This legal guide will help you understand how important a trademark can be in your business — what’s a trademark, what rights does it give me, and how do I use it to protect my brand?
WHAT IS A TRADEMARK?
A trademark or service mark can be any distinctive word or short phrase, or an image, that shows that an individual, company, or brand is the source of products or services.
HOW IS A COPYRIGHT DIFFERENT FROM A TRADEMARK?
Trademarks protect artwork or short groups of words that identify companies or brands, such as the Nike swoosh or “Just Do It”, while copyrights protect creative works of art like books or movies. There will be some overlap – for example, Mickey Mouse is a copyrighted cartoon character, and it’s also a trademark that identifies the Disney brand.
WHO OWNS A TRADEMARK?
A company or individual that first actually uses a mark in connection with its goods or services, in the geographic territory in which it is actually used, automatically owns the common law trademark for those goods and services in that territory, even if it is not registered.
HOW CAN I FIND WHETHER A TRADEMARK IS ALREADY BEING USED?
You can start by searching using a popular search engine like Google – but don’t stop at the first page of results! You should also search the U.S. Patent and Trademark Office’s database (for free), at http://tess2.uspto.gov. It’s a good idea to consult with an experienced trademark attorney to perform a more thorough search and help you evaluate the search results before investing in developing a new company name, logo, website, or product.
WHAT RIGHTS DOES A TRADEMARK GIVE THE OWNER?
If you own a common law trademark, you may be able to prevent a company that starts using the mark later from using it in connection with similar goods and services in the same geographic area, and from registering it with the U.S. Patent and Trademark Office. The idea is to prevent another company from confusing your customers.
HOW DO I TRADEMARK MY LOGO, SLOGAN, OR BRAND NAME?
Under current U.S. trademark law, you own a common law trademark if you are the first person to use a logo, slogan, or brand name in connection with the sale of particular goods or services, within the region where you’re actually marketing those goods or services.
HOW LONG DOES A TRADEMARK REGISTRATION LAST?
The initial registration period lasts 10 years, and the registration can then be renewed for 10 years at a time.
DO I HAVE TO DO ANYTHING TO KEEP MY TRADEMARK REGISTRATION ALIVE?
Yes, you must file a declaration of use (showing you’re still actually using the trademark) by the end of the 6th year after registration to be protected through the end of the first ten-year registration period. The next declaration of use is due before the end of the 10th year after registration. If these statements are not filed, the registration can be canceled.
CAN I, AND DO I HAVE TO, USE THE “TM” OR “®” SYMBOLS?
If you are the owner of a trade or service mark, you may (but don’t have to!) use the “TM” (trademark) or “SM” (service mark) symbols. It’s a good idea to use these symbols since they put others on notice that you intend to protect your trademark rights.
You can only use the federal “®” symbol if the U.S. Patent and Trademark Office actually registers your mark, only on the goods and services identified in your application, and only while your registration is active. You may not use the “®” symbol while your application is pending, on unrelated goods or services, and not if an application is denied or it expires because you don’t renew it. There’s no rule that you have to use the “®” symbol (but again, it’s a good idea), or on where it must appear, but most businesses place it in the upper right corner of the mark.
WHY SHOULD I REGISTER MY MARK WITH THE U.S. PATENT & TRADEMARK OFFICE?
Federal trademark registration is not required for your work to be protected, but owning a federal trademark registration on the Principal Register gives you meaningful benefits:
- registration makes your brand more valuable for licensing it to others who want to use it;
- if you find a copycat using your mark, you can threaten to sue in federal court, which makes your cease and desist letter much more convincing to an infringer;
- you can sue someone for using your mark without your permission (“trademark infringement”) in federal court in the U.S. and potentially recover higher damages and your attorney’s fees;
- public notice to others of your ownership of the mark;
- a legal presumption that you own the mark and have the exclusive right to use it nationwide in connection with the goods or services listed in the registration;
- the ability to use the U.S. registration as a basis to obtain registration in foreign countries;
- you may record your U.S. trademark registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods; and
- the mark (and a notation that you are the owner) will be listed in the USPTO’s online databases, so others will find it when they search
HOW DO I REGISTER MY MARK WITH THE U.S. PATENT & TRADEMARK OFFICE?
You can register most works on the U.S. Patent and Trademark Office website, via http://www.uspto.gov. The filing fee is currently $225 for most applications, to register in a single class, or category, of goods (products) or services.
HELP! I DON’T UNDERSTAND HOW TO FILL OUT THE TRADEMARK REGISTRATION APPLICATION.
You’re not the only one who feels this way: the trademark registration form is long, complicated, and difficult to fill out correctly. And those mistakes could be very expensive later, requiring you to hire an attorney to respond to an “office action” from the USPTO examining attorney, preventing your mark from being registered at all, or limiting the scope of your trademark if it does get registered.
We help businesses apply to register their trademarks properly from the start and make sure you are in compliance with all trademark laws and regulations, for one predictable flat fee.
Contact us about how we can help you make more money for your business by protecting your trademarks.
*Legal Road Map Sessions, Q&A calls, Individual Legal Projects, and Retainer Services are only available to businesses seeking advice on U.S. intellectual property issues; businesses seeking advice on online business, technology, and e-commerce issues; and businesses located or registered in Tennessee seeking advice on local business law matters. Autumn Witt Boyd is licensed to practice law in Tennessee and other attorneys who work with our firm may be licensed in other states.
Our firm does not work on any patent law matters.
Disclosure: Our clients did not receive compensation for sharing their experiences working with Autumn, and do not receive any compensation for referring new clients (this is prohibited by Tennessee ethics rules). These testimonials or endorsements are not a guarantee, warranty, or prediction regarding the outcome of your legal matter. We cannot guarantee results; past results do not guarantee future results.
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