A trademark is a word, phrase, symbol, or design, or a combination of these, that a party uses to identify and distinguish the goods or products it sells from another party’s goods or products. In short, a trademark is a brand name.
Filing a trademark application with the United States Patent and Trademark Office (USPTO) starts a legal proceeding that is governed by U.S. law. While hiring a private lawyer is not mandatory, the U.S. Patent and Trademark Office recommends recommends using a lawyer to avoid pitfalls and increase your likelihood of getting a registration. Trademark law is a highly specialized area of the law subject to complex regulations and specific filing requirements.
A service mark is a word, phrase, symbol or design, or a combination of these, that identifies and distinguishes the source of a service as opposed to goods. The term "trademark" is often used to refer to both trademarks and service marks.
A federally registered trademark gives you a legal presumption of your ownership of the mark and your exclusive right to use the name (or logo) nationwide in connection with the goods and services listed in the registration. Other advantages of owning a federal trademark registration are:
Public notice of your claim of ownership of the mark, so others can learn about your rights before they use your name in a way that would violate your rights.
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.
The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods.
The right to use the federal registration symbol ®.
If there are no issues or objections to the application, generally it takes 6 to 12 months for an examination to be completed and the registration to be issued. It may take longer, however, if you receive an Office Action. See the USPTO’s application process timelines for more detailed timeline information.
A Section 1(a) actual use application is appropriate when you can show you currently are using your trademark in interstate commerce. The USPTO requires that you file with the application a “specimen of use” that demonstrates you are in fact using the trademark in commerce at the time you file your application. If, however, you are not yet using your mark in commerce but intend to use it in the future, you must file under the Section 1(b) "intent to use" basis. An "intent to use" basis will require filing an additional form and fee that are unnecessary if you file under "actual use.” Essentially, an intent to use application allows you to “reserve” a name before you actually use it in commerce.
You must file your Allegation of Use either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted.
A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen shows the mark as your purchasers encounter it in the marketplace (for example, on your labels or on your website).
Goods are involved in “interstate commerce" when they are sent across state lines with the mark displayed on the goods or their packaging. With services, "interstate commerce" involves offering a service to those in another state or rendering a service that affects interstate commerce (for example, restaurants, gas stations, hotels, etc.).
The ™ (trademark) symbol notifies the public of your common law rights. It may be used whether or not you have filed an application to federally register your trademark. The federal registration symbol, the R enclosed within a circle (®), may only be used once the mark is actually registered in the USPTO, and we recommend that you use it to maximize your trademark rights. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.
A trademark registration is valid as long as you timely file all post-registration maintenance documents. You must file a "Declaration of Use under Section 8" between the fifth and sixth year following the registration date. In addition, you must file a combined "Declaration of Use and Application for Renewal under Sections 8 and 9" between the ninth and tenth year after registration, and every 10 years after that. If these documents are not timely filed, your registration will be cancelled.
In most cases, it will be advantageous to register your logo as a mark. If your logo includes words, we generally recommend registering the logo and word mark separately to gain maximum protection. We will help you develop a trademark strategy based on your particular circumstances.