TRADEMARKS

What is a trademark?

A trademark includes any word, phrase, symbol, design, or any combination thereof, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.  In short, a trademark is a brand name.

 

What is a service mark?

A service mark is any word, phrase, symbol, design, or any combination thereof, used, or intended to be used, in commerce to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

 

Do I need to register my trademark?

No. However, federal registration with the U.S. Patent and Trademark Office 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.

 

What are the benefits of federal trademark 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.

 

Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?

No. Use of the symbols "TM" or "SM" (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued.

 

When is it proper to use the federal registration symbol (the letter R enclosed within a circle -- -- ) with the mark?

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. [Note: 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.]

 

Is a federal registration valid outside the United States?

No. Certain countries, however, do recognize a United States registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. The laws of each country regarding registration must be consulted.

 

Can the U.S. Patent and Trademark Office refuse to register a mark?

Yes. The U.S. Patent and Trademark Office will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.

Other common grounds for refusing registration may include:

  1. the proposed mark consists of or comprises immoral, deceptive or scandalous matter;

  2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

  3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;

  4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;

  5. the proposed mark so resembles a mark already registered in the U.S. Patent and Trademark Office that use of the mark on applicant's goods or services are likely to cause confusion, mistake or deception;

  6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;

  7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;

  8. the proposed mark is primarily merely a surname; and

  9. matter that, as a whole, is functional.

How long does a federal trademark registration last?

For a trademark registration to remain valid, an Affidavit of Use must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration.

The registrant must also file a Renewal Application within the year before the expiration date of a registration.

Assuming that an Affidavit of Use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term.

This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.