a word, name, symbol, or design, or any combination thereof, which identifies and distinguishes the source of the goods or services of one party from those of others.
A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.
Normally, a mark for goods appears on the product or on its packaging, while a servicemark appears in advertising for the services.
California state law defines a trademark in practically the same language....
"Any word, name, symbol, or device, or any combination thereof adopted and used by a person to identify goods made or sold by him and to distinguish them from goods made or sold by others."
How do I establish trademark rights?
To establish the rights of ownership in a trademark or service mark, a person may either
(1) file an "intent to use" application with the Patent and Trademark Office (PTO), or
(2) actually use the mark in commerce.
Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can bestow benefits beyond those you get by merely using a mark. For example, the owner of a federal registration for a mark is entitled to use the mark nationwide.
What are trademark rights?
The right to register and the right to use.
Generally, the first party who either uses a mark in commerce or files an application with the PTO has the ultimate right to register that mark.
The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration.
Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding.
Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the 5th and 6th year after the date of initial registration, the registrant must file an affidavit to keep the registration alive, otherwise it will be canceled.
What are the types of applications?
1. A "use" application, for a person who has already commenced using a mark in commerce.
2. An "intent to use" application, for an applicant who has not yet used the mark but has a bona fide intention to use the mark in commerce. The applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark.
3. An application based on registration in another country.
Who may file an application?
The application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark.
What about foreign applicants?
Applicants not living in the U.S. must designate in writing the name and address of a domestic representative who will receive all communications from the PTO.
Must an applicant conduct a search for conflicting marks before applying to the PTO?
No, but most people find it useful to so because the application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.
To determine whether there is a conflict, the PTO determines whether there would be likelihood of confusion among consumers.
The factors to consider are the similarity of the marks and the commercial relationship between the goods and services identified by the marks.
To find a conflict, the marks need not be identical, and the goods and services do not have to be the same.
There are a number of ways to conduct a search. The simplest is just by doing a simple Google search to see what is out there with a similar name. The next easiest is going to the PTO website and performing a search of all federally registered trademarks.
Finally, you can pay money and hire a professional search company, such as Thomson & Thomson, to do an extremely thorough search of federal, state and internet records for similar marks.
What do trademark symbols mean?
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. However, the claim may or may not be valid.
The registration symbol, (R), may only be used when the mark is registered with the PTO. It is improper to use this symbol at any point before the registration issues.
What is the Registration Process?
When the PTO receives an application which meets the minimal filing requirements, the PTO assigns it a serial number and sends a "receipt of filing" after about 2 to 3 months.
Then an examining attorney at the PTO reviews the application and may send correspondence to the applicant listing grounds for refusal or requesting corrections to the application. The applicant has six months to respond to the PTO examining attorney's letter.
If the application is approved, the applicant will receive a notice of publication in the Official Gazette. The Official Gazette is a weekly publication of the PTO listing all approved trademark applications.
Anyone who wishes to oppose the trademark has 30 days from the date of publication to file an opposition to the registration. An opposition is similar to formal proceedings in federal court but is held before the Trademark Trial and Appeal Board (TTAB).
If there is no opposition and the application was based upon the actual use of the mark in commerce prior to approval for publication , the PTO will register the mark and issue a registration certificate.
If there is no opposition and the application was based upon the bona fide intention to use of the mark in commerce, the PTO will issue a notice of allowance. The applicant then must submit a statement of use within 6 months of the notice of allowance (or request a 6 month extension). If the statement of use is filed and approved, the PTO will then issue the registration certificate.
- by Kenneth D. Celli, Esq.