The following are questions that trademark client frequently ask. They are answered here to refresh the memories of current clients and to help make interested readers more informed. If you need more information, please feel free to contact Tom Galvani at 602-281-6481 to ask a question or set up a free, initial consultation.
A trademark is any word, name, symbol, or device that identifies and distinguishes the goods or services of one company from the goods or services of another, and indicates the source of the goods or services. A trademark is essentially a brand name – it signals in the consumer’s mind that the product or service came from the company.
A trademark protects the goodwill associated with a company, its brand, and its products or services. Think: a company name or logo. A copyright is an artistic work that has originality and creativity. Think: a book, screenplay, or painting. A patent is a useful machine, process, or article of manufacture. Think: an invention.
A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
A certification trademark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’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. Read more about certification marks.
A collective mark is a trademark or service mark 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 which indicates membership in a union, an association, or other organization.
A trade name, in Arizona, is the name of a company. Sometimes a company will be registered with the state under one name but presents itself to the public with another name, its trade name. For example, if I organized a company and filed papers with the Secretary of State for “Tom’s Bicycle Sales and Repair, LLC” but the sign on my store said “Tom’s Bikes,” then “Tom’s Bikes” is my trade name. A trade name is not a trademark and does not provide the same protection.
Almost anything can serve as a trademark. As long as the thing can operate to identify the source of the goods and distinguish that source from others, it operates as a trademark. Of course, to receive federal protection as a registered trademark, it has to satisfy a number of other statutory requirements, such as being used in interstate commerce and being sufficiently distinctive.
Growing companies have to operate under very strict budgets and money can often be tight, so they sometimes opt not to protect the brand they are building. However, one of the most important ingredients for the success of a young business is marketing and name recognition. When customers forget the name of a company, they don’t visit. And if other companies use your name, your customers may accidentally go to your competitors. They might come back, but they might not care enough to switch back – they may be happy enough with the new “you.” Trademark registration protects your name and brand, preventing others from stealing your customers, and giving you the freedom to expand your business.
Further, growing companies, especially in the tech sector, often rely on early-round funding. The ability to attract and secure funding depends on many things, one of the most important which is the company’s intellectual property. This is often in the form of patents, but trademarks are a cheap and easy way to turn goodwill and customer loyalty into serious assets. Trademarks can represent significant value in a buyer’s offer to purchase your company.
No, but federal registration has several advantages. Only with federal registration of a trademark can you use the ® symbol. Further, the registration provides notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. You can also sue in federal court with a federally registered trademark, an option not available to a state or common-law trademark.
With federal registration of a trademark can you use the ® symbol. The registration provides notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. You can also sue in federal court with a federally registered trademark, an option not available to a state or common-law trademark. With a state or common-law trademark, you have to rely on a patchwork of state laws to enforce your mark, and your rights in the mark only extend to as far as you geographically use the mark.
Registering a trademark requires filing a federal registration application with the United States Patent and Trademark Office (USPTO). Sometimes, the application is all that is needed. More often than not, however, more work is required. That is because once the application is filed, it is examined by a Trademark Examiner, whose job it is to make sure the application complies with statutory requirements and doesn’t trample on rights of nay registered mark. The Trademark Examiner can reject the application for a number of reasons, the most frequent of which is that the applied-for mark is too similar to a trademark that is already registered. If a Trademark Examiner has issues with your application, a response is necessary or the application will be abandoned. When the issues are addressed correctly, the application is approved for publication, and published for 30 days in an official publication. During those 30 days, a member of the public can object to registration of the mark by filing a trademark opposition. If nobody opposes the mark, it will be registered. Read more about the process of registering a trademark.
The United States is unique in that it requires that a trademark be used in interstate commerce before it can be registered federally. “Interstate commerce” means, roughly, that your sales have to affect the US economy, not just your local state’s economy. You do not have to sell products in all 50 states, but generally, you do need to sell across state lines. Your sales also cannot be trivial, token, or made-up – you need to sell to real customers through arms-length transactions. Selling to mom or dad or your best friend won’t be enough to establish legitimate interstate commerce.
Unfortunately, there are no bright line rules for what volume of sales qualifies. In some cases, the sale of a single product across states lines will be sufficient to register a trademark. In other cases, it may take dozens or hundreds of sales. Token use – use of a trademark merely to reserve the name – never qualifies. Selling to your family or best friend would be token use. If the sales are ordinary for the type of product you are selling, if they are about the same volume and same frequency as other sellers in your industry, they will probably be sufficient.
No, although it may be desirable to hire a trademark attorney. Trademark applicants must comply with all substantive and procedural requirements of the Trademark Act and Trademark Rules of Practice even if he or she is not represented by an attorney. Further, drafting a trademark application improperly can be fatal to the application – if the goods or services are listed incorrectly or the mark is written inaccurately, the application generally has to be filed anew, and the fees on the first application cannot be refunded by the United States Patent and Trademark Office.
It is possible for two companies to use the same trademark. If the companies make or sell very different products or services, there is no conflict. Trouble arises when two companies use similar names on similar goods. When that happens, it can be difficult for the public to tell one company from the other, or to tell one company’s product from the other’s. When the companies sell very different things, it is easy for the consumer to distinguish the two.
Trademark rights can, in theory, last forever. They last as long as the trademark continues to be used with the goods. The Trademark Office does require periodic maintenance fees and filings to keep the registration alive. As long as the trademark is used properly and in accordance with its registration, and the maintenance fees are paid, the registration will continue.
You have to maintain and patrol your trademark. This includes paying maintenance fees and making periodic filings with the United States Patent and Trademark Office asserting you are still using your mark. In addition, you should patrol for inappropriate or unauthorized uses of your mark. If your mark is used without your permission, it can be devalued, to the point where it has loses its rights. This is bad news if you ever have to sue someone to stop using your mark. They can raise as a defense to your lawsuit that you didn’t properly patrol its use and allowed others to freely infringe. Therefore, patrolling for infringing uses through services like a trademark watch is important. Another important aspect of defending your trademark assets is watching for potential marketplace infringement. Read more about proper trademark maintenance.
No. Use of the symbols “TM” or “SM” (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued. The TM or SM symbols also provide an important notice function, letting competitors or would-be copy cats know that you take your trademark rights seriously.
The ® is the federal registration symbol, and thus may be used only once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol cannot be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. Read more about the difference between the TM and ® symbols.
Yes, a trademark search is always recommended, though never required. The United States Patent and Trademark Office conducts a trademark search when the application is filed, and any registered trademarks uncovered in that search can be cited against your application. Thus, the goal of a pre-filing trademark search is to find those marks first. By knowing about those marks, you can change your mark and avoid a rejection. A search may also reveal that there are many marks in your field, in which case you would have to decide whether it is prudent to file a trademark application or not.
A drawing is a representation of the mark applicant seeks to register. In an application based on actual use, the drawing must show the mark as it is actually used, i.e., as shown by the trademark specimen. In the case of an application based on a bona fide intention to use, the drawing must show the mark as the applicant intends to use it. A specimen, on the other hand is a real-world example of how the mark is actually used on the goods or in the offer of services. Specimens are often times labels, tabs, containers, packaging, or brochures or websites. Specimens are required in applications based on actual use in commerce and must be filed with the Amendment to Allege Use, or the Statement of Use, in applications based on a bona fide intention to use the mark in commerce,
The trademark registration application process begins by filing a trademark application with the United States Patent and Trademark Office (USPTO). The application contains a description of the goods or services with which the mark is used, contains owner information, and contains a drawing of the mark. In-use applications also contain specimens showing how the mark is used, while intent-to-use applications do not. Sometimes, the application is all that is needed. More often than not, however, more work is required. That is because once the application is filed, it is examined by a Trademark Examiner, whose job it is to make sure the application complies with statutory requirements and doesn’t trample on rights of nay registered mark. The Trademark Examiner can reject the application for a number of reasons, the most frequent of which is that the applied-for mark is too similar to a trademark that is already registered. If a Trademark Examiner has issues with your application, a response is necessary or the application will be abandoned. When the issues are addressed correctly, the application is approved for publication, and published for 30 days in an official publication. During those 30 days, a member of the public can object to registration of the mark by filing a trademark opposition. If nobody opposes the mark, it will be registered.
Yes, you can file a trademark application even if you have not used your trademark yet. There are two types of trademark applications: in-use trademark applications and intent-to-use trademark applications. I sometimes call these latter applications “pre-use trademark applications.” You can file one as long as you have a bona fide intent to use the trademark on the goods or services identified in the application you file. That means you need to have some real plans, taken some concrete steps, or have done some other legitimate business preparation to launch the trademark.
A trademark Office Action is a formal letter from the Trademark Office to you, the applicant. Usually, it raises issues with the trademark application and refuses registration on the basis of some or all of those issues. If you do not respond to an Office Action, or if you are not successful when you do respond to the Office Action, you application can become abandoned.
Trademark Office Actions can raise all sorts of issues that have to be addressed. Often, they will note that the trademark is descriptive or presents a likelihood of confusion with another trademark. Sometimes, they will raises technical concerns with the way the application was written, or the way that the trademark was described, or how the goods or services were identified. Sometimes, the Trademark Examiner will request more information about the trademark, the goods/services, or the relevant industry and its practices. Regardless of the issues in the Office Action, you must respond to each and every one if you don’t want the trademark application to go abandoned.
Nope! The US Patent and Trademark Office issues refunds in very few circumstances. Filing a bad trademark application is not one of them. Usually, if you want a refund, you have to request it. However, the Trademark Office will not refund the filing fees you paid when you filed your trademark application. You are essentially paying the Office to do the work of examining your application. The Examiner will do that work and so will “earn” that filing fee, but may still not register your trademark; not all trademarks can be registered. Unfortunately, filing an application is a risk (one that can be mitigated) and you will forfeit the government filing fees if you file an application that cannot be registered.
International trademark protection can be sought in a few manners. Trademark applications can be filed directly with the trademark office of each country, through associated foreign counsel. On the other hand, a central international application can be filed through the Madrid Protocol, allowing the applicant designate that its US trademark be used as a basis in a many countries around the world.
The Madrid Protocol is a central trademark system established and operated by the World Intellectual Property Organization in Geneva, Switzerland. It can be used to file an international trademark application which is applied to designated countries. A Madrid Protocol filing centralizes much of the paperwork through the WIPO office, so that national trademark offices around the world communicate to the applicant through WIPO. Read more about international trademark registration.
Yes. A registered mark, or a mark for which an application to register has been filed is assignable. It is recommended that for any trademark that is assigned, there be a contemporaneous recording of the assignment with the Trademark Office. Recordation of the sale carries important ramifications that preserves the integrity of the mark for the buyer. Trademarks must be sold along with the goodwill they represent – they cannot be a “naked sale” of a trademark alone. Trademarks should be transferred formally when one business acquires another, when one company takes over a product line for another, when a trademark owner dies, or anytime a new party has taken over the business of an old trademark owner. Read more about trademark assignments.
It is important to maintain the strength of your trademark. One of way of doing this is by making sure others don’t use your trademark without your permission or in ways that exceed your authorization. A competitor or infringer can be persuaded to stop using your trademark without resorting to aggressive legal tactics, and amicable solutions can be worked out. However it is done, it is important that the quality of a trademark is preserved, otherwise it loses its power and value.
If you are selecting a trademark, please take a look at this article on how to pick a great trademark. You can also view the United States Patent and Trademark Office’s website, though it is dense. If you still have questions, you can always contact Arizona trademark attorney Tom Galvani at 602.281.6481. That is Tom’s direct line, and he will answer or call you back personally.