WHAT IS A TRADEMARK?
Trademarks are images, symbols, or words that identify a trademark holder's goods or services from those of another. Trademarks are different from copyrights, which protect original works of authorship, and patents, which protect inventions. They are brand names like FordTM or Black and DeckerTM" that we associate with a particular product, and they are symbols - like the NBC peacock, or the Michelin Man that we associate with a provider of goods or services. Trademarks are significant in that they allow consumers to be sure that they are getting the particular goods or services that have come to be associated with a certain seller - the "goodwill" associated with a particular brand. For this reason, trademarks are a very valuable commodity and thus, when they are infringed, serious issues are raised.
HOW DO I GET A TRADEMARK?
Contrary to what many people believe, trademark rights are gained by actual use of a mark rather than by registration. Generally the first person who uses a mark in commerce has the right to use the mark in that geographic area, and its natural zone of expansion. Thus, if you have a band using the name John Doe and the Anonymous in the Washington, DC, area and you are the first person to use that name, you hold the superior right to that mark in the DC area - where you are actually using the mark - and any surrounding areas to which the use of the mark would naturally extend. However, if you are not actually using a mark, but have the "bona fide intent" to do so in the future, you can secure use of the mark by filing what is known as an "Intent to Use" Application with the United States Patent and Trademark Office ("USPTO") which will reserve the mark for you in incremental periods of six months. If, thereafter, you are not able to satisfy the USPTO that you are using the mark, you will lose your right. As a side note, some people who are using a mark locally will choose to file for state trademark registration. This really gives you nothing in addition to what you gain by actually using the mark in commerce, but will serve to put the world on notice of your use of the mark.
WHAT IS FEDERAL TRADEMARK REGISTRATION?
As stated above, registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal (as distinct from state) registration with the USPTO can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide, as opposed to just in the area of actual use and the natural zone of expansion from it, as is the case without registration. For these reasons, a federal registration can provide significant advantages to a party involved in a court proceeding.
HOW LONG DOES A TRADEMARK LAST?
Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10 year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.
HOW DO I REGISTER A TRADEMARK WITH THE USPTO?
As stated above, there are two types of trademark applications: the Intent to Use Application and the Actual Use Application, for marks that are actually being used in interstate commerce. Comprehensive information and downloadable forms for registering a trademark are available from the United States Patent and Trademark Office website. However, some of the basics will be covered here.
As a preliminary matter, prior to registering a trademark, one should ensure that one has the right to the intended mark, or else one risks suit and the prospect of having to change their mark in the future. An applicant is not required to conduct a search for conflicting marks prior to applying with the USPTO. However, it is advisable to do so for the reasons stated above (so you don't get sued and/or need to change your mark later). Unfortunately, trademark law is far from black and white. The standard for evaluating whether a prospective mark is infringing is "whether there is a likelihood of consumer confusion regarding the source or origin of goods or services." In English, this roughly translates to whether someone will confuse your mark with someone else's. For non-lawyers, making this determination can be a daunting task, and so usually it is best to hire an attorney to make the analysis for you.
Should you choose to undertake an analysis yourself, there are several commercial services available that will provide information from searchable databases regarding potentially conflicting prior uses of your intended mark. You can also now search for free at the U.S. Patent and Trademark Office website, which will provide you with basic information about prior (U.S). federal registrations.
HOW DO I FILE AN APPLICATION?
Once you have determined that you want to file for registration of your trademark, you will need to fill out an appropriate application, available for download from the U.S. Patent and Trademark Office Website. There are several elements required in completing an application, and those are gone over in detail on the USPTO website.
FINALLY! THE ANSWER TO THAT REALLY BIG QUESTION: USE OF THE "TM," "SM" AND "®" SYMBOLS
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is registered with the USPTO. It is improper to use this symbol at any point before the registration is issued.
DISCLAIMER:
This page is for informational purposes only. I am not your lawyer. If you have a legal question or problem, please retain counsel. If you do not know of a good lawyer, feel free to email me. I will try to direct you to an appropriate referral source in your area.
Of course, if you want to hire me as your lawyer, or if you have additional questions you may send me email about that as well.