusal, which requires a more detailed response. The Office action may refuse your application because of likelihood of confusion or because your mark is merely descriptive. These kinds of refusal can also be overcome through amendments or agreements.
It is ideal to not run into any of the listed problems after submitting your trademark application. Not only are technical errors best avoided by attorneys with experience in submitting trademark applications, but attorneys also have the legal knowledge to ensure a mark is substantively sound before submitting the application in the first place.
What is a specimen?
A specimen is a sample of how you are actually using your mark in real life in connection with your goods/services in the marketplace. A specimen can be a screenshot taken from your company website or a picture of a product label or product packaging. A specimen should be something that your consumers actually see when purchasing your goods or services.
What is a drawing?
A drawing is a depiction of your mark that will appear on your registration certificate. The drawing that you submit will depend on the type of mark you are applying for.
If you are applying for a standard character mark, then any font will be sufficient. The mark can be in upper or lower case, bold, or italicized. The style of the mark does not matter because you are only registering the word itself and you are not claiming any font style, color, or size.
However, if you are applying for a special form (stylized and/or design) mark, then your drawing should be a "substantially exact representation" of your mark. Here, you should include any design or style element such as a logo or specific color(s) that you want to be included in your registered mark. If you do not want to claim any specific colors but still want to include a design element in your mark, then your drawing should simply be black and white.
How long do trademarks last?
A trademark can last forever as long as the owner is using the mark and has kept the USPTO informed of the continued use by timely filing all necessary documents.
Between five and six years after the USPTO officially registers the mark, the owner must file a Section 8 "Declaration of Use" with the USPTO. This declaration is the owner's sworn statement that their mark is still in use or is not yet being used for some excusable reason. If, for some reason, the owner does not file the statement before the six years is up, the owner can request a 6-month extension.
Between nine and ten years after the USPTO officially registers the mark, the owner must again file a "Declaration of Use." In addition to this declaration, the owner must provide photographic evidence that the mark is actually being used in commerce, unless there is excusable non-use. Every ten years, the owner must provide a statement and evidence of use in order for the mark to be renewed.
What is the difference between TM, SM, and ®?
TM stands for trademark and SM stands for service mark. These symbols are used by owners to show an unofficial claim on that mark. They indicate the owner's belief that he or she possesses a protected brand. However, TM and SM do not convey any federal recognition to that claim.
Once a mark has been federally registered, then the owner can use ® rather than TM or SM to give notice to others that the mark has been registered and approved by the USPTO.
What does a trademark application require?
A trademark application must include:
1. Owner of the mark (applicant)
2. Name and address for correspondence
3. Accurate drawing
4. List of specific goods/services you use or intend to use with your mark
5. Basis for filing (use-in-commerce or intent-to-use)
If you are filing under a "use-in-commerce" basis, then you must provide the date of first use of your mark anywhere and the date of first use of your mark in commerce.
6. A specimen, for use-based applications
7. Signature (by owner of mark, owner's representative, or filing attorney)
8. Application filing fee
In what forms can my mark be protected?
Your mark can be protected as a standard characters mark, a special form mark, or a sound mark.
A standard characters mark offers the broadest of protections because it protects the mark regardless of how it is portrayed. A standard characters mark consists solely of words, letters, and numbers, and is registered as the wording itself. Therefore the mark is protected in any color, stylization, or design element.
A special form mark includes any design, logo, or stylized font. Stylized font can include a particular color or style of lettering. This form of protection is more limited than the standard characters mark because it protects the mark as it is depicted in the drawing that the applicant provides. For example, Nike has trademark its "swoosh" logo by itself and with "NIKE" written across the top. Both separate trademarks are considered special form marks.
A sound mark is a sound that serves the same purpose as a standard characters mark or special form mark in identifying the source of particular goods/services. A sound mark can be chimes, an animal sound, a jingle, a partial or full song, etc. Examples of registered sound marks include MGM's roaring lion, NBC's three chimes, the Looney Tunes theme song, and Homer Simpson's "D'OH."
What are the filing fee costs?
The filing fee depends on what kind of application you file, how many marks you want to register, and how many classes of goods/services are included in the application. Each mark requires its own application.
TEAS Plus Application: This application costs $225 per class of goods/services. Therefore if you are applying to register a mark under two classes of goods then the filing fee will be $450 ($225 x 2). This application is the cheapest option because it has the strictest requirements.
TEAS Reduced Fee (TEAS RF) Application: This application costs $275 per class of goods/services. The fee is reduced because the applicant agrees to meet certain additional requirements.
TEAS Regular Application: This application costs $400 per class. It does not have the same additional requirements as TEAS Plus or TEAS RF and is thus not granted a reduced fee.
However, if the applicant submits a TEAS Plus or TEAS RF application and does not satisfy the relevant requirements, then the applicant must submit a $125 per class processing fee. After submitting this fee, the application will be treated as a TEAS Regular application.
What do classes of goods/services mean?
There are two concepts that must be understood when discussing goods/services on a trademark application. First, identifying your goods/services is different from classifying your goods/services. Second, the difference between the two.
For each type of trademark application, you will need to identify your goods/services. The identification must be accurate and fairly specific. For example, an acceptable identification would be "t-shirts" or "pants." An unacceptable identification would be "clothes" because it is too broad. The least expensive trademark application, TEAS Plus, requires the applicant to choose an identification for their goods/services using the ID Manual whereas TEAS RF and TEAS Regular applications allow the applicant to enter their identification of their goods/services free form.
The goods/services identified in the application will fit into one or multiple classes, depending on the variety of the goods/services. The USPTO organizes goods/services using an international class system. For example, Class 12 covers "vehicles" and Class 15 covers "musical instruments." There are 45 total classes and filing fees are based on how many classes of goods/services an applicant files under.
What factors do the USPTO look at when deciding to register a mark?
Once an Examining Attorney receives your application, which is typically 3 months after filing, the Examining Attorney will determine if your application meets all of the federal filing requirements. Besides meeting the technical requirements, the Examining Attorney looks at the strength of the mark and the likelihood of confusion when determining if a mark is registrable.
Strength of the mark
What does the "strength" of a mark mean? Strong marks are those that are easier to protect because they are more distinct. There are five types of marks: fanciful, arbitrary, suggestive, descriptive, and generic. Fanciful and arbitrary marks are the strongest kinds of marks while generic is the weakest. Usually generic and descriptive marks are not registrable while fanciful, arbitrary, and suggestive marks are more likely to be accepted by the Examining Attorney.
Fanciful marks are words that are completely invented by the owner. Examples include KODAK, PEPSI, and XEROX.
Arbitrary marks are existing words that have no relation to the offered goods/services. Examples include APPLE for computers and CAMEL for cigarettes.
Suggestive marks hint at or suggest a quality of the goods/services but do not outright describe the quality. Suggestive marks require the reader to make an inference or use their imagination to connect the mark with the goods/services offered. Examples include MICROSOFT because it provides software for microcomputers and NETFLIX because it is an online movie streaming service.
Descriptive marks simply describe the goods/services in whole or in part. Descriptive marks are not given protection unless the mark aquires distinctiveness through secondary meaning. Examples include RAISIN BRAN and HOLIDAY INN.
Generic marks contain only the common name for the goods/services. These marks are never registrable. Examples include COLA and FOOD MART.
LIkelihood of Confusion
The USPTO will refuse your application if your mark is likely to cause confusion with another mark that has already been registered or has already been applied for. There is likely to be confusion if the marks are similar AND the goods/services are related enough so consumers think the goods/services come from the same source.
When determining similarity, the Examining Attorney considers the mark's appearance, sound (pronunciation), and meaning. A linguistic understanding is very helpful when analyzing these characteristics.
To determine if goods/services from two different sources are sufficiently similar and are therefore likely to be confused, the Examining Attorney looks at the commercial relationship. The commercial relationship can include whether the goods are likely to be sold together or the services are likely to be performed by the same entity. For example, shoes and shoe laces are commercially related.
I filed my application - what happens next?
Congratulations! You've filed your application. Unfortunately, the next step is mostly a waiting game. But this doesn't mean you can just forget about your application. You should still check the status of your application every 3-4 months to see what stage your mark is at with the USPTO. You can check the status on the USPTO website with the Trademark Status and Document Retrieval (TSDR) system.
About three months after your application has been filed, the Examining Attorney should be reviewing your application. Depending on this review, your time frame can change dramatically. If there is a problem with your application, then the Examining Attorney will be in contact with the steps you should take. This will generally slow down the application process. If the Examining Attorney files an Office Action, then you should reply within six months.
If there are no problems with the mark or any previous problems have been resolved, then you should expect to receive a Notice of Publication from the USPTO either through regular mail or email. You will receive this notification three weeks before your mark is published in the Official Gazette. You will receive another notification on the actual publication date.
The mark will be published for 30 days and anyone can file an opposition. If there is no opposition or the opposition has been resolved, then you can proceed to the next stage. If you filed a "use-in-commerce" application, you should receive your registration certificate about three months after the publication period. If you filed an "intent-to-use" application, then you will receive a Notice of Allowance (NOA). But remember, if you receive an NOA, you still have to either submit a "Statement of Use" and begin using the mark in commerce or request an extension to file the "Statement of Use." This must be done within six months after receiving the NOA.
How can I protect my mark after it has been registered?
If you want your mark to continue to be federally protected, then you must renew your trademark registration every 10 years.
Apart from the USPTO requirements, you should remain vigilant to ensure your mark or a similar mark is not being used elsewhere without your permission. If you suspect your mark is being infringed upon, then you can send a cease and desist letter. This informs the other party that you have legal rights to your mark and that they are infringing on your rights by using a similar mark. When considering whether your marks are similar, remember the factors that the Examining Attorney takes into consideration.
Usually, many actions end with a cease and desist letter. Sometimes sending another cease and desist letter is required. But if the other party continues to use the mark, then you have legal recourse available to you.
Can I amend my application?
You may file a request to voluntarily amend or correct your registration or application at any time. But, depending on the timing, the amendment may require different steps.
If the application is pending, then the applicant may file a voluntary amendment form with the USPTO. An applicant can make the appropriate changes online.
If the mark has been accepted and published, then you must complete a trademark amendment form with the USPTO. An Examining Attorney will review the request and must accept the amendment for it to be valid.
It is important to note that no amendment may materially alter the mark or
expand the goods/services. If the applicant wants to make these changes, then the they must file a new application.
Can I transfer or assign my mark to someone else?
Absolutely. A trademark is an asset and like other assets, it can be transferred. The trademark can either be transferred to a new owner entirely or it can be transferred through a change in entity or name. For example, if you change your business from a corporation to an LLP, then the ownership has changed even though you technically still own the trademark. If there is a change in ownership, you must update the USPTO as to the change.
To update the USPTO, go to the ETAS page on the USPTO website and choose the appropriate ownership change option. Then fill out the form and upload a document to prove there has been a change in ownership. This document typically is the legal document itself that transferred the ownership or changed the entity. A supporting document is not required if there is simply a change of name.
These changes require a government fee.
What are the different types of trademark applications?
There are three different types of trademark applications: TEAS Plus, TEAS RF, and TEAS Regular.
The TEAS Plus application is the cheapest and most straight-forward application. In exchange for a significantly reduced fee, the applicant agrees to additional requirements. The applicant agrees to file a complete initial application by filling in all required and relevant fields and by selecting the applicant's goods/services from the USPTO's ID Manual. Additionally, the applicant agrees to file certain documents electronically and conduct all correspondence regarding the application via email. Finally, the applicant agrees to pay the entire application fee upon filing.
The TEAS Reduced Fee (TEAS RF) application is also offered at a reduced rate but is subject to fewer additional requirements than the TEAS Plus application. For this application, the applicant does not have to file a complete initial application. The applicant does not have to identify their goods by using the ID Manual and can instead identify their goods with a short description. However, the applicant does agree to conduct correspondence electronically.
The TEAS Regular application does not have any additional requirements. The applicant does not have to file a complete initial application, choose a goods/services identification from the ID Manual, nor agree to conduct correspondence electronically.