FAQs (Frequently Asked Questions)
What is a Trademark?
Its a word, phrase, logo, symbol or design, or a combination of these elements, used to identify or distinguish the goods and services of one company or individual from others.
What does it mean "to Trademark"?
When people say "you need to Trademark," they generally mean you need to file a Trademark application with the U.S. Patent and Trademark Office (USPTO). While mere use of the word or logo without registration is enough to create common law trademark ownership rights, those rights only extend to the geographical area where the mark is being used. A Federal Trademark registration is much stronger protection because it provides national protection.
What is a Service Mark?
Legally, a Service Mark is a Trademark, however, Service Marks relate to services, while Trademarks can relate to either goods or services.
When are the symbols "TM" , "SM" and "®" used?
TM SYMBOL: Parties claiming rights to particular trademarks may use the symbol TM next to their marks at any time - even prior to filing a trademark application.
SM SYMBOL: A party claiming such right to a Service Mark may similarly use either the TM or the SM symbol. Registration is not necessary in order to use these particular symbols.
THE ® SYMBOL: The ® symbol indicates that the trademark is a valid U.S. federally registered trademark. It is generally not permissible to use the ® symbol in the U.S. unless you have a valid U.S. federally registered trademark. Additionally, merely filing a trademark application is not enough, one must wait until the trademark successfully completes the entire registration process before using the ® symbol.
Do I need an attorney to apply for registration of a Trademark?
No. You are not required to use an attorney to prepare your trademark application. 4Trademark.com processes hundreds of trademark applications per year. We offer low cost, fixed fee professional services - our charge starts at $350.00 to prepare a single trademark application. Most attorneys charge an hourly fee and require a retainer. Moreover, unless the attorney is experienced in this process, you may have to pay him/her to learn to how to register a trademark!
How long does it take to secure a Federal Trademark?
It generally takes 10-16 months to secure a final registration certificate from the USPTO. However, assuming you eventually secure the registration for your trademark, your protection starts as of the date of filing, not the date of issue. Thus, you do not need to wait for a final registration certificate before you begin to use your trademark in interstate commerce.
What is the difference between State and Federal Trademarks?
Trademarks may be filed at either the state or federal level. State trademarks protect your mark in a specific state while federal trademarks normally protect your mark in all the states. State trademarks generally provide far less legal protection than federal trademarks. Businesses operating in only one state should trademark in that state. However, businesses operating in interstate commerce may file for a federal trademark. Obviously, a business intent on expanding nationally or internationally should conduct a trademark search and file a federal trademark as soon as possible.
To secure a federal trademark you must be conducting business in Interstate Commerce. This means you must be (i) conducting business across state lines which means doing business in two or more states; or, (ii) conducting business internationally which means between at least one U.S. state and one foreign country. Additionally, simply having a web site is not generally considered "conducting business." More appropriately, "conducting business" should be interpreted to mean making an actual sale of your good or service.
Businesses such as local businesses who are not conducting business in Interstate Commerce should file for a state trademark because they are not yet eligible for a federal trademark. The one exception to this if you intend to conduct business in Interstate Commerce in the near future. In such instance, it may be appropriate to file an Intent to Use federal trademark application. Federal Intent to Use applications are effectively name reservations pending future use.
Do I have to be currently using a trademark in order to file?
No. If you are using the Trademark in interstate commerce you can file an "Actual Use" application and provide the date of first use. Such use must be actual, and not merely the advertisement or promotion of the mark prior to the availability of the product or service for which the mark is being used.
If you have a bona fide "intent to use" the mark in interstate commerce but have not yet begun to use the mark then you can file and "Intent to Use" application. While the costs associated with these filing these two types of trademark applications are identical, the "intent to use" applicant must later file a Statement of Use together with an additional filing fee of $100 per Class. This statement of use will notify the USPTO and the world of your actual date of first use when and if you use the mark in interstate commerce.
What is a common law trademark?
Mere use of a trademark in interstate commerce is enough to create a common law trademark if the trademark is distinctive and has created a "secondary meaning." Common law trademarks should used with either the TM or SM symbol to notify the world of the owner's intent to protect his or her trademark rights in a particular mark. Please note that while the common law does afford the trademark owner some minimum level of trademark protection it should not be considered a valid alternative to the federally registered trademark which offers the greatest protection.
Should I file a federal trademark if I have common law rights?
Yes. A federal trademark establishes a presumption of ownership in a court of law. Owners of common law trademarks have to prove they use and own the trademark - sometimes on a county-by-county basis. This can be expensive and time consuming to prove in court. Financially, the only one who benefits would be the lawyers.
Who May File an Application to Register a Trademark?
Any person, corporation or partnership may apply. You shorten the procedure by using 4Trademark.com to guide you through the process: the many kinds of marks you can use, what is available at a state and federal level, and what may be best for your particular business.
What is the benefit of a trademark search?
It is important to know the full extent of the use of your mark prior to filing. Our Comprehensive Search includes a search of the federal database, the state databases, the common law database as well as the Internet Domain Name database. Click here for specific information regarding trademark searches.
Note, if your trademark has already been federally registered then you will not be able to register your trademark federally for the same or similar goods and services. If your mark is already being used in interstate commerce (i.e., a common law mark) you must determine the full extent of the use - especially if you want unrestricted national trademark protection. Your rights only extend to "after-users." If someone used it before you, then your rights are limited to the extent they have already used it.
What if some other company is already using my trademark?
If both companies offer the same or similar goods and services, and the other company has already registered the trademark federally, then you are likely out of luck. It may be best to find another name to trademark. If they have not trademarked, but they used the name first and they use the name nationally and pervasively, then you are probably still out of luck depending on the scope of their use. However, if they only use the trademark on a local basis, then you may be able to register the trademark federally and use it in those areas where they do not and have not used it before.
Example: Lets assume they have a trademark in California and have only ever done business in California. You can still register the trademark at the federal level and use it nationally. However, you cannot use it in the State of California.
If my trademark search shows a valid registered trademark but the owner of the trademark is no longer using the mark, can I still file?
Not if the owner has assigned or sold the trademark to another party or if the trademark is only not being used on a temporary basis. However, if the company is no longer using the trademark and has not been using the trademark for a substantial period of time (generally 2-3 years) then you may be able to successfully challenge their mark in court. Because of this they may be interested in selling the trademark to you inexpensively. But be warned, the minute you contact them they may immediately start using the mark!
Can I register a trademark in the U.S. if I live outside the U.S.?
Yes. However, if an applicant does not reside in U.S., a representative in the U.S. must be designated to receive documents and correspondence. We can act as your Domestic Representative at no charge through the date of registration.
Normally, trademarks are filed and registered on a country-by-country basis. Clearly, this can be very expensive. The good news is that recently some common filings, i.e., one filing protects you in multiple countries, are now available and will likely save you both in terms of time and money. While this is a great benefit to you from a cost standpoint there are some risks as well. You need to consult a professional regarding the risks of these common filings. One such common filing is in Europe. It is now possible to register one trademark with many of the countries in the European Union and secure protection throughout the majority of Europe. Additionally, you can now also file pursuant to the Madrid Agreement. The Madrid Protocol is the largest worldwide common filing allowing U.S. Registrants to register their trademark in more than 50 different countries throughout the world. For more information on filing internationally please contact Richard Morris at Richard@4trademark.com.
If I register a specific name as a trademark, will I be able to prevent its use by everyone else in the world?
No. If you own a registered trademark you can prevent others from using the same or similar trademark only for those goods and/or services you sell. For example, if you sell T-shirts using a registered trademark you have the right to prevent others from selling T-shirts using a trademark which is the same or similar to your trademark. Also, others may use your trademark to sell unrelated goods - like car tires or bottled water. You would only be protected for T-shirts.
Additionally, federal trademark protection only extends to companies selling goods or services in the U.S. or between a foreign country and the U.S. Your competitors may still have the right to sell the same or similar goods or services between 2 or more foreign countries. For this reason, many companies register their trademarks internationally as well.
Can I trademark my name and logo together in one application?
No. Each trademark must be trademarked separately if you intend to use them separately. Your name, slogan, logo, Domain name and design are all separate trademarks. Moreover, your business name and your logo are separate trademarks even if your business name is incorporated within the logo. Additionally, each application will incur its own fees and costs.
Can I trademark my Domain name?
Yes, however, your Domain name must be used to identify or distinguish your goods and services from others. Using it as simply your Domain Address is not usually not enough. Using your Domain name as your business name, for example, will make registration easier.
Do I pay annual fees to maintain my trademark?
No additional filings or fees are due within the first five years of ownership. The first renewal is due between the fifth and the sixth year following registration. The USPTO will NOT notify you that a filing is due. It is your sole responsibility to remember to make this follow-up filing. Failure to file will result in the cancellation of your trademark.
What is a Copyright?
Copyrights and trademarks differ greatly. A Copyright protects original artistic and literary works such as music, books, pictorials and graphics, poetry, stories, etc. They do not protect names, logos, designs or slogans. For more information on Copyrights visit the Library of Congress' website at http://www.loc.gov
Yes. If you find yourself involved in a trademark infringement action, either as the Plaintiff or the Defendant, please contact us directly. We would be pleased to assist you to locate a trademark litigation attorney in your area.
Can I register a descriptive word as my trademark?
Yes, if you use it as a trademark (i.e., as a business name or product name) and you do not use it in a generic sense. Here are some rules for using your somewhat descriptive trademark:
1. Use the trademark as a proper adjective.
2. Stylize the trademark when used in text (e.g. bold face, initial capital letters, italics, colors).
3. Use the trademark with appropriate warnings such as the "TM" symbol or language which says "This mark is a trademark registered in Texas."
4. Never alter a trademark - use it a single way exactly as it is trademarked. Do not use it as a verb. Do not pluralize a trademark that was trademarked in the singular.
5. Manage the use of your trademark by other market participants. Require your clients, licensees and competitors to say "Registered trademark of ABC, Inc." if they wish to use your trademark.
6. Enforce your trademark. Quickly react to the improper use of a trademark by sending "cease and desist letters" or by explaining the proper use of your mark.
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