TRADEMARKS AND SERVICE MARKS

What is a trademark or service mark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

Is trademark registration required?

No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages:

constructive notice to the public of the registrant's claim of ownership of the mark;

a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;

the ability to bring an action concerning the mark in federal court;

the use of the U.S registration as a basis to obtain registration in foreign countries; and

the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark (via trademark registration or otherwise), you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the United States Patent & Trademark Office (“USPTO”). However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

HOW DO I REGISTER A TRADEMARK?

Basis for filing:

The application should include your "basis" for filing. Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future. Knowing which one applies to your situation is vital when completing trademark registration in compliance with trademark law.

What is "use in commerce"?

For the purpose of obtaining federal trademark registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. If you have already started using the mark in commerce, you may file based on that use.

In order to comply with trademark law, a "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.

What is "intent to use"?

If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce. You do not have to use the mark before you file your application.

According to trademark law, an "intent to use" application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. The applicant or a person authorized to sign on behalf of the applicant must sign the statement.

TRADEMARK SEARCHES

State Trademark Search

A state trademark is a trademark that has been registered at the state level. State trademarks must be searched at a state trademark register. Information regarding state trademarks and searches is typically handled by the Secretary of State.

Common Law Trademark Search

Trademark ownership is based on who uses the mark first. Because of this, trademark law supports checking unregistered as well as registered marks to avoid possible conflicts at a future date. Unregistered trademarks can be more difficult to find because of their very nature. A trademark that has not been registered with the federal government is a common law trademark. Common law trademarks are at a distinct disadvantage compared to federally registered trademarks.

Trademark Search Online

A very basic federal trademark search can be conducted online at the United States Patent and Trademark Office's (USPTO) official website at www.uspto.gov.

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