Trademark Law
WHAT IS A TRADEMARK?
Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce.
Trademarks are registered with the United States Patent and Trademark Office (USPTO).
There are times when you may desire a combination of copyright, patent, and trademark protection for your work. You should consult an attorney to determine what forms of intellectual property protection are best suited to your needs.
WHAT IS A SERVICE MARK?
A service mark is any word, name, symbol, or any combination, must be used or intended to be used in commerce, must identify and distinguish the services from the services provided by others, must indicate the source of the services.
WHY SHOULD I REGISTER?
There are some specific benefits of having a federally registered trademark:
- It provides nationwide notice of the trademark owner’s claim.
- Evidence that you have ownership of the trademark in a Court of Law.
- You use your registration as a basis for obtaining registration in foreign countries.
- Registration may be filed with U.S. Customs and Border Protection to prevent importation of infringing foreign goods.
Difference between a trademark filing company and retaining an attorney?
Frequently asked Questions
Q: There are online companies, why do I need an attorney to register my trademark?
Only licensed attorneys may represent you before the U.S. Patent and Trademark Office (USPTO). The filing of a trademark application is considered opening a legal proceeding. The USPTO Trademark Division consists of attorneys to protect the interests of the government (the people) by evaluating and deciding registrations before removing them from the public use without consent of the owner.
Should you be required to respond to a correspondence or modify an application, you will either represent yourself pro se or be represented by an attorney.
Q: What is the difference between using the ™ and ® symbols?
™ Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. Think of it like a bookmark, it notifies others that you are using the mark, but also you have not officially registered the mark with the USPTO.
® is the U.S. federal registration symbol. You mark must be actually registered in the USPTO to use this symbol. Even when an application is pending, the registration symbol ® may not be used until the mark is registered.
Q: Do I have to renew my trademark?
You must renew your registration by the following deadlines:
- First Filing Deadline: File a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date.
If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period from the registration date, unless cancelled by an order of the Commissioner for Trademark or a federal court
- Subsequent Filing Deadline: File a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter.
What is trademark infringement?
Q: What if someone is using my trademark without my permission?
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. You should consult with an attorney to determine your rights and how to resolve the potential infringement.
Q: I received a cease and desist letter. Now what?
A cease and desist letter is sent to a person or company that a trademark owner believes is infringing on their registered mark. You may need to respond to this letter or be subject to fines and/or court proceedings. To determine your best strategy to this matter, consult an attorney to discuss your situation.