WHAT IS A TRADEMARK?
A trademark is a word, name, symbol, logo, color, sound and/or smell which identifies the source or origin of a good or product in commerce.
A service mark is a word, name, symbol, logo, color, sound and/or smell which identifies the source or origin of a service in commerce.
THERE ARE FOUR BASIC REASONS TO REGISTER YOUR TRADEMARK
- The registered mark can be an asset,
- The registered mark can be licensed for additional income,
- The registered mark can be used as a marketing tool to obtain media interest, and
- The registered mark can be used to stop competitors from using a similar name, logo or slogan for similar or related goods and/or services.
U.S. FEDERAL TRADEMARKS
The United States Patent and Trademark Office (USPTO) is the only source for a federal trademark in the United States, which covers all 50 states and territories under United States. jurisdiction.
Federal trademarks are important to businesses which conduct commerce across state lines or outside the United States; in other words those which are engaged in interstate commerce.
You should file a State Trademark or Service Mark Application for those goods and services that you are only selling within a specific state jurisdiction; in other words, when you are only engaging in intrastate commerce. Generally you have to actually be using the mark in conjunction with the goods and services within the specific state jurisdiction.
Each state in the U.S., such as Texas, Florida or California, has a state trademark office which grants a state trademark within their jurisdiction.
These state trademarks are good for businesses which do not do business via the internet and do not have interstate business. Restaurants, car washes and dry cleaners typically prefer state trademarks over federal trademarks.
WHAT DO THE ™ AND ® SYMBOLS MEAN?
™ means "Trademark" and indicates that the owner is using the word or design as a trademark. It is commonly used prior to registration with the USPTO (Similarly "SM" denotes a service mark).
The "R" in a circle symbol (®) indicates that the trademark is registered in the United States with the United States Patent and Trademark Office.
WHO MAY FILE AN TRADEMARK APPLICATION?
Only the owner of the trademark may file an application for registration. An application filed by a person who is not the owner of the mark will be deemed void. Generally the person who uses or controls the use of the mark and controls the nature and quality of the goods to which it is affixed or the services for which it is used is the owner of the mark.
WHAT TYPE OF WORDS CAN BE TRADEMARKED?
Word marks that are inherently distinctive of the goods and services can be trademarked, because they function to uniquely identify the commercial source of origin of the goods sold and services rendered in the marketplace (ex. Kodak® for camera and film).
Words that are generic of the goods and/or services can not be trademarked. Words that are merely descriptive of the goods and/or services have lower trademark value.
Words that do not merely describe the goods or services can be trademarked. For example, a filing would be rejected for the mark "CHAIR" if the good to be protected under the mark is a chair. However, if the filing for the mark "CHAIR" was for a software program, that filing would probably not be rejected for being descriptive.
Please note there is an exception to this rule if the company has sales using a "descriptive" word as a trademark for more than six years. Then the trademark can become distinctive by showing the mark has acquired a secondary meaning.
WORDS THAT WILL NOT CAUSE 'LIKELIHOOD OF CONFUSION" WITH SOMEONE ELSE'S REGISTERED MARK CAN BE REGISTERED
If the company is in the camera business and it wants to file for the mark "KODAK QUICK CAMERAS" this will not succeed because the use of the name "KODAK" would cause confusion in the camera industry.
As another example, if the company wanted to use the word "STARMAN" for a software program and the mark "STARWOMAN" is registered for software programs, it would be denied on the basis of there being a likelihood of confusion with the "STARWOMAN" trademark.
WHAT IS A SPECIMEN AND IS IT NEEDED FOR FILING?
A specimen is a "real-world" example of how the mark is actually used on the goods or in the offer of services.
Labels, tags or containers for the goods are considered to be acceptable specimens of use for a trademark.
Federal trademarks can be filed without specimens as "Intent to Use" applications if the company has not actually used the mark within interstate commerce, but has a bona fide intention to do so. Interstate use is the sale or transfer of products or the rendering of services over state lines or national boundaries.
However, if the use of the mark has occurred in interstate commerce, that is, an interstate sale has occurred and money has changed hands, then a specimen exists and an "Actual Use" application can be filed which requires specimens.
COMMON GROUNDS FOR REFUSAL
The proposed mark does not function as a trademark.
Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.
The proposed mark consists of deceptive matter.
The proposed mark falsely suggests a connection with a person (living or dead), an institution, a belief or national symbols.
The proposed mark consists of a name, portrait or signature identifying a particular living individual, except by that individual's written consent.
The proposed mark consists of a flag or coat of arms, or other insignia of the United States or of any state or municipality, or of any foreign nation.
The proposed mark consists of a name, signature or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
The proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of an applicants goods or services.
The proposed mark is primarily merely a surname.
HOW LONG DOES IT TAKE FOR A MARK TO BE REGISTERED?
Generally an applicant will receive a filing receipt approximately six months after the filing. The filing receipt will include the serial number of the application. The federal government then generally examines the case and writes an "office action" which is a refusal within six to seven months from filing the application. A reply in writing is required within three months. However, the total time for an application to be processed may be anywhere from almost one year to several years, depending on the basis of the filing and the legal issues which may arise in the examination of the application.