A trademark includes any word, name, symbol, or design, 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.
The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks. A service mark is any word, name, symbol, design, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the US Patent and Trademark Office (USPTO).
Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce. Specific types of trademarks include:
- Service marks identify and distinguish the source of a service rather than a product.
- Certification marks are any word, name, symbol, device, or any combination, used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
- Collective marks are trademarks or service marks used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark that indicates membership in a union, an association, or other organization.
You can establish common law rights in a trademark based on legitimate use of the trademark. However, owning a Federal trademark registration on the Principal Register provides several advantages, including the following:
- Constructive notice to the public of the registrant’s claim of ownership of the mark;
- A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
- 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; and
- The ability to file the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods.
Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the “circle R” federal registration symbol ® only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the Federal trademark registration.
Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future. What is “use in commerce”? For the purpose of obtaining Federal registration, “commerce” means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. “Use in commerce” must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark.
Generally, acceptable use is as follows:
- For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
- For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.
If you have already started using the mark in commerce, you may file based on that use. A “use” based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.
After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:
- the similarity of the marks; and
- the commercial relationship between the goods and/or services listed in the application.
To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.
If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.
Registering a Trademark Overseas
Federal registration is not valid outside the United States. 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 International Bureau of the World Property Intellectual Organization, through the USPTO. Additionally, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.
Term of federal registration
Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times. In general, the owner of a registration must periodically file:
- Affidavits of Continued Use or Excusable Nonuse; and
- Applications for Renewal.