Trademarks

What is a trademark?


It is a word, phrases, design, logo, sound, and even a smell, used to designate the origin of a product.  The classic examples include Coca-Cola (for soft drinks), Nike and its famous swash (for athletic shoes and equipment.  The primary goal of a trademark is to let the consuming public know where a particular product comes from.


What is a service mark?


A service mark is a word, phrases, design, logo, sound, and even a smell, used to designate the origin of a service.  The primary distinction between a trademark and a service mark is that the service mark may not have a particular physical product associated with it.  Some examples of service marks include McDonald’s for its restaurant services (the individual items may also be subject to trademark protection).  Typically, the term “trademark” will cover both service marks and product trademarks.


What do I need to do to protect my business’s trademarks in the United States?


In the United States, an owner of a trademark gains rights as soon as it begins to utilize it in commerce.  This means that as soon as a company begins to provide products or services under a particular trademark, it has rights to that trademark in association with that particular good or service.  Rights based upon use of the mark are, typically limited to the geographic area (i.e., state) in which the mark is used.  In order to obtain broader protection throughout the United States, a trademark should be registered with the United States Patent and Trademark Office (USPTO).


Does use of my trademark in the United States protect me outside the United States?


No.  Each country outside of the United States has different rules about trademark protection.  In most instances, a trademark is required to register its trademark in a particular country before it can enforce its rights to it.  Unlike the United States, most other countries follow a “first-to-file” regime in which registration, not use, is the primary requirement to obtain trademark protection.  However, due to various treaties with other countries, a trademark owner may claim benefit of its registration in the United States, if it files a trademark application within a specified period of time in that country.


Do I need to conduct a trademark search before I file a trademark application?


It is always a good idea to conduct a search for similar trademarks before filing or utilizing a new trademark.  Conducting a search allows you to avoid spending valuable time and resources on marketing materials and incurring other costs and later being required to abandon your trademark due to a third-party’s prior rights.  When filing a trademark application with the United States Patent and Trademark Office (USPTO), the person filing the application is required to declare that to the best of its knowledge the company does not infringe third party rights.


Do I have to wait until I begin to use the trademark in order to obtain trademark protection in the United States?


No.  It is strongly recommended filing a trademark application with the United States Patent and Trademark Office once you are ready to move forward with using your trademark.  You should keep in mind that the applicant must show that it has a bona fide intent to utilize the trademark in commerce. This means that just thinking that you may use the mark is not sufficient.  It is best to keep records of your plan to use the trademark in commerce.  A trademark application filed before the mark is actually in use is called and “intent-to-use” application.  It saves your spot in line and protects your use of the mark against third parties who may start to utilize a similar trademark after you file your application.  The “intent-to-use” application is evaluated in the same way as a regular trademark application.  Once approved, the applicant has up to three years to begin use of the mark.


Do I need to be selling products or services in order to obtain trademark protection?


No, see “intent-to-use” application above.  However, you will need to begin utilizing the mark in commerce within three years of approval and provide evidence that the mark is being used in commerce.


How do I file a trademark application with the United States Patent and Trademark Office?


It is best to seek advice of a competent practitioner before filing a trademark application in association with two particular issues: 1) ensuring that your mark does not conflict with other trademarks and 2) crafting an appropriate description of goods or services associated with the trademark that will ensure appropriate coverage and reduce delays in obtaining a registration.  However, if you want to file the application on your own, you can do so electronically through the United States Patent and Trademark Office (USPTO) at www.uspto.gov.