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Below are a number of trademark-related resources that many of our clients have found to be extremely helpful. This information is intended to be a starting point for educating yourself a little more about what a trademark is and how trademarks are protected. Once you are ready to move forward with obtaining and enforcing your own trademark rights, please visit our Trademark Services page, or feel free to call 949-250-5800 or email us to schedule your FREE initial consultation.
Frequently Asked Questions
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Why should I be concerned about adopting and protecting a trademark? [back to top]
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A trademark is your signature – your means of identifying your products or services to the market. If your products or services have some desirable attribute that keeps customers coming back, you’ll want your trademark to be what helps guide them. Your trademark is how your customers will be able to distinguish and select your products or services from those of others.
Once your trademark becomes associated with your products or services, it has value. You will have created a brand that carries with it your customers’ hopes for and expectations of quality and their desire to find that quality in the products or services provided only by you. As the owner of a mark that has been registered, you can take advantage of the value you have built up in your brand by employing the protections afforded by the trademark laws to exclude others. This will effectively carve out a portion of the marketplace in which your business can grow and flourish. And unlike a patent or a copyright, if you continue to use and maintain your trademark, it can last indefinitely.
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How do I obtain trademark rights? [back to top]
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Trademark rights are acquired by use in commerce, not by federal or state registration. Use in commerce essentially entails selling or offering to sell products or services bearing your mark. If you were the first to use a particular mark in commerce in a specific locality, you may already have a common law right to prevent others from using that mark. However, such common law trademark rights are generally limited to the areas where you have sold and advertised. Use in commerce sufficient to support federal trademark registration consists of sale of your product or service across state lines.
Use of not just any mark will accrue trademark rights, though. Generally, a valid trademark or service mark must: (1) serve as a source identifier; (2) be nonfunctional; and (3) be distinctive. The requirement that a mark serve as a source identifier is inherent in the definition of a trademark. This is a necessary requirement for trademark protection in order to meet the important purpose of preventing consumer confusion – each valid mark must be capable of identifying a unique source. The requirement that a valid mark also be nonfunctional is based on the concern that no one should be able to monopolize a shape or design as their mark or brand when that shape or design is functional or utilitarian and necessary for others to be able to compete. As you would expect, the nonfunctional requirement is not an issue for traditional word, phrase or symbol marks. Beyond these key policies and purposes for trademark protection, some marks are still not worthy of protection because they do not meet the third requirement of distinctiveness.
Trademark distinctiveness is typically expressed as a continuum from generic marks, which are never protectable, to arbitrary or fanciful marks, which are always protectable, assuming that the other requirements of being a source-identifier and nonfunctional are also met. A generic mark is one that is synonymous with the basic nature of the product or service with which the mark is used. For example, BREAD would be a generic mark for a loaf of bread and would not be valid because, obviously, competitors need to be able to use this term to identify their own products and compete fairly. At the other end of the spectrum, arbitrary or fanciful marks are marks that bear no relation to the product or service they are used in conjunction with. Marks like KODAK® for cameras and APPLE® for computers would be examples of arbitrary marks. Between generic marks and arbitrary marks there are what are known as descriptive and suggestive marks. Descriptive marks, as the name implies, describe a characteristic or quality of a product or service and are not protectable apart from a showing of “secondary meaning.” Secondary meaning is essentially proof that over time consumers have come to associate the mark with the source of the product or service bearing the mark and is usually based on the length and manner of use of the mark, the amount and manner of advertising, and the volume of sales. One step up the distinctiveness scale, a suggestive mark is a mark that suggests, rather than describes, some characteristic or quality of a product or service and, critically, is protectable without a showing of secondary meaning.
As you will appreciate, the difference between a distinctive mark, which is not protectable apart from secondary meaning, and a suggestive mark, which is protectable apart from secondary meaning, is critical and an important one to keep in mind as you consider your own adoption and use of a trademark or service mark. Obviously, you’ll want to select a mark that appeals to customers – a mark or brand that is, in fact, marketable. You’ll also want to select a mark that does not describe the very nature of your product or service or one of its key attributes and that is not so similar to an established mark that it would confuse customers as to the source of your product or service. The bottom line is, the more arbitrary the mark, the more likely that the mark will be protectable. If you have any questions or concerns about a name or symbol that you are considering adopting, you should consult an attorney.
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If trademark rights arise based on use alone, why spend money to register a mark? [back to top]
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While registration does not give rise to a trademark right, it can definitely help in protecting and enforcing that right. In the federal scheme, registration of your mark on the Principal Register confers protection within the entire United States and serves to put others on notice that the mark is exclusively yours for use in connection with the goods and services identified in your registration. A federally registered trademark also carries with it a presumption of validity. The federal trademark laws further provide that once you have used your mark continuously for five years after registration, it becomes incontestable and much more difficult to invalidate. Because the registration of your mark puts others on notice, when it becomes necessary to enforce your trademark rights against someone using your mark or a confusingly similar mark without your permission, monetary and injunctive remedies and procedural advantages available only in federal court may all be realized. Federal registration of descriptive marks that have not acquired secondary meaning (see above) can be registered on the federal Supplemental Register, which may provide a basis for later registration on the Principal Register and allow you to preclude others from registering a substantially similar mark in the meantime.
States also have independent trademark registration provisions. While state registrations are usually simple and inexpensive, you also get what you pay for. State registrations are limited only to the particular state and cannot prevent the out-of-state adoption and use of your mark. A federal registration essentially trumps a state registration, limiting even an earlier state registrant to only the geographic area where the mark has already been put to use at the time of the federal registration. Even so, for marks that will foreseeably only be used in a particular state or states, or as an added measure of protection complimentary to federal registration, a state trademark registration may still be opted for.
While conventional federal trademark registration and all state registrations are based on actual use in commerce, the federal trademark scheme includes one further registration option that provides trademark owners with a potentially tremendous advantage. Under only the federal laws, even if your mark has not yet been used in interstate commerce, so long as you have a genuine intent to do so within the six months following registration, you can file what is known as an Intent-to-Use (“ITU”) trademark application. The ITU application essentially allows you to protect or preserve your rights in a mark before you actually launch your product or service bearing the mark. This will buy you some time to prepare for your market introduction while minimizing the risk that someone else will commence use of the same or a confusingly similar mark in the intervening time. If you have not used the mark in commerce by the end of the six-month period, extensions of time can be requested for a total of up to twenty-four months. Thus, it is possible that through an ITU trademark application you can reserve rights in a mark not yet used in commerce two to three years beyond the date on which the application is first filed.
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Is a trademark search necessary before I adopt, use and register a mark? [back to top]
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A trademark search is not necessary, in the strictest sense of the word, in order for you to adopt, use and register a mark, but it is definitely advisable. Sure, you may get lucky and choose a word that is not confusingly similar to any trademark already in use by someone else, but why take the chance? You might also choose a trademark that is the same as or confusingly similar to another mark, and then you will have wasted much time and effort in marketing a brand that you not only can no longer use, but may be sued for using at all. For only a few hundred dollars, a federal and state trademark search can be conducted that will give you a much better feel for the other related marks already in use and registered, potentially saving you thousands of dollars down the line if the same or similar mark as your proposed mark turns up. A trademark attorney should be consulted and a trademark search and opinion obtained regarding any mark that you are considering using.
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If someone else is already using the same name, am I out of luck? [back to top]
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In many cases, use of the same name does not necessarily preclude your own and adoption and use of that name as a trademark. The requirement for trademark protection is that it be capable of identifying source, or uniquely associating your product or service with you. In other words, any valid trademark must be capable of being used without creating what is known as a “likelihood of confusion” – without causing confusion between the products or services of two different people. Beyond the similarities between the marks themselves, other considerations such as the distinctiveness of the marks and the similarities of the respective products or services and marketing channels, also play a part in the likelihood of confusion analysis. As an example, if you have adopted the name WIDGET for your new tennis shoes and someone else is using the name WIDGET for lawnmowers, it is unlikely that these two uses would create confusion. That is, it is unlikely that the public would think that the source of the WIDGET brand tennis shoes is also the source of the WIDGET brand lawnmower.
The one major exception to the above is if the mark that is already in use is a “famous mark.” Marks that are famous, or that have achieved such renown and extensive use that they are recognized by a large number of consumers, may be protected from adoption and use by others, even on dissimilar or non-competing products, under the federal ant-dilution statutes. For example, even though it is unlikely that hamburgers would be associated with tennis shoes, were you to adopt and use MCDONALD’S for your new tennis shoes it is likely that such use would be objected to or be the subject of a lawsuit.
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What about my business name - is that a trademark? [back to top]
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A business name can be a trademark, but most business names aren’t. Generally, when a business name is used only in connection with the business itself, it is not used as a trademark. A name must be used in connection with a product or service to identify the business as the source in order to meet the definition of a trademark. In that regard, you should be aware that registration of a business name with your Secretary of State really has nothing to do with securing trademark rights. The Secretary of State will perform only a cursory search of other previously-registered businesses to make sure that your business name is not identical to anyone else’s, but will not look to trademark registrations or conduct any kind of “likelihood of confusion” assessment. If you are going to use the name of your business also as a brand for your product or service, you should separately register the name as a trademark.
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What is the difference between the "TM", "SM", and "®" symbols that I see used with various marks? [back to top]
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The “TM” text is simply an abbreviation for trademark. Use of this symbol is an assertion of common law trademark rights in the word, phrase or symbol adjacent to which the “TM” text appears. Because common law trademark rights are acquired through actual use in commerce (see above), the “TM” text can be used in connection with any mark that has been used in commerce, whether registered or not., and is, in fact, advisable Similarly, the “SM” text is an abbreviation for service mark and may be used to assert common law rights in a mark used in commerce in connection with your services. To reiterate, you do not need to register your mark to use the “TM” or “SM” text identifiers. In contrast, the “®” symbol means "registered" and may only be used in connection with a mark that has been federally registered. The “®” symbol is used for federally registered trademarks or service marks.
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Does a federal trademark registration cover any and all goods and services that I want to use with the mark? [back to top]
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No. When you file your application to federally register your trademark, you must specify the goods and/or services that you are seeking registration of your mark in connection with. This is achieved by both identifying an “International Class” of goods or services and specifying the actual goods or services within that class that you have used, or intend to use, your mark on. Your registration will cover only the identified goods and services, and no more. This is critical to your own registration and to the notice function the registration is to provide to others. For this reason, the goods and services may only be amended to narrow their scope, not broaden their scope, once the trademark application is filed. To seek registration on other goods or services clearly outside of the scope of those identified in an already-pending application will require a new and separate trademark application. Thus, it is very important to carefully consider all the potential goods and services with which you might use your mark at the outset, so that all these uses can be accounted for in the initial application. However, oftentimes these considerations of exhaustively specifying the goods and services in an application must be balanced against the increased cost associated with such an application (presently, the federal filing fee is $325
per International Class) to arrive at a common sense approach to the goods and services designation.
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How long does the federal registration process take, and what is involved? [back to top]
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The first step in the registration process is to prepare and file the federal use-based or “Intent-to-Use” (“ITU”) trademark application. The application generally includes a drawing (black and white image of the mark), identifying information relating to the mark, the date of first use of the mark in commerce, if any, a description of the goods and services with which the mark is, or will be, used, including an election of the International Class(es), the applicant’s name and address and an oath by the applicant, a designation of the attorney(s) in the case, and the required filing fee (presently $325
per International Class). Where the mark has already been used in commerce, two specimens should also be included with the application. A filing receipt should be received from the Trademark Office three to four months later, which will provide proof of the filing date and a serial number to be used for reference throughout the rest of the process.
The trademark application is then passed along within the Trademark Office to a Trademark Examining Attorney, who will review the application for completeness and determine whether the requirements for trademark protection of source-identification, nonfunctionality and distinctiveness are met (see above). The Examining Attorney will report his or her findings in an Office Action likely to be received six to nine months after the application is filed. A response to the Office Action must be made within six months of receipt, which response will either acknowledge or refute the Examining Attorney’s findings regarding registrability of the mark. Once the Trademark Examining Attorney is convinced that the mark is entitled to registration, the mark is published for opposition in the Official Gazette, which gives any interested party thirty days to oppose the registration. If there is no such opposition, a Notice of Allowance will be mailed typically within three months of the end of the opposition period (or approximately one to one-and-a-half years from the date the trademark application was initially filed).
If a use-based application was filed alleging a date of first use in interstate commerce and providing the required specimens, once the Notice of Allowance is mailed, all requirements for federal registration will have been met, and a Certificate of Registration should follow shortly. However, if an ITU application was filed in order to preserve interests in a mark prior to its actual use in commerce, one additional step is required to complete the registration process: actual use of the mark must be made and attested to. If actual use of the mark in commerce is made at any time before the Notice of Allowance is mailed, an Amendment to Allege Use may be filed in the case such that the Certificate of Registration will again shortly follow. If, on the other hand, actual use of the mark in commerce is not made until after the Notice of Allowance is mailed, it will be necessary to file a Statement of Use within the six months following the mailing date of the Notice of Allowance, which period is extendable through requests for an Extension of Time for up to a total of twenty-four months.
Assuming the registration is ultimately allowed, Section 8 and Section 15 Affidavits alleging continued use of the mark in commerce and that the mark has become incontestable, respectively, must be filed between the fifth and sixth years following registration. In addition, the trademark registration must be renewed every ten years by submitting a statement of continued use and the appropriate fee.
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