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Frequently Asked
Questions
Trademark
Law 101
If you're like most people, choosing a name for your business was
difficult. You probably spent days thinking about whether the
name properly reflected the nature of your goods or services, and
whether the name was catchy enough. If you're like most people,
after all of that hard work, you breathed a sigh of relief and
started advertising. And, unfortunately, if you're like most
people, you did not research whether the name you selected was
available to be used as a trademark—and it could be
extremely costly to your business. The reasons why trademarks are
fundamentally important to all businesses is answered by the
responses to the following questions.
Remember, we have other excellent publications on
this subject matter for you, for example: Introduction to
Trademarks,
The Federal
Trademark Registration Process. You can also
search our site for even more content!
- I just started a business, why should I
start thinking about trademarks now?
- I thought that I would be protected if I
filed for a fictitious name or incorporation. Isn't that
right?
- Okay, it's starting to make sense. What
should I think about in order to select a name or logo
that can be used as a trademark?
- After I select a name, how can I
determine whether it is able to be used as a trademark?
- If the name is not being used by another
business and it is able to be used as a trademark, then
what?
- When do I get a trademark? Don't I have
to register it with the government?
- Well, I've already used my trademark in
commerce. Why should I register it?
- I've seen businesses use a "TM"
symbol and the ® symbol. Why are there different
symbols, and which should I use?
- What should I
expect regarding the federal trademark registration process?
-
I filed an "Intent to Use" application that has been "Allowed" by the Patent
and Trademark Office. Now what?
When you started
your business, you selected a name and logo because you believed
that they distinguished your goods or services from those of
others. Over time, your customers, and potential customers, will
recognize the quality of your goods or services solely because of
the business name and logo. Developing a quality reputation that
is based solely upon a business name or logo takes valuable time.
But, you may not realize that your business name, logo or
product name may be unavailable to be used as a trademark. If
so, you will spend years building "good will" in a
business name, that, ultimately, you will have to forfeit. A
future trademark problem could destroy a lucrative franchising or
growth opportunity. Contact us for details.
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No. Remember that
fictitious name filings and incorporations are performed at the
state level only. Even if you could afford to maintain a yearly
filing in every state, you would still not be immune from
trademark problems. For example, consider the following
situation: A company incorporates as PlumbingTech Service, Inc.,
and provides the service of computerizing home plumbing. Another
company incorporates as AllTek Corp., and one of many services it
offers is its PlumbingTech Service, which is also to computerize
home plumbing. Clearly, the reputations of the two companies
would be confused by the consuming public. Thus, even though both
companies are properly doing business from the Corporation
Bureau's perspective, there are obvious trademark problems.
Contact us for details.
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There are two
basic reasons why a name you select will not be available to be
used as a trademark: either the name already has been used by
another business, or it is generic.
As in so many areas of the law, first in time is first in
right. If another business has already used a similar name for
similar goods or services, then that business will have the
exclusive right to use the trademark. Thus, in such cases, often
the best advice for a new business is to choose a new name.
Even if the name has never been used by another business, not
all names can be trademarks. For example, generic names are not
available for trademark protection because they are generally the
very name of the product or service itself. For example, a
business could not trademark "spoon" for a shovel-like
kitchen utensil. Also, names that describe the goods or services
are generally not available to be trademarks. For example,
"Best Computer Service" for a computer servicing
company describes the services offered. The best and most
valuable trademarks are arbitrary. For example, the term
"Kodak" does not otherwise have any relation to
photographic equipment. Contact
us for details.
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The only way you
can obtain some assurance that a name or logo has not previously
been used is to perform a trademark search. Preliminary
computerized research can be performed at our office for about $50 to $100. Additional research can be
performed by independent trademark research companies that do nothing but
research trademarks for about
$250 to $500 per mark, with very little flexibility in the mark to be searched. If that seems to be expensive, consider how much it
costs to purchase advertising, stationery and signage, and then
to find out that your name or logo must be changed to avoid a
trademark infringement lawsuit.
Neither this law firm nor any trademark
research firm of which we are aware will guarantee that a mark is available.
The search is to determine what can be reasonably found, not to determine that
nothing exists. This is because of the nature of trademark law and the
limited ability to search. A search is limited to the records searched, the cost to the client,
the potential variations of the mark that make it difficult to search. For
example, if someone is doing business to "KLEENINGKREW" on hills of Wyoming, and
the mark is not registered there, that person has superior rights on the hills
of Wyoming. See below. However, because it
is not registered anywhere, it cannot be reasonably searched and found.
Furthermore, because of the unusual spelling, even if it were registered
somewhere, the search would need to be in that registry and with the unusual
spelling. Contact
us for details.
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After you perform
adequate research, you should then perform your state business
filings such as an incorporation or fictitious name registration.
If you have already performed your business filings, or selected
logos or product or service names, then you should still perform
the research as explained above. You are far better off
performing the research after the fact, than to continue to use
and develop a name or logo without knowing your legal rights.
Contact us for
details.
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No. There are two
types of registrations: state and federal. You may not realize
that you obtain rights in your trademark on the first date you
actually use the trademark in commerce. For a state trademark,
the first date you use the mark in that state is the date when
you begin to develop trademark rights. For a federal trademark,
the first date you use the mark in interstate commerce (between
at least two states) is the date when you begin to develop
federal trademark rights. You do not have to register the
trademark with the state or federal government to obtain
trademark rights.
However, the scope of your rights will be limited to the
market territory where you actually use the trademark. Therefore,
without more, you would have to do business nationally, in every
market, to obtain complete national trademark protection of an
unregistered trademark.
Generally, you cannot obtain a trademark without first
actually using the mark in commerce. However, pursuant to recent
amendments in federal trademark law, you now have the
ability to secure a federal registration filing date which
precedes your actual use of the mark in interstate commerce. The
type of filing, called an "intent-to-use application,"
is an extremely valuable way to secure rights in a mark without
disclosing the mark prior to its actual use. Contact
us for details.
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Whether a state or
federal registration is advisable is a function of the costs and
benefits of each registration. The benefits of a state
registration vary with the law of each individual state. Most
often, state laws do not provide any more protection than
available without a state registration, i.e. protection in
the actual market territories within the state. However, state
registrations are usually entered into computer databases that
are nationally available; thus, it may act as a deterrent to
another business that is performing a trademark search.
If you federally register a trademark, you will have the
following advantages, among others: expansion of your trademark
rights from your actual market territory to include the entire
United States, regardless of where you actually do business;
you will be presumed to be the owner of the trademark; a
registration will prevent similar marks from being registered;
and you may receive triple damages and attorneys' fees if you are
injured by infringement.
Contact us for
details.
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I've
seen businesses use a "TM"
symbol and the ® symbol. Why are there different symbols,
and which should I use?
There is also the "SM"
symbol for a service mark. Most people use the term
"trademark" generically. Actually, there are trademarks
for products and service marks for services. Until you receive a federal
registration of a mark, you should use the "TM"
symbol (for products) or the "SM" symbol
(for services) to alert the public that a mark is being claimed. While
use of those symbols does not convey any rights, it is good
practice--especially because it prevents an infringer from
claiming that the infringement was innocent. After a federal
registration of either a mark, you should use the ® symbol to
signify that the mark is federally registered. The ® symbol
should never be used prior to a federal registration.
Contact us for
details.
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See our memorandum,
The
Federal Registration Process. Also,
contact us for more
details.
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You cannot obtain a federal trademark
registration until you actually use the mark in federal commerce, meaning
between or among states or internationally. There are two types of
applications for registration: Actual Use (AU) and Intent to Use (ITU).
AU applications are used when you have used the trademark in federal
commerce prior to applying for the mark. ITU applications are used
when you intend to use the mark in federal commerce, generally within the
next few years.
All applications for registration proceed
primarily the same way, except that, at the end of the Patent and Trademark
Office (PTO) approval process, an AU application will immediately lead to a
registration of the mark, but an ITU application leads to a "Notice of
Allowance." The reason is because, by its nature, and an ITU
application is not based upon a federal use of the mark, and such a use is a
precondition to registration. See
The Federal
Trademark Registration Process.
If you receive a Notice of Allowance, then the PTO has
allowed the mark. The next step is to examine the mark and the
description of goods and/or services. Basically, you need to use the
mark interstate or internationally. For goods, that usually means
making a sale of the goods claimed with the mark on the goods or packaging
of the goods. For services, that usually means with advertising
materials that use the mark and describe the service offered for sale.
Generally, advertising uses work for services, but you need sales for goods.
Once you actually federally use the mark on the goods or
services claimed, you must tell the PTO you have done so. There is a
filing fee. You need to include "specimens" of use; that is actual
originals of what you used. This can be the advertising materials or
flyers for services, or flattened boxes/packaging for goods (or
pictures of the goods with the mark).
You also need to inform the PTO of the first
date that you used the mark anywhere, and the date when the mark was used in
federal commerce.
You have six months from the date of the
Notice of Allowance to actually use the goods and inform the PTO. If
you have not done so, you may extend the mark for 2 1/2 years, at six month
intervals, for a fee each time, for a total time period of three years to
actually use the mark.
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In conclusion, the lesson is that choosing a name or logo for
a business should be done with the proper advice, research and
care. Building a business with a name and logo that are not
available for trademark protection is like building a home on
sand.
See also,
Introduction to
Trademarks,
The Federal
Trademark Registration Process.
Contact us if we can assist you in achieving your
goals. If you would like to obtain our other firm publications,
and/or our newsletters, then please call us as soon as possible
to be placed on our mailing list.
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Contact us today! Our firm can assist
you with understanding and applying the law to your particular situation.
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