Trademark FAQ
What is a Trademark?
Trademark applies to any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
What is a service mark?
A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
Do I have to register my trademark?
No, but federal trademarking has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
What are the benefits of federal trademarking?
- Constructive notice nationwide of the trademark owner's claim.
- Evidence of ownership of the trademark.
- Jurisdiction of federal courts may be invoked.
- Registration can be used as a basis for obtaining registration in foreign countries.
- Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Do I have to be a U.S. Citizen to obtain a federal registration?
No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration.
Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?
No. Use of the symbols "TM" or "SM" (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued.
When is it proper to use the federal registration symbol (the letter R enclosed within a circle -- ® -- with the mark.
The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. [Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.
Do I need an attorney to file a trademark application?
No, although it may be desirable to employ an attorney who is familiar with trademark matters. An applicant must comply with all substantive and procedural requirements of the Trademark Act and Trademark Rules of Practice even if he or she is not represented by an attorney. The names of attorneys who specialize in trademark law may be found in the telephone yellow pages, or by contacting a local bar association. Trademark search firms are often listed in the yellow pages under the heading "Trademark Search Services" or "Patent and Trademark Search Services."
What constitutes interstate commerce?
For goods, "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).
How do I find out whether a mark is already registered?
You may conduct a search free of charge on the USPTO website using the Trademark Electronic Search System (TESS) at www.uspto.gov. If your mark includes a design element, you will have to search it by using a design code.
You may also conduct a trademark search by visiting the Trademark Public Search Library, between 8:00 a.m. and 5:00 p.m. at 2900 600 Delaney St. Madison East Building, 1st floor, Arlington Virginia 22202. Use of the Public Search Library is free to the public. You can also conduct a search at a Patent and Trademark Depository Library near you.
Private trademark search firms will conduct searches for a fee. The USPTO cannot aid in the selection of a search firm. Search firms are often listed in the yellow page section of telephone directories under the heading "Trademark Search Services" or "Patent and Trademark Search Services."
Is a trademark registration valid outside the United States?
No. However, if you are a qualified owner of a trademark application pending before the USPTO, or of a registration issued by the USPTO, you may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the he International Bureau of the World Property Intellectual Organization, through the USPTO.
Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.
Can the Office conduct a search for an applicant?
No. After a trademark application is filed, the U.S. Patent and Trademark Office (USPTO) will conduct a search of the records as part of the official examination process. The official search is not done for the applicant but rather to determine whether the mark applied for can be registered.
What are common law rights?
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration.
What is a common law search? How can I do one? Is doing a common law search necessary?
A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration. A common law search is not necessary but some find it beneficial. Telephone numbers for search firms that perform these searches for a fee can be found in the yellow pages of local phone directories and through an Internet search.
