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What
is a Trademark or Service Mark? A trademark is a word, name,
symbol, logo, or other device used to identify or distinguish goods
from other sources. A service mark is a word, name, symbol, logo, or
other device used to identify or distinguish services from other sources.
The word "trademark" is often used to encompass both trademarks and
service marks. There are two other categories of marks which may be
eligible for federal registration. Certification marks are used in conjunction
with goods or services to indicate a particular quality or region of
origin. Collective marks are used to indicate membership in a particular
group.
Do
I have rights in my mark without a federal registration?
Rights in a trademark are derived by using a mark which does not infringe
on the rights of others in conjunction with goods or services. Such
rights are known as common law rights, and are normally limited to the
geographic region of use. Careful records of the dates of first use
of the mark, and dates of the first use of the mark in interstate or
international commerce should be kept in order to establish evidence
of the owner's rights. A clearance search and analysis should be performed
by a qualified attorney to evaluate whether the trademark rights of
others would be infringed by your use of a mark.
What steps should I take in order to select a mark to use with my goods or services? First, try to choose a mark which is not generic or descriptive of the goods or services, or of some quality associated with them. Stay away from surnames and geographically descriptive or mis-descriptive terms. Instead, choose a mark which is fanciful or arbitrary with respect to the goods or services. Such marks will be the "strongest" in terms of trademark protection, and usually work best to create a memorable image for one's customer base. Choose a mark which is clearly distinctive from other known marks. Check the Trademark Office Database as a preliminary step to see whether other similar marks have been registered. Check to see whether a domain name which follows from the mark, especially using the ".com" suffix, is available at Whois.net. Since domain names can disappear quickly, it may make sense to register the domain name as soon as possible if it is available. Finally, seek advice of counsel and have a professional clearance search and analysis conducted before making a final decision. Such a search must cover variations on the mark and utilize both federal and state databases, as well as common law databases. The costs of taking this prudent step up front are very low compared to the expense of defending against a suit for trademark infringement later." What are some tips for using a trademark or service mark? Once a mark has been cleared, decide on a consistent way in which the mark will appear. For goods, use the mark on the goods themselves or on the packaging of the goods in a prominent manner in which potential customers will see it when deciding whether to purchase the goods. For services, use the mark in promotional material and advertising of the services. The mark should be used as an adjective rather than as a name for the goods or services, such as "Kleenex tissue" rather than "Kleenexes," in order to prevent the mark from becoming commonly known as a generic name for the goods rather than a brand name, and thus a loss of trademark rights. Use a "TM" symbol or "SM" symbol for trademarks or service marks, respectively, as a superscript or subscript immediately following the mark. Do not use the "®" symbol without a federal registration. Separate the mark from the generic term for the goods or services, and from any designation of the business name or address, using spacing, font size or style, color, etc. Seek advice of counsel regarding registering the mark. When
can I use the TM or SM symbols? The "TM" and "SM" designations
("trademark" and "service mark," respectively) are commonly used as
superscripts or subscripts after trademarks and service marks to place
the public on notice that rights in the mark are being claimed. These
symbols may be used as soon as the mark is in use without any registration
of the mark.
When
can I use the ® symbol? The ® designation is reserved to
indicate that the mark is federally registered. This symbol should not
be used under any circumstances until a federal registration has issued
on the mark.
What
criteria must I meet to federally register my mark? Generally,
a distinctive mark must be used in commerce which can be regulated by
Congress. This means it must be used in interstate or international
commerce. If your mark is being used only within your state, you should
consider a state registration of the mark. The
mark must also be sufficiently different from other marks used on similar
goods or services to avoid a likelihood of confusion with respect to
the origin of the goods or services. Finally, the more descriptive your
mark is of the goods or services provided, the more difficult it may
be to obtain federal registration. Marks which are generic or descriptive
of the goods or services are generally not registrable, while marks
which are merely suggestive or arbitrary/fanciful are potentially registrable.
Marks consisting of geographical terms or surnames are generally not
registrable. If you are not yet using your mark in commerce, but you
intend to do so in the near future, an application for federal registration
may be filed based on your intent to use the mark, however, actual use
of the mark must be demonstrated prior to the issuance of a registration.
Before filing an application for registration, it is generally prudent
to request a search and analysis by a qualified attorney to determine
whether problems with the mark may exist.
What are the benefits of federally registering my mark? First, federal registration of a mark provides nationwide rights to the owner against subsequent users of confusingly similar marks. Without a registration, the rights to the mark are generally restricted to the geographical area of use. Also, a federal registration creates certain presumptions with respect to your mark, including the presumption that you are the owner of the mark, and that subsequent users may have copied the mark and may be liable for willfully infringing your mark, thereby enhancing the damages you may be able to collect in an infringement suit. Furthermore, federal registration has a powerful deterrent effect in preventing others from selecting marks similar to yours. Finally, federal registration allows the owner to use the federal court system in order to enforce its rights in the registered mark. For
what period of time will my rights extend?
Your rights in your trademark may be preserved indefinitely as long
as the mark continues to be used. A federal registration is issued for
a 10 year period. However, in order to prevent cancellation of the registration,
an "affidavit of use" must be filed during the sixth year after publication
of the mark in the Official Gazette. Registrations may be renewed for
10 year periods if filed during the 6 month period prior to the expiration
of the registration. Such renewal applications may be filed every 10
years as long as the mark continues to be in use. State registration
periods may vary. In Illinois, registrations are issued for 5 year periods.
If
I am not able to federally register my mark, why bother with a state
registration?
State registration of a mark does not provide the same benefits to the
owner of the mark as federal registration. However, state registration
can be worthwhile. First, state registration of a mark places the mark
in state databases which are frequently searched by those selecting
or attempting to register a mark. This can provide a deterrent to others
from using a similar mark. Additionally, state registration can provide
certain benefits or presumptions if a state law suit arises.
What
are the costs associated with registering a mark, and how long does
it take? While it can vary significantly, it generally takes
about 12 to 16 months to receive a federal registration after filing
a trademark application. The government filing fee is currently $325
per class of goods or services. Depending on the situation, a draftsman's
services may be required. Attorney fees for preparing and filing applications
for federal registration are generally in the range of $300 to $500
for a single class of goods or services. Hourly rates are typically
charged for responding to Office Actions from the U.S. Patent and Trademark
Office, and other application processing services. State registrations
can be acquired in as little as 1 to 2 weeks, and with small state filing
fees (e.g., $10 in Illinois). Attorney fees for a state registration
may be in the range of $150 to $200. Searches and analyses prior to
filing an application can be performed economically.
What can I do to lower my costs in filing an application for registration? You can utilize our already affordable trademark services by conventional means, or try our E-Register Your Marksm technology to provide your information to us online over secure channels and save legal fees. What is the difference between a trade name and a trademark? A trade name or business name is the name which identifies a business. It is either the formal name under which a business is incorporated or organized, or the assumed or fictitious business name adopted by the business. A trademark or service mark is the word(s), logo, or slogan used in connection with goods or services, such as a brand name. Trade names are sometimes used as trademarks or service marks, but this is not always the case. Can I register my domain name as a trademark or service mark? Yes, so long as it is being used as a trademark or service mark. If it is merely used to indicate the URL or address at which a web site may be found, such use is not sufficient. It must be used as a source identifier for the goods or services. Do I need a clearance study before selecting a name for my business or a domain name? When one forms a business, the Secretary of State determines whether the selected trade name is available. Similarly, when one registers a domain name, the registrar of domain names determines whether the domain name is available. However, if the selected name differs only by one character from existing names, it will be allowed. It is vital to understand that neither acceptance by the Secretary of State of a business name, nor availability of a domain name, is any indication as to whether the use of the trade name or domain name could give rise to a cause of action by another under trademark or unfair competition law. For this reason, it is important to have a professional clearance search and analysis conducted before proceeding to use a trade name or domain name. For further information, visit the U.S. Patent and Trademark Office web site, or Contact Us . |
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