Frequently Asked Trademark Questions

ATrademarks protect words, names, phrases, symbols, sounds, designs, colors, or a combination thereof, which identifies and distinguishes the source of the goods and/or services of one party from those of others. Trademarks are registered with the United States Patent and Trademark Office (UPSTO), and can be renewed forever as long as they are being used in commerce.

AA service mark is the same as a trademark except that it identifies and distinguishes the source of a service versus goods.

AIn the United States, “common Law” rights in a mark are established solely on use of the mark in commerce, even without registration.

AGoods are products. Services are activities performed for the benefit of someone other than you or your company. If customers pay you for a product, then you have goods. If  customers pay you to perform an activity, then you have services. Trademarks are assigned to goods and Service Marks are assigned to services. Prior to registration, Trademarks are identified with the TM symbol, and Service Marks are identified with the SM symbol. After registration with the USPTO, both Trademarks and Service. Marks should be identified with the Ⓡ symbol.

AFailing to accurately identify your goods and/or services could prevent registration of your trademark. You must list the specific goods and/or services you are using, or plan to use, with the trademark/service mark you want to register. The USPTO offers a ID Manual called the Acceptable Identification of Goods and Services Manual. The searchable database can be used to find acceptable wording to describe your goods and/or services in the application. All goods and services in the ID Manuel are assigned in numbered categories called “international classes.” There are 45 international classes: classes 1-34 are for goods and classes 35-45 are for services. If you can’t find an accurate listing for your good sand/or services in the ID Manual you have the option of drafting your own identification.

A A federal trademark registration on the Principal Register provides a significant advantages beyond common law rights including:

• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);
• Constructive notice nationwide of your claim of ownership of the mark;
• Listing in the USPTO’s online databases;
• The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
• The rights to use the federal registration symbol “®”;
• 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

AA trademark identifies the particular source of goods and/or services. Registration of a domain name with a domain name registrar does not give you any trademark rights. It is important to note, that even if you register a domain name with a registrar, you could later be forced to surrender the domain name if it infringes the trademark rights of someone else. On it own, using a domain name as part of a web address does not qualify as source-indicating trademark use. However, other prominent use separate from the web address may qualify as source-indicating trademark use.

AUsing or registering a business name only does not necessarily qualify as trademark use. However, other use of a business name as the source of goods or services may qualify it as both a business name and a trademark. A state or local authorization to form a business with a particular name does not also give you trademark rights. In fact, other parties could try to prevent your use of the business name if they believe a likelihood of confusion exists with your business name and their trademarks.

AThe registration is valid as long as you timely file all post registration maintenance documents. You must first file a “Declaration of Use under Section 8” between the fifth (5th) and sixth (6th) year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth (9th) and tenth (10th) year after registration, and every ten (10) years thereafter. If these documents are not timely filed, the registration will be cancelled and cannot be revived or reinstated.

AThe application must specify your “basis” for filing. Most U.S. applicants base their application on either their current use of the mark in commerce or their intent to use the mark in commerce in the future. Under either basis, prior to registration you must demonstrate that you have used the mark in commerce in connection with all the goods/services listed in your application by submitting an acceptable specimen. The basic difference between these two filing bases is whether you have started to use the mark on all the goods/services. An “intent-to-use” basis requires filing an additional form and fee that are unnecessary if you file under “use in commerce.”

AApplication filing fees are based on the type of TEAS initial application filing option used (TEAS Plus or TEAS Standard) and the number of international classes of goods or services in the application. Each class of goods and/or services in your application requires its own filing fee. You may have only one, or multiple international classes in your application. There are additional fees depending on the filing basis of your application: intent-to-use applications have more required submissions and fees after initial submission. Filing fees are generally not refundable. The filing fees for an application filed through the Trademark Electronic Application System (TEAS) are as follows: $225 per class of goods or services for a TEAS Plus application that meets the requirements of 37 C.F.R.  §2.22; or $275 per class of goods or services for a TEAS Standard application. If your application is filed based on a bona fide intent to use the mark in commerce, additional documents and fees will be required at a later time. You may obtain the current schedule of fees.

ANo. However, your citizenship must be provided in the application. If you have dual citizenship, then you must indicate which citizenship will be printed on the certificate of registration.

AIt depends. You may delete, clarify or limit goods and/or services from the application. You may not expand or broaden goods and/or services.

AIt depends. There are many factors that can affect the application process. Approximately three (3) months after you successfully submit your application, it will be assigned to a USPTO examining attorney for review. The attorney will determine if your application meets all applicable legal requirements, and if it doesn’t you will be notified in an email with a link to an office action (official letter from the USPTO). The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application. You should check on the status of your applications every three to four months.

AWhen using your mark, it is a best practice to use a designation with it. If registered, use an ® after the mark. If not yet registered, use TM for goods or SM for services, to indicate that you have adopted this as a trademark or service mark, regardless of whether you have filed an application with the USPTO. There are three restrictions on use of the ® symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the federal registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires).

AA USPTO registration is effective only in the U.S., even though the goods/services are assigned an “international” classification number. If after filing a U.S. application you want to protect your mark outside the U.S., you may file an international application or file directly in that country.