What is a trademark or service mark?
How does a trademark differ from a copyright?
When can I use the trademark symbols?
What is the difference between a business name and a trademark or service mark?
Conducting a trademark search.
Can I do my own trademark search?
How to have a professional firm conduct a trademark search.
Is registration of my mark required?
What does the USPTO do?
How do I file a trademark application?
Disclaimer: All information re copyrights and trademarks on our website has been obtained from a combination of these sources:
1) The official website of the United States Patent & Trademark Office, http://www.uspto.gov.
2) The official website of the United States Copyright Office, Library of Congress, http://www.loc.gov/copyright.
3) Nolo Press - "Plain English Law Centers" at http://www.nolo.com.
The information included in our website is meant to give a quick overview, definition, and basic explanation only. Please go to the above sites if you need more in-depth information concerning copyrights or trademarks.
What is a trademark or service mark? (Top of Page)
A trademark is a distinctive word, phrase, logo, Internet domain name, graphic symbol, slogan or other device that is used to identify the source of a product and to distinguish a manufacturer's or merchant's products from others. Some examples are Nike sports apparel, Gatorade beverages and Microsoft software. In the trademark context, "distinctive" means unique enough to help customers recognize a particular product in the marketplace. A mark may either be inherently distinctive or may become distinctive over time because customers come to associate the mark with the product or service. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks. Trademarks are registered by the United States Patent & Trademark Office (USPTO).
How does a trademark differ from a copyright? (Top of Page)
Many people confuse copyrights and patents as there are similarities among these intellectual property protection although they serve different purposes. Copyright protects original works of expression, such as novels, fine and graphic arts, music, phonorecords, photography, software, video, cinema and choreography by preventing people from copying or commercially exploiting them without the copyright owner's permission. But the copyright laws specifically do not protect names, titles or short phrases. That's where trademark law comes in. Trademark protects distinctive words, phrases, logos, symbols, slogans and any other devices used to identify and distinguish products or services in the marketplace.
There are, however, areas where both trademark and copyright law may be used to protect different aspects of the same product. For example, copyright laws may protect the artistic aspects of a graphic or logo used by a business to identify its goods or services, while trademark may protect the graphic or logo from use by others in a confusing manner in the marketplace. Similarly, trademark laws are often used in conjunction with copyright laws to protect advertising copy. The trademark laws protect the product or service name and any slogans used in the advertising, while the copyright laws protect the additional creative written expression contained in the ad.
When can I use the trademark symbols TM, SM, or ® ? (Top of Page)
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 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.
What is the difference between a business name and a trademark or sevice mark? (Top of Page)
The name that a business uses to identify itself is called a "trade name." This is the name the business uses on its stock certificates, bank accounts, invoices and letterhead. When used to identify a business in this way -- as an entity for non-marketing purposes -- the business name is given some protection under state and local corporate and fictitious business name registration laws, but it is not considered a trademark or entitled to protection under trademark laws.
If, however, a business uses its name to identify a product or service produced by the business, the name will then be considered a trademark or service mark and be entitled to protection if it is distinctive enough. For instance, Apple Computer Corporation uses the trade name Apple as a trademark on its line of computer products.
Although trade names by themselves are not considered trademarks for purposes of legal protection, they may still be protected under federal and state unfair competition laws against a confusing use by a competing business.
Conducting a trademark search. (Top of Page)
If you want to find out whether you are legally permitted to use the name you have chosen for your products and services, you must conduct a trademark search. The consequences of failing to conduct a reasonably thorough trademark search may be severe, depending on how widely you intend to use your mark and how much it would cost you to change it if a conflict later develops. If the mark you want to use has been federally registered by someone else, a court will presume that you knew about the registration -- even if you did not. You will be precluded from using the mark in any context where customers might become confused. And if you do use the mark improperly, you will be cast in the role of a "willful infringer." Willful infringers can be held liable for large damages and payment of the registered owner's attorney fees; they can also be forced to stop using the mark altogether.
Can I do my own trademark search? (Top of Page)
Yes. You can do your own search for free on the Internet by visiting the U.S. Patent and Trademark Office's website at http://www.uspto.gov. Or you can visit one of the Patent and Trademark Depository Libraries, available in every state. These libraries offer a combination of hardcover directories of federally registered marks and an online database of both registered marks and marks for which a registration application is pending. Most of these libraries also have step-by-step instructions for searching registered and pending marks.
In addition to searching for registered or pending marks, you may also use product guides and other materials available in these libraries to search for possibly conflicting marks that haven't been registered. This can be important because an existing mark, even if it's unregistered, would preclude you from:
- registering the same or confusingly similar mark in your own name, and
- using the mark in any part of the country or commercial transaction where customers might be confused
To find the Patent and Trademark Depository Library nearest you, see PTO's list at http://www.uspto.gov/go/ptdl/.
How to have a professional firm conduct a trademark search. (Top of Page)
Many people do prefer to pay a professional search firm to handle a trademark search. This can make sense if your financial plans justify an initial outlay of several hundred dollars, the minimum cost for a thorough professional search for both registered and unregistered marks. Depending on the search firm, you may also get a legal opinion as to whether your proposed mark is legally safe to use in light of existing registered and unregistered marks. Obtaining a legal opinion may provide important protection down the road if someone later sues you for using the mark.
The best place to start is the Sunnyvale Center for Invention, Innovation and Ideas, on the Web at http://www.sci3.com. This Patent and Trademark Depository Library conducts full bore trademark searches at very competitive prices.
Professional search firms can be found in the Yellow Pages of the nearest good-sized city under Trademark Consultants or Information Brokers. Or, you can consult a legal journal or magazine for your area. In these journals, you'll find the ads of a number of trademark search firms -- the ads are aimed at lawyers, but many will also do searches for individuals and businesses.
For direct hit searches -- finding out whether your proposed mark is already registered or pending in the Patent and Trademark Office -- expect to pay between $25 and $50 per mark searched. For more complete searches of registered and pending marks -- finding out whether there are any similar marks that consumers might confuse with yours -- expect to pay between $75 and $200 per mark searched. For a complete search of registered and unregistered marks, expect to pay between $250 and $500.
Is registration of my mark required? (Top of Page)
According to the United States Patent and Trademark Office . . .No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages:
- 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 the U.S. Customs Service to prevent importation of infringing foreign goods.
What does the USPTO do? (Top of Page)
The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. They do not decide whether you have the right to use a mark (which differs from the right to register). Even without a registration, you may still use any mark adopted to identify the source of your goods and/or services. Once a registration issues, it is up to the owner of a mark to enforce its rights in the mark based on ownership of a federal registration.
How do I file a trademark application? (Top of Page)
The United States Patent and Trademark Office (USPTO) greatly prefers that you file electronically using the Trademark Electronic Application System (TEAS), which is available at http://www.uspto.gov/teas/index.html. You can file your application directly over the Internet. If you do not have Internet access, you can access TEAS at any Patent and Trademark Depository Library (PTDL) throughout the United States. Many public libraries also provide Internet access. Otherwise, you may either mail or hand deliver a paper application to the USPTO. You can call the USPTO's automated telephone line, at (800) 786-9199 to obtain a printed form. You may NOT submit an application by facsimile. USPTO's mailing address to file a new application is: Commissioner for Trademarks, Box-New App-Fee, 2900 Crystal Drive, Arlington, VA 22202-3513.
Expect to pay a fee of at least $325 (per mark) for your Application for Registration.
An application must include the following elements before the USPTO will accept it:
- the name of the applicant;
- a name and address for correspondence;
- a clear drawing of the mark;
- a listing of the goods or services; and
- the filing fee for at least one class of goods or services.
If your application does not meet these requirements, the USPTO will return the application papers and refund any fees submitted.
If you file a paper application, and it meets the minimum filing requirements, the USPTO will assign a serial number and send a filing receipt. You should review this receipt for accuracy, and notify the USPTO of any errors, following the directions on the receipt.
An electronically-filed application must include the same information to receive a filing date. However, at the time of filing, an e-mail summary, including a serial number, is sent. No paper filing receipt is generated. If through later review the USPTO determines that the application did not include the required information, we will cancel the serial number and filing date, return the application, and refund the filing fee.
If you transmit your application over the Internet, the filing date is the date the transmission reaches the USPTO server. If you mail your application using "Express Mail," the filing date is the date of deposit of the application with the U.S. Postal Service. Otherwise, the filing date of an application is the date the USPTO receives the application.
NOTE: Receiving a filing date does not mean that you have satisfied ALL registration requirements. To obtain a registration, you must comply with all application requirements, and overcome any refusal(s) issued by the examining attorney during examination.
Although only the minimum filing requirements must appear in your initial application to receive a filing date, submitting all available information requested in the application form will help reduce delays in processing your application.
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