FAQ: Trademarks

How do I trademark a name?

Names may be trademarked similar to other trademarks. However, there are certain restrictions to registering a name as a trademark. A person’s name may be federally trademarked if: (1) it is the trademark applicant’s name, or if someone else’s name, if the trademark applicant obtains the person’s consent; (2) the name sought to be trademarked does not pose a likelihood of confusion with other registered trademarks; and (3) the name sought to be trademarked is not “primarily a surname” – meaning the name sought to be trademarked must not simply be someone’s last name.

What trademark class do I need?

There are 45 different classes of trademarks provided by the United States Patent and Trademark Office (USPTO). 34 classes are used to identify products and 11 are used to identify services. A trademark applicant must first identify whether the mark will be used for a product (i.e.: furniture), or a service (i.e.: a furniture assembly service). In some cases, determining which class a trademark should be registered under is simple. In other cases, it is more difficult to ascertain which class a good or service falls under, especially if it may fall under several different categories (i.e.: a company that manufactures furniture and also delivers or assembles it). It is possible to register a trademark under multiple classes, but it is important to consider selecting classifications only for the goods or services which the trademark will be used for.

Can trademarks be used as a domain name?

Generally speaking, a domain name can be registered as a trademark. However, it must meet the trademark requirements set forth by the United States Patent and Trademark Office (USPTO). For a domain name to be registerable as a trademark, it cannot be generic (i.e.: food.com). The domain name must also be a name that signifies some purpose other than solely the business’s name (i.e.: your company’s name cannot be trademarked as a domain name, but something such as your company’s name plus the services you provide may be able to). Note that although the domain name may not be able to be federally registered as a trademark, that does not preclude it from being used as a domain name: it simply will not be protected by federal trademark protections.

When is a trademark not infringed?

Trademark infringement occurs when someone other than the registered trademark owner uses the trademark without permission from the owner in connection with goods or services and in a way that is likely to cause confusion as to where the goods or services come from. To prove infringement, a trademark owner must be able to show that the trademark that is allegedly infringed upon was registered prior to the use of the secondary mark and that the secondary mark is likely to cause confusion to the public about the source of the goods or services. This means that typically, infringement occurs only when a secondary mark is used for the same goods or services provided by the first registered trademark.

Which trademark symbol do I use?

A “TM” symbol refers to the right to use a trademark (i.e.: ™). A “SM” symbol refers to the right to use a service mark. Any person who claims the right to a mark, even if not federally registered, may use the “TM” or “SM” symbol in connection with the goods or services provided in order to claim the rights to the trademark. The “R” symbol, however, may only be used after federal trademark registration is granted by the United States Patent and Trademark Office (USPTO) (i.e.: ®). This mark signifies that the trademark is federally registered and used in connection with the goods or services listed in the federal trademark registration. A trademark applicant may not use the “R” symbol while an application is still pending.

What do I do if I get an office action rejection to my trademark application?

It is not uncommon for the United States Patent and Trademark Office (USPTO) to issue a request for more information or a rejection to a trademark application, called an Office Action. When a trademark applicant receives an Office Action from the USPTO, an applicant typically has 6 months from the date the Office Action was issued to respond. Depending on the USPTO’s reasoning for issuing the Office Action, the applicant may respond by filing a request for reconsideration to overcome any refusal. If the Office Action requests additional information or identifies any deficiencies in the initial trademark application, the applicant may respond to the Office Action either by providing arguments as to why the applicant’s trademark should be reconsidered or may amend the trademark application to comply with the USPTO’s requirements. If an applicant receives a final Office Action rejection, the applicant may appeal the USPTO’s decision to the Trademark Trial and Appeal Board (TTAB).

What is a likelihood of confusion rejection?

A trademark application may be rejected for likelihood of confusion if the United States Patent and Trademark Office (USPTO) determines the mark sought to be registered is identical or similar to another existing registered trademark. An applicant who receives a likelihood of confusion rejection may respond to the rejection or may appeal the USPTO’s decision to the Trademark Trial and Appeal Board (TTAB).

What is a rejection based on a prior filing pending trademark application?

A trademark application may be rejected for based on a prior filing pending trademark decision if the United States Patent and Trademark Office (USPTO) identifies another application filed prior to the trademark applicant’s that contains an identical or substantially similar mark, but that is not yet federally registered. If the prior application is granted, it is unlikely that the applicant’s trademark application will be granted.

Why trademark a name?

A registered trademark gives a trademark registrant the exclusive right to use the trademark in connection with the goods or services listed in the trademark registration. Federal registration of a trademark provides the holder with certain legal rights that can be used to enforce preventing others from using the same or similar trademark to identify the same goods or services. Trademark protection helps ensure a trademark holder’s legal rights are protected, and also allows a holder to take legal action against someone who later infringes upon the holder’s original trademark. This can lead to increased profits for a business, decreased likelihood of confusion to the public as to which company or business a good or service is associated with, and allows for a trademark holder to potentially recover more in monetary damages in the case of infringement.

Will my trademark be accepted?

The primary factor in determining whether a trademark application will be accepted is whether the trademark is likely to be confused with another, already existing trademark. This occurs when the trademark sought to be registered is identical or substantially similar to a pre-existing mark and used in connection with the same goods or services as the existing trademark. There is no mechanical test for determining whether a likelihood of confusion exists. However, if trademarks are visually or phonetically similar, have the same meaning, or create the same commercial impression to the public, it is likely a trademark application will be denied if a pre-existing mark has already been registered.

The most common reasons for denial of a trademark application are: (1) likelihood of confusion with another pre-existing mark; (2) the trademark application does not sufficiently describe the goods or services to be used in connection with the trademark; (3) the trademark sought to be registered is a geographic location; (4) the trademark sought to be registered is a surname; or (5) the trademark sought to be registered is used as a decorative feature on the goods or services, and not as an indication of where the goods or services actually come from.

How do I find a trademark lawyer near me?

A simple Google or Yelp search often reveals law firms and attorneys that specialize in trademark registration. Additionally, many lawyers and firms have profiles on websites such as lawyers.com, avvo.com, and martindale.com. It is important for a business or individual seeking the assistance of a trademark attorney to carefully read reviews and areas of practice the lawyer or firm specializes in to determine whether the lawyer will be able to assist in your trademark needs.

How do trademarks work?

Trademarks are used to protect a business or brand’s image. A trademark can be a word, a symbol, or a name associated with a brand or product that distinguishes one business or brand from another. When a trademark is federally registered with the United States Patent and Trademark Office (“USPTO”), the owner of the trademark possesses the legal right to exclude others from using the mark in association with the same goods or services provided by the original trademark owner. This means that in the case of infringement, a trademark owner may be able to obtain monetary remedies (called “damages”) if a third party copies or “infringes” upon a registered trademark. Trademarks may also be afforded some protection at common law, even if not federally registered with the USPTO. However, these common law rights are not as broad as federal registration and will not provide the additional protections afforded to a federally registered trademark owner.

What does a trademark mean?

Where do I trademark a logo?

All trademark applications for federal registration may be submitted through the United States Patent and Trademark Office (USPTO)’s website. All trademark applications, including those for registering a logo as a trademark, must meet the USPTO’s criteria for trademark registration.

Which trademark application should I use?

Why is a trademark important?

Is a trademark goodwill?

Goodwill is an intangible asset of a company or business that values the company or business based on the purchase price of the company minus the net fair market value of the company’s assets. Intellectual property, including trademarks, are a part of a company’s intangible assets that affect a company’s goodwill valuation. In this way, a trademark is not the same as goodwill, but goodwill is calculated based on the trademark’s value to the overall company as a whole.

Can a trademark be filed globally?

When a trademark is federally registered in the United States with the United States Patent and Trademark Office (USPTO), it is classified under one of 45 International Classes. The international class system is a classification system in which goods or services are categorized by industry to establish globally recognized definitions of certain goods or services. However, although a federally registered trademark is given an international classification, the international class does not protect a trademark owner’s mark internationally. The international class system is intended only to provide a comprehensive guide of definitions and classifications.

If a trademark application wishes to protect a trademark internationally, he or she may be able to do so under the Madrid System. The Madrid System provides a way for applicants to seek protection of a trademark simultaneously in more than one country. An owner of a trademark who is a member of the Madrid System may register the trademark in his or her home country and then seek further protection under the Madrid System, which would then protect the trademark in other participating countries.

Alternatively, a trademark application may simply apply for trademark registration in each individual country the applicant wishes his or her trademark to be protected in. It is important to note that different countries may have different requirements for trademark application and/or registration.

How do I use a trademark for business?

Trademarks are used to protect a business or brand’s image. A trademark can be a word, a symbol, or a name associated with a brand or product that distinguishes one business or brand from another. The primary purpose of a trademark is to identify the source of certain goods or services and prevent confusion to the public as to the source of such goods or services. This means that a trademark protects the business or brand by preventing others to use identical or similar marks for identical or similar services, because consumers would be confused whether the goods or services come from the first user of the trademark or the secondary user of the mark. Protecting a business name or brand name provides valuable protection for a business when federally registered because federal registration allows the trademark owner to prevent others from using the same or a similar trademark in association with the same goods or services provided. This can lead to increased value in a business, increased profits, and increased reputation in the relevant industry.

How many years is a trademark granted for?

A trademark has the potential to last forever, as long as the mark continues to be used in commerce. However, a trademark holder must submit a “Declaration of Use” form to the USPTO between the fifth and sixth year after initially registering a trademark in order to maintain federal protection. Additionally, a trademark holder must submit a “Declaration of Use and Application for Renewal” form between the ninth and tenth year after initial registration, and every ten years thereafter. If a trademark holder timely submits all required renewal forms, the trademark will last until it is abandoned, or no longer used in connection with the goods and services.

Are trademark and copyright the same thing?

No, trademarks and copyrights are not the same. Although both are forms of intellectual property, a trademark consists of any word, name, or symbol used in connection with goods or services. Trademarks are intended to protect businesses and brands and distinguish them from other business’s brands or goods. Recognizing a trademark allows for companies and creators to protect their unique goods by distinguishing between similar products as to the source of the goods or services.

Copyrights protect original creations, including literary, dramatic, musical, and artistic work, among others. Copyrights are most often seen in books, movies, and songs. The idea of copyright protection is intended to protect original artists or creators from third parties who seek to copy or reproduce an original work and profit off of the original creator’s work.

How is a trademark registered?

What is trademark infringement?

When does a trademark expire?

However, a trademark is considered abandoned if it is no longer used in connection with the goods or services identified in the trademark registration. In addition to non-use, to be considered abandoned, intent not to resume use of the trademark must also be shown. A trademark will also be considered to be abandoned if timely renewal documents are not filed with the United States Patent and Trademark Office (USPTO) showing continued use and intent to use the registered mark.

Are trademark fees tax deductible?

In order to better understand whether a trademark cost is tax deductible, it is advisable to speak with a tax professional or tax attorney. Trademarks are considered “intangibles” under Section 197 of the Code of Federal Regulations. This means that over a period of years from the date the trademark was filed, all costs associated with registering the trademark may have the potential to be amortized, depending on the trademark and the business.

Where do I trademark a business name?

All trademark applications for federal registration may be submitted through the United States Patent and Trademark Office (USPTO)’s website. All trademark applications, including those for registering a business name as a trademark, must meet the USPTO’s criteria for trademark registration.

Why trademark a logo?

In the case of a logo, federal trademark registration allows a business to ensure no other business uses the same logo in providing the same goods or services as the originally registered trademark, which would otherwise lead to confusion as to the source of the goods or services. In turn, trademark protection of a logo may lead to increased profits for a business, decreased likelihood of confusion to the public as to which company or business a good or service is associated with, and allows for a trademark holder to potentially recover more in monetary damages in the case of infringement.

Can trademarks be sold?

Trademarks are associated with a business or individual’s specific goods or services. Due to the specificity of the nature of a trademark, it cannot be sold outright. However, transfer or sale of the business or good/service the trademark represents will also allow the original trademark holder to transfer or sell the trademark rights as well.

How do I trademark a phrase?

To federally register a trademark with the United States Patent and Trademark Office (USPTO), a trademark application must be submitted to the USPTO online and must include: (1) a completed application form; (2) a registration fee; (3) a drawing of the trademark sought to be registered; and (4) specimens of the mark in use if the trademark will be used in connection with goods or services in commerce. The phrase must be original and distinct and must not be a pre-existing federally registered trademark.

When does a trademark become generic?

Generic trademarks are common-use daily names and are never registrable for trademark protection. The USPTO has held that generic marks do not even qualify as “marks” in the legal sense, because everyone has the right to use the generic term. An exception to the weak properties of generic marks occurs when an owner uses his or her trademark in a manner that other trademark owners would. “Aspirin,” for example, is a commonly known term for pain relief medication – however, it has risen from a weak, generic trademark to a strong one over its years of use and rapport in the marketplace.

Where does a trademark symbol go?

A trademark symbol (such as “™,” “SM,” or “®”) is typically placed immediately following the registered mark.

Why trademark a company name?

Trademarks are used to protect a business or brand’s image. A trademark can be a word, a symbol, or a name associated with a brand or product that distinguishes one business or brand from another. The primary purpose of a trademark is to identify the source of certain goods or services and prevent confusion to the public as to the source of such goods or services. This means that a trademark protects the business or brand by preventing others to use identical or similar marks for identical or similar services, because consumers would be confused whether the goods or services come from the first user of the trademark or the secondary user of the mark. Protecting a business name or brand name provides valuable protection for a business when federally registered because federal registration allows the trademark owner to prevent others from using the same or a similar trademark in association with the same goods or services provided. This can lead to increased value in a business, increased profits, and increased reputation in the relevant industry.

How do I trademark a brand?

To federally register a trademark with the United States Patent and Trademark Office (USPTO), a trademark application must be submitted to the USPTO online and must include: (1) a completed application form; (2) a registration fee; (3) a drawing of the trademark sought to be registered; and (4) specimens of the mark in use if the trademark will be used in connection with goods or services in commerce. The mark sought to be trademarked must not be a pre-existing federally registered trademark. All trademark applications for federal registration may be submitted through the United States Patent and Trademark Office (USPTO)’s website.

How is trademark registration obtained?

When should I use “TM” with my trademark?

A “TM” symbol refers to the right to use a trademark (i.e.: ™). Any person who claims the right to a mark, even if not federally registered, may use the “TM” symbol in connection with the goods or services provided in order to claim the rights to the trademark.

What should I trademark?

Trademarks are used to protect a business or brand’s image. A trademark can be a word, a symbol, a slogan, or a name associated with a brand or product that distinguishes the source of goods or services from one business or brand from another. When a trademark is federally registered with the United States Patent and Trademark Office (“USPTO”), the owner of the trademark possesses the legal right to exclude others from using the mark in association with the same goods or services provided by the original trademark owner.

Why trademark a business name?

Trademarks are used to protect a business or brand’s image. A trademark can be a word, a symbol, or a name associated with a brand or product that distinguishes one business or brand from another. The primary purpose of a trademark is to identify the source of certain goods or services and prevent confusion to the public as to the source of such goods or services. This means that a trademark protects the business or brand by preventing others to use identical or similar marks for identical or similar services, because consumers would be confused whether the goods or services come from the first user of the trademark or the secondary user of the mark. Protecting a business name or brand name provides valuable protection for a business when federally registered because federal registration allows the trademark owner to prevent others from using the same or a similar trademark in association with the same goods or services provided. This can lead to increased value in a business, increased profits, and increased reputation in the relevant industry.

How long will it take for a trademark to be approved?

If there are no deficiencies in a trademark application, the overall approval process may take three to four months for a trademark application to be approved. Oftentimes, the United States Patent and Trademark Office (USPTO) will issue a trademark applicant an Office Action requesting more information or identifying deficiencies in a trademark application. If a trademark applicant receives an Office Action from the USPTO, the applicant has 6 months to respond and attempt to cure any deficiencies. Overall, the trademark approval process may take months, or even up to one year depending on the trademark sought to be registered and any issues identified by the USPTO.

Are trademarks territorial?

Trademarks are territorial and must be filed in each country where protection is sought. A trademark applicant who files for federal registration in the United States will be granted protection in all fifty states. If a trademark application wishes to protect a trademark internationally, he or she may be able to do so under the Madrid System. The Madrid System provides a way for applicants to seek protection of a trademark simultaneously in more than one country. An owner of a trademark who is a member of the Madrid System may register the trademark in his or her home country and then seek further protection under the Madrid System, which would then protect the trademark in other participating countries.

How do I trademark a slogan?

To federally register a slogan as a trademark with the United States Patent and Trademark Office (USPTO), a trademark application must be submitted to the USPTO online and must include: (1) a completed application form; (2) a registration fee; (3) a drawing of the trademark sought to be registered; and (4) specimens of the mark in use if the trademark will be used in connection with goods or services in commerce. The slogan must be original and distinct and must not be a pre-existing federally registered trademark.

Should I use a trademark when selling?

It is strongly encouraged for businesses to protect their intellectual property assets. Trademarks are used to protect a business or brand’s image, especially in the sale of goods or services. A trademark can be a word, a symbol, or a name associated with a brand or product that distinguishes one business or brand from another. The primary purpose of a trademark is to identify the source of certain goods or services and prevent confusion to the public as to the source of such goods or services. This means that a trademark protects the business or brand by preventing others to use identical or similar marks for identical or similar services, because consumers would be confused whether the goods or services come from the first user of the trademark or the secondary user of the mark. Protecting a business name or brand name provides valuable protection for a business when federally registered because federal registration allows the trademark owner to prevent others from using the same or a similar trademark in association with the same goods or services provided. This can lead to increased value in a business, increased profits, and increased reputation in the relevant industry.

Why trademark a phrase?

Trademarks are used to protect a business or brand’s image. A trademark can be a word, a symbol, phrase, or name associated with a brand or product that distinguishes one business or brand from another. A registered trademark gives a trademark registrant the exclusive right to use the trademark in connection with the goods or services listed in the trademark registration. Federal registration of a trademark provides the holder with certain legal rights that can be used to enforce preventing others from using the same or similar trademark to identify the same goods or services. Trademark protection helps ensure a trademark holder’s legal rights are protected, and also allows a holder to take legal action against someone who later infringes upon the holder’s original trademark. This can lead to increased profits for a business, decreased likelihood of confusion to the public as to which company or business a good or service is associated with, and allows for a trademark holder to potentially recover more in monetary damages in the case of infringement.

FAQ: Trademarks

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