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Frequently Asked Questions About Trademarks

What Is A Trademark?

Trademarks are a form of intellectual property, but they are NOT interchangeable with copyright or patent. A trademark is a word or symbol that identifies the source of a product or service.

What Are Trademarks For?

A trademark is a word, phrase, sound, logo, image or other device that identifies the source of your product or service.  Think of brand names you are familiar with. You may find the quality of a certain brand to your liking, so you look for that brand when you want to purchase that product. If you prefer X brand of salt, you will purchase X brand next time you run out of salt. You will not purchase Y brand if X brand is available.  Thus, a trademark provides the business owner with value because it encourages customer loyalty. This is called good will.

What Different Types Of Trademarks Are There?

Trademarks are for goods.  Service marks are for services.  There are common law trademarks and registered trademarks.  In the United States we have common law. This law recognizes rights in trademarks through use.  If you use a trademark to identify the source  of your product or service, you establish common law trademark rights in the geographic are where you use the mark.  If you operate a barber shop in Denver, Colorado under the name ZEPPY CUTTER you will establish ZEPPY CUTTER as a common law mark for barber shop services in the Denver area.  No registration is required to establish common law trademark rights. But those rights are limited to the area where the mark is actually used.  Common law trademarks may be designated with the TM symbol, while common law service marks may be designated with the SM symbol.

Registered marks are those that have been issued a trademark registration certificate by the United states Patent and Trademark Office. One of the most important benefits of registering your trademark with the United States Patent and Trademark Office is that the registration gives you the presumptive right to use the trademark throughout the United States. Contrast this to the common law trademark that may only be asserted in those areas where it has actually been used. Once you have registered your trademark or service mark with the United States Patent and Trademark Office you should designate the registered mark with the ® symbol.  Registration is very important for any business that intends to provide products or services throughout the United States. Registration also allows you to easily apply for international trademark protection in many other countries and regions of the world, and if you file your international application within six months of your U.S. application you ordinarily can claim your U.S. filing date as the priority date for your claim to trademark rights in the countries or regions where your international application is filed.

Trademarks also differ in many other ways. Some trademarks are stronger than other trademarks based on the trademark itself (inherent strength) or its level of market penetration and consumer familiarity (market strength).  Arbitrary or fanciful marks— those that in no way are suggestive or descriptive of the product or service in connection with which they are used—have the greatest inherent strength.

How Can I Get A Trademark?

You obtain trademark rights in the USA by using your trademark or service mark to promote or sell your product or service. When you use a trademark that is not registered by the United States Patent and Trademark Office, you should show you claim rights in the mark by placing the TM symbol immediately after the mark.

When Should I Use A Trademark Attorney?

Receive your advice and attorney consultation before you introduce your new product or service.

Ideally, you should engage the services of an experienced trademark attorney whenever your company is considering launching a new product or service. The best time to get a trademark attorney involved is before you have committed significant resources to your new trademark.

If you want to make an application for federal registration of your mark, it is wise to engage a trademark attorney to guide you through the formalities of the application process. Even if you have already been using the mark for some time, we can advise you whether it makes sense to apply for federal registration, and if so, we can skillfully draft your application to help avoid objections by the government trademark examiner.

What Does A Trademark Attorney Do?

Your trademark lawyer can help you a lot

Besides trademark clearance and prosecution of applications for registration, a trademark attorney can help enforce your trademark. Your trademark attorney can maintain a trademark watch to monitor potential infringing trademark use and alert you when such uses are uncovered. Your trademark attorney can advise you whether it makes sense for you to take action to stop a potentially infringing use. If action is needed, your trademark attorney can go to work for you to put an end to the infringing use. On the flip side, your trademark attorney can offer you sound advice if you receive a cease and desist letter demanding that you stop using your trademark. Most importantly, hiring a trademark attorney at the right stage of your marketing campaign can help you to avoid adopting a mark that will be likely to subject you to liability for trademark infringement.

A trademark attorney can advise you whether your proposed mark would be registrable in relation to your goods or services, and can help you go through the process of selecting a trademark. A good trademark attorney can become an important partner in your company’s strategy for growth, by making sure you take the necessary steps to safeguard your important intellectual property.

Consult with a trademark attorney. Arm yourself with the knowledge to use trademarks wisely and avoid costly mistakes.

Isn't Hiring A Trademark Lawyer An Expensive Option My Company Can Easily Do Without?

Have you heard the expression penny wise and pound foolish?

Hiring a trademark attorney may seem expensive, if the cost is analyzed in a vacuum. But if you compare the cost of engaging an experienced trademark attorney to the cost of litigating a trademark dispute, or the cost incurred if your company has to stop using a mark after spending years building up the value of the mark through expensive advertising campaigns, it becomes clear that hiring a trademark attorney can actually save you money. It costs more to hire a pilot than to fly the plane yourself, but there is value in having someone with experience at the controls. Like flying, trademark use involves risk. It is the job of the trademark attorney to help clients minimize that risk as much as possible. Engaging a trademark attorney to evaluate the availability of a proposed trademark prior to launching your product or service will lower your risk in using the mark. By minimizing the risk, the value of the trademark is increased.

What About Using A Non-Attorney Agent Instead Of A Trademark Attorney To File My Trademark Application?

Do not pay for needless “services!”

Only a licensed attorney is qualified to advise you as to the legal risks inherent in trademark use, and a trademark attorney should be most knowledgeable concerning trademarks. You should never hire a non-attorney agent to perform a trademark search or file a trademark application — it takes an experienced trademark attorney to give you a legal opinion as to the availability of a trademark for adoption, use and registration. A non-attorney may do little more than fill out forms and charge you for it. Although using a non-attorney service will undoubtedly be cheaper than hiring an experienced trademark attorney, remember: cheaper is not synonymous with better.

What Are Some Characteristics Of A Strong Trademark?

A strong trademark is not descriptive of the goods or services in connection with which it is used. A strong trademark is one that is arbitrary or fanciful in relation to the product or service.  For example APPLE is an arbitrary mark for computers.  SHCRUMPO would be a fanciful mark for anything.  A fanciful mark is a coined term with no meaning whatsoever.

Suggestive marks are not as strong as fanciful or arbitrary marks, but they have the advantage of being easily associated with the product or service without describing the product or service. Think of SWINGING for hammocks, for example.  A descriptive mark is one that describes the product or services it is used in connection with.  Think SWEET for sugar.  Descriptive marks are weak and difficult to enforce because others will claim they need to use the term to describe their competing goods or services.  Thus it is ordinarily best to select a suggestive, arbitrary or fanciful mark for your goods or services. The line between suggestive marks and descriptive marks, however, is not always clear.  One type of trademark you must never adopt is a generic name.  You simply can’t claim trademark rights to a generic term. Thus, if you tried to claim the rights to the alleged trademark APPLE in connection with apples, you would not have any success.  You can’t claim any rights to APPLE brand apples. It’s a generic term when used for apples.

What Are Closely Related Products?

This is a big topic, but in general, things that are used together or used for the same purpose, or sold in the same channels of trade may be considered related goods for trademark law purposes.  Think shoes and socks.  Wine and cheese.  Helmets and footballs.  Snails and frog legs.  We can advise your whether your proposed trademark is too similar to another trademark for a product or service that may be related to your product or service.

Trademarks are a form of property and as such people fight over them.  This is why you should always have a comprehensive trademark search conducted before you begin using or apply to register any new trademark.  It’s called looking before you leap. It’s always a good idea.

How Do I keep From Infringing On Another Trademark?

You must not adopt and use a trademark that is confusingly similar to another party’s prior used or registered trademark for similar goods and services.  Thus, if there is a BIG FAT brand of sandwich shops, you should not open a competing sandwich shop under the mark BIG HAT.  Otherwise the owner of the BIG FAT trademark might go after you on a likelihood of confusion (trademark infringement) claim.  You also must not use another party’s famous trademark in connection with any goods or services.  So even though COCA-COLA is not in the private investigator field, you must not commence business as COCA COLA PRIVATE EYES.  If you did, you would be arguably liable for dilution of the famous COCA-COLA trademark.

The best way to avoid adopting and using a trademark that infringes another party’s rights is through a comprehensive trademark search and attorney opinion letter.  Please note, however, that trademark searching can reduce your risk of adopting an infringing trademark, but it cannot eliminate it.

Why The USPTO May Refuse Your Trademark Registration Application

The USPTO will refuse your registration if the trademark is merely descriptive or if it is too close to a prior registered or prior applied-for mark for related goods or services.

Various Reasons The USPTO May Reject Your Trademark Application

  • The mark is a surname
  • The mark is incapable of functioning as a trademark
  • The mark is or includes a flag of a state or nation
  • The mark identifies a living individual by using their name or likeness without their consent
  • The mark is a foreign word the English translation of which is descriptive or generic for the goods or services
  • The mark is a foreign word that is the equivalent of an English word that is already registered for the goods or services
  • The mark is merely geographically descriptive of the goods or services (for example NEW YORK PURSES for wallets and handbags manufactured in New York City)
  • The mark is deceptively misdescriptive of the goods or services (for example NEW YORK PURSES for wallets and handbags manufactured in China and imported by a company in California; or ALL NATURAL HEALTHY for yogurt with ingredients including artificial flavorings)

The USPTO formerly would refuse registration if it considered the mark to be disparaging, but this basis for refusal of registration has been held unconstitutional by the Supreme Court.

How Do I Get A ®

You can only use the little R in the circle if your trademark has been registered by the United States Patent and Trademark Office.  In order to obtain registration, you need to file a trademark application with the USPTO.  Preparing trademark applications is one of the most important services we offer.

Our firm takes meticulous care in the preparation of our clients’ trademark applications.  Attention to detail is critical.  A well-drafted TM application may proceed to registration without need for any further communication with the USPTO. This is ideal because it means the application may become registered quicker and for lower cost than an application that is subjected to challenges by USPTO examining attorneys, or that requires clarifications in order to obtain approval from the USPTO.

What Is Trademark Clearance?

Once you have selected a new trademark and consulted with your trademark attorney, had a comprehensive trademark search conducted and gotten an attorney opinion letter as to the availability of your proposed mark for use and registration, you’re ready to proceed to the next step.  Assuming the attorney opinion letter indicates the proposed mark is available for use and registration, the next step may be the preparation and filing of a trademark application.  So, in a nutshell, trademark clearance is the process of determining whether a given mark is available for use and registration.

You cannot “trademark” a name. You can’t own a word.  But you can claim trademark rights to a word or phrase in connection with a specific product or service. In order to claim TM rights in a word or phrase, you need to make valid trademark use of the word or phrase you are claiming.

We can provide advice about the correct way to use your trademark to promote and sell your product or service so as to establish trademark rights and maintain your trademark rights.

Can I Claim A Scent As A Trademark?

Yes, you can claim a scent as a trademark. Anything—visual, aural, olfactory, or tactile—that can serve the purpose of designating the source of the product or service in connection with which it is used, can serve as a trademark.

Can I Claim A Color As A Trademark?

Yes, you can claim a color as a trademark. Anything—visual, aural, olfactory, or tactile—that can serve the purpose of designating the source of the product or service in connection with which it is used, can serve as a trademark.

Can I Claim A Musical Motif As A Trademark?

Yes, you can claim a musical motif as a trademark. Anything—visual, aural, olfactory, or tactile—that can serve the purpose of designating the source of the product or service in connection with which it is used, can serve as a trademark.