FAQ: Trademarks
What is a trademark?
A trademark is any word, device, symbol, or name, which indicates a particular source of goods thereby distinguishing those goods or services from other sources of origin. Trademarks are literally everywhere. Think of a brand name for your favorite jeans, the name of your favorite car, the kind of coffee you drink, et cetera. The list could go on and on forever.
What is a service mark?
A service mark is the same thing as a trademark, but instead of indicating the origin of a particular good, a service mark indicates the origin of a particular service. Examples of service marks could include your favorite cruise line, your favorite hotel, the name of your plumbing company, the oil change shop you use, your lawn mowing company, and so on and so forth.
Why do I need a trademark or service mark?
Trademarks and service marks distinguish the origin of your particular goods and/or services from others. Every day, consumers rely on trademarks and service marks to make a decision about whether to purchase one particular good or service over another. For example, you may think that one particular brand of golf ball is better than other brands. As a result, you always buy that particular brand of golf ball. Another popular example could be a specific type of purse or handbag. People spend large amounts of money on handbags to ensure that they are getting an authentic brand and not a counterfeit imitation. Consumers spend the extra money because they know that the authentic purse or handbag is a quality product that should last a long time. Thus, these consumers are relying on the strength of the handbags' trademarks to make their purchase.
Essentially, trademarks and service marks help protect all the time, money, and hard work that you have poured into a particular endeavor. As businesses grow they eventually establish a certain reputation. Once you or your company has built a reputation for providing quality goods and/or services, that reputation will need protection. Trademarks and service marks are one vehicle to protect that reputation.
What are the requirements for me to get a trademark or service mark registered?
The first requirement is actual use in commerce. The United States, unlike most foreign countries, requires the trademark or service mark to be actually used in commerce before you can apply for formal trademark registration in the United States Patent and Trademark Office (USPTO). "Actual use in commerce" means that the mark must indicate the origin of a particular good or service that is already in existence. In other words, you cannot register a mark in the USPTO that you are planning to or intend to use.
The second requirement is that the mark cannot be deceptively similar to an already existing mark that indicates the origin of the same or similar goods and/or services. According to this requirement, different entities can use the same mark to indicate different goods or services. For example, one person could use and register the mark "tomato" to indicate a particular manufacturer of an automobile. At the same time, another person could use and register the mark "tomato" to indicate a clothing line. Because the products are not the same or similar such registration and use is allowed.
The third requirement is that the mark cannot be generic or merely descriptive of the goods or services that you are offering. Continuing with the previous example, the mark "tomato" could not be registered for a tomato supply company or a tomato farmers' coalition. Thus, a particular mark may be allowed for certain subject matter while the same mark may not be allowable for other subject matter.
At Gunn, Lee & Cave our attorneys can evaluate whether registering your proposed trademark or service mark is viable. Contact us to set up an appointment if you have any questions.
I have a great idea for a trademark and I am planning to use it in the future, what should I do?
There is a way to reserve or save a proposed service mark or trademark in the United States Patent and Trademark Office (USPTO) even if the mark is not currently in actual use. The reservation of a mark within the USPTO must be renewed every six months for a maximum period of three years. Before the three-year period has expired, you must register your mark or else the mark becomes available to the general public again. Of course, to register the mark, it will have to be in actual use. As a result, you can reserve a mark that is merely an idea, but you have a total of three years to begin using your trademark in commerce.
What is the difference between the ® symbol and a ™ symbol?
The ® symbol denotes that a trademark has been federally registered in the United States Patent and Trademark Office (USPTO). The ® symbol is not to be misused and there are legal consequences if an entity is improperly using the symbol. One example of misuse would be using the symbol when no federal trademark registration really exists. The ™ symbol is the symbol that denotes a common law trademark. Similarly, SM is the symbol indicating a common law service mark.
What is a common law trademark or service mark?
A common law trademark or service mark is an unregistered mark that has been in actual use for a definable period of time and common law rights have arisen. The common law is basically law that has evolved through history according to what is considered right and just. In the trademark sense, the common law protects entities that have operated under a certain name or used a certain symbol to indicate the origin of its goods or services for a definable period of time.
Under the common law, it is not right and just for some entity to start using a trademark or service mark that another entity had already been using and continues to use. In other words, the common law protects entities that were the first to use a mark over subsequent entities that want to misappropriate the mark. As a result, entities that have never federally registered their mark in the United States Patent and Trademark Office (USPTO) may still have a basis for filing suit against an entity trying to steal an already established mark.
If common law trademarks and/or service marks protect me already, why do I need to federally register my mark at all?
The answer is you don't; however, you will be missing out on several distinct advantages that federal trademark registration offers. One of the major drawbacks to common law trademarks and service marks is that they only offer regional protection. A common law mark is only protected in the region(s) where it is actually being used. Therefore, an entity operating under a common law trademark cannot expect protection of its mark in other regions where there is no actual use.
The regions of actual use and the area of protection under the common law can be very small. In some instances courts have construed these regions to be as small as a few square miles. Thus, if you are relying on common law protection, some entity may be able to use the same mark after your established use as long as that entity is located only a few miles away.
The biggest advantage of federal trademark registration is that it puts others on constructive notice of your mark throughout the United States. As a result, if some entity tries to use your registered mark to provide goods or services that are the same or similar to yours, that entity cannot claim it was unaware of your rights.
Other benefits of federal trademark registration include:
- conclusive evidence of ownership to the trademark,
- trademark infringement suits can be filed in federal court as opposed to states courts for common law marks,
- once your mark is registered it can be filed with U.S. Customs to prevent importation of counterfeit goods from foreign countries, and
- you can use a U.S. registration as the basis for filing foreign counterpart applications.
How long does trademark and/or service mark protection last?
Trade protection lasts as long as you continue to use the mark in commerce and the mark does not become generic. If you stop using the mark in commerce you abandon your rights to the mark and others are allowed to use it. If your mark becomes so well known that people do not recognize it as a trademark or service mark, it becomes a generic mark and others can use the mark without your permission. Historical examples of trademarks or service marks that were once valid and then become generic because they become too well know are names like velcro, escalator, aspirin, trampoline, videotape, spandex, jungle gym, and zipper.
Do I need a trademark lawyer? How can Gunn, Lee & Cave help me register a trademark?
Gunn, Lee & Cave lawyers can do everything for you to obtain your trademark and/or service mark. To get the process started, we will need an example of your trademark or service mark in use and a description of the types of goods and/or services you provide. With some research, our attorneys should be able to evaluate the prospect of obtaining registration on your mark. To determine the propriety of registration we will perform searches of registered trademarks, as wells as common law marks if you desire.
Additionally, we can file the application with the United States Patent and Trademark Office and respond to trademark examiners' concerns or objections to your registration. Furthermore, if an entity formally opposes your registration of a certain mark, then we can respond to the formal opposition.
After your registration issues, we can maintain your trademark by docketing and reminding you of upcoming deadlines and fees for continued registration.
How long does the process take to register a trademark?
The length of a trademark prosecution varies according to many factors so there is not a definite answer to this question. However, a good estimate is that typically a trademark application takes about one year to prosecute, barring any adverse proceedings such as a formal opposition to registration.
Does Gunn, Lee & Cave enforce trademarks or service marks against entities that are using the marks without permission?
Yes, our attorneys can do several things to protect your trademarks or service marks. Our trademark lawyers have extensive experience in trademark litigation and can file a lawsuit to have a court enforce your mark regardless of whether your mark has been federally registered or not. In addition, our attorneys are extremely familiar with the formal trademark oppositions if an entity is trying to register a mark confusingly similar to your own registered mark. Finally, if the conflict with another entity trying to use your trademark or service mark has not risen to the level of formal proceedings yet, our attorneys have other ways to convince others to stop.
Don't let others take advantage of your hard work and efforts by tarnishing your strong reputation of providing quality goods and/or services. If you are interested in enforcing your trademark, even if it is not registered, schedule an appointment and one of our attorneys should be able to help you.