WHAT IS A TRADEMARK AND A SERVICE MARK?
A trademark is any word, phrase, symbol, design, and/or element of design that identifies your brand and differentiates your goods from somebody else’s.
A service mark is any word, phrase, symbol, design, and/or element of design that identifies your brand and differentiates your services from somebody else’s.
Some examples include:
- Your business name;
Your own name (if YOU are your brand – think “Beyoncé”);
Any other combination of words or short phrases that are synonymous with your brand; and
Certain other unique brand elements (a.k.a. “trade dress” – think: patterns, color schemes, scents, sounds, product packaging, etc.).
I INCORPORATED MY BUSINESS NAME / BOUGHT THE DOMAIN / REGISTERED THE SOCIAL MEDIA NAME - DO I OWN THE TRADEMARK NOW?
Maybe, maybe not.
The first person or business that actually uses a mark (1) in a specific geographic area; and (2) in connection with specific goods or services, (the “senior user”) automatically has common law trademark rights in that mark.
Common law trademark rights are, however, very limited. You must continue to use that mark in order to have the common law trademark and your rights are restricted to the specific geographic area where the mark is being used.
Keep in mind, operating in the online space and offering your goods and services to consumers nationally IS NOT enough to establish a nation-wide common law trademark.
The only way to ensure that your mark is protected throughout the United States is to register your trademark with the USPTO.
WHAT IS THE DIFFERENCE BETWEEN THE TM, SM, AND ® MARK?
The “TM” (trademark) and “SM” (service mark) symbols are used to put the public on notice that you are the rightful trademark owner and that you intend to enforce your trademark rights. The “TM” and “SM” symbols are used before a trademark is registered with the USPTO, or while it is in the process of being registered. They are also used on marks that cannot be registered.
The ® symbol serves the same purpose as the “TM” and “SM” symbols but, may only be used for trademarks that are registered with the USPTO.
WHAT IS THE E.A.R. METHOD OF TRADEMARK REGISTRATION?
The E.A.R. Method is our firm’s unique approach to trademark registration. Much has been said about the benefits of trademark registration and we encourage our clients to take advantage of those benefits.
Trademark registration takes time (anywhere from 6 months to 3 years) and costs money (albeit, less than you probably think), so before you invest that time and money you need to be certain of two things:
(1) That you should register this trademark; and
(2) That you can register this trademark.
The E.A.R. Method (which stands for “Evaluate” “Analyze” “Register”) helps you evaluate and analyze your brand assets before registering, so that you only spend time and money registering the marks that you and be registering.
IS A TRADEMARK SEARCH LEGALLY REQUIRED BEFORE I REGISTER MY TRADEMARK?
No, it is not. But we highly recommend that a thorough trademark search is conducted before you proceed to register your trademark because you don’t want to spend the time and money trying to register a mark that can’t or shouldn’t be registered.
In fact, we recommend that our clients invest in a thorough trademark search when they first start their businesses, even if they have no plans to register their trademark yet.
This is just to make sure that their use is not violating somebody else’s trademark rights. Imagine pouring so much time, effort, and money into building a brand, only to be sued for trademark infringement, and on top of that, having to deal with the added cost of re-branding. Most online businesses cannot survive something like that.
CAN I CONDUCT A TRADEMARK SEARCH MYSELF?
You most certainly can. You can check various sources to see if your name, logo, slogan, etc. is already in use, including:
The USPTO’s Trademark database, using the Trademark Electronic Search System (TESS);
Social media; and
State corporate records.
That said, a DIY trademark search will NEVER be a replacement for a professional Comprehensive Trademark search.
This is because your trademark doesn’t have to be identical to another mark to be denied registration (or be infringing), it only has to be “confusingly similar”.
When you search the USPTO database, it will only give you results for your exact search, so if, for example, you search for "Disnee" or "Starbuckss" or "Gogle", you will not get any results and think you might be in the clear. But, attempting to register any of these marks would be a complete waste of your time and money, and could get you into some legal hot water.
It will also be almost impossible for you to discover many potentially existing common law trademarks and state trademarks. You would have to search every state's corporate records and trademark records individually.
While the USPTO does not consider common law trademarks or state trademarks when determining registrability of a mark, a these trademarks may be a source of conflict leading to what could be costly litigation.
We hire an independent search company that uses a proprietary algorithm to comb through various databases and millions of data points and provides us with a Comprehensive Trademark Search Report.
This Report, which is anywhere from a couple of hundred pages to several thousand pages long, includes both identical AND confusingly similar:
Federal trademarks (both registered and in the process of registration);
State trademarks; and
Common law trademarks that could exist based on:
Registered businesses or corporations;
Web searches (including images); and
Social media searches.
We then review this Report and flag any trademarks which we believe to be problematic (or may be a basis for registration denial). Our legal analysis and opinion on the risks of registration (if any) is then presented to you in an Opinion Letter.
Unless you have extensive prior trademark experience, the Comprehensive Trademark Search Report and our Opinion Letter is the only way you can make a truly informed decision about whether or not to proceed with registration.
It bears noting, however, that the Report and Opinion Letter are not foolproof. 99% of the time our legal analysis is correct, but the trademark application process is just that – an application process, and the Examining Attorney at the USPTO can still refuse your registration.
DO I NEED TO REGISTER MY TRADEMARK WITH THE USPTO?
No. Under the US Trademark law, you own a common law trademark in your brand assets just by using them. However, there are limits to what you can and can’t do with a common law trademark.
To ensure that these valuable brand assets are completely protected and working to your advantage, they should be registered with the US Patent and Trademark Office (USPTO).
WHAT BENEFITS AND PROTECTION DOES USPTO REGISTRATION PROVIDE?
The benefits of registering your mark with the USPTO cannot be overstated.
A registered trademark pre-emptively keeps your competitors and infringers at bay because:
Your mark is entered into the USPTO database, where everyone can find it and be put on notice that you are the owner of the mark.
Your right to use the ® mark also puts the public on notice of your registration.
The USPTO examiners may block identical or similar marks from being registered.
You can notify US Customs and Border Patrol of your registration, and they will keep an eye out for goods that infringe on your mark that are imported into the US from overseas.
A registered trademark boosts your profits and brand value because it:
Provides the basis to obtain a trademark in other foreign countries (even if you’re not in those countries yet), which makes global expansion that much easier.
Allows you to license your brand assets to other businesses or individuals who may want to use them (and pay you for it!).
Gives you (and nobody else!) the exclusive, nationwide right to use the mark (in connection with specific goods or services), which limits customer confusion and brand dilution.
A registered trademark makes enforcing your trademark rights cheaper and easier because:
It creates a legal presumption that you are the owner of the mark, that the mark is valid, and that you can enforce your rights, which could offer a big advantage in court.
It automatically creates a basis for a federal trademark infringement lawsuit in federal court, which potentially provides for significantly higher monetary damages and reimbursement of litigation fees.
If you’ve had a registered trademark for five years, your mark could become “incontestable”, which would make it much more difficult for someone to challenge the validity of your registration.
CAN I REGISTER MY TRADEMARK MYSELF?
You sure can. A trademark is registered by paying the appropriate fees and filing an application with the USPTO.
There are also countless DIY legal websites that claim to let you register your trademark at bargain-basement prices.
A lot has been said about the perils of using these websites, but we’re not here to dissuade you from taking this on yourself. We’re here to give you the facts.
The truth is, the trademark application process is much more nuanced than just filling out an application.
The application process is a LEGAL process, which is often complicated and requires:
- Knowledge of the law;
- Knowledge of the USPTO;
- Knowledge of the application process;
- Attention to detail;
- Thoroughness; and
- The ability to follow strict guidelines and deadlines.
So, you can of course attempt to do this on your own, but you’re far more likely to have your trademark accepted for registration if you use an experienced attorney than if you tried to do it yourself.
DO I NEED TO BE USING MY MARK IN BUSINESS BEFORE I REGISTER IT?
No, you do not.
Though a trademark is established through use of the mark in commerce, one other particular advantage of registration with the USPTO is the particular ability to call "dibs" on a mark that you have a legitimate intent to use in the future.
By filing on an "intent to use" basis, you can start the application process before you officially use the mark, however, before the mark is registered, you will have to demonstrate actual use of the mark.
WILL REGISTERING MY TRADEMARK PREVENT OTHERS FROM REGISTERING THE SAME MARK?
Not necessarily. You only own your trademark in connection with how you use it.
The USPTO has 45 classes of goods and services by which trademarks are categorized. When you register your trademark, it is only registered in a particular class (or classes).
The USPTO will generally prevent someone else from registering similarly confusing marks in these same classes (and sometimes even in related classes) if there is a likelihood that people could confuse your existing mark with the other mark.
This is, of course, an over-simplification, and the USPTO considers multiple factors when deciding whether a “likelihood of confusion” exists.
But, if the two trademarks are inherently different in how they are used, then they will both be allowed. That is why Delta Airlines and DELTA faucets can co-exist. Nobody will see a commercial for DELTA Airlines and ever mistake it for a plumbing fixture company and vice versa.
HOW LONG DOES MY TRADEMARK LAST?
A common law trademark lasts for as long as you continue to use it.
A trademark registration lasts for 10 years.
During the initial 10-year period, you are required to file a Declaration of Use (or Excused Non-Use) with the USPTO between the 5th and 6th years, after that you will need to file another Declaration of Use (or Excused Non-Use) before the 10th year, and every 10 years after that.
WILL THE USPTO MONITOR MY TRADEMARK FOR INFRINGEMENT?
No. Registration helps reign in infringement, but you are solely responsible for monitoring your trademarks for infringement after they are registered.
WILL THE USPTO ENFORCE MY TRADEMARK RIGHTS?
No. If infringement is discovered, it is entirely your responsibility to enforce your rights.