Trademark Law FAQ
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A: A trademark is a word, name, symbol, device or combination that identifies a source of goods or services. In addition, such things as color, sound, and smell may also serve as a trademark.
Q: What is the purpose of a trademark?
A: The purpose of a trademark is to protect the public, not to benefit the owner of a trademark. Specifically, trademarks serve to prevent the public from being confused regarding the source of goods or services.
Q: How do trademarks relate to tradenames and to domain names used on the Internet?
A: Tradenames, corporate names, partnership names, DBAs and fictitious names are all related in that each serves as a name for the entity that is doing business. Trademarks, on the other hand, are associated with goods or services provided by an entity. Thus, the former group would be used as a noun, whereas, a trademark is properly used as an adjective. For example, McDonalds is the name of a corporation or entity that owns a popular chain of fast food restaurants, but when we refer to a McDonalds hamburger, the term "McDonalds" is then being used as a trademark to identify the source of the hamburger.
Q: What types of things can serve as a trademark?
A: Words, names, symbols, devices, color, smell and sound or any combination of these items, which are used in trade to distinguish goods or services from other goods and services, can serve as a trademark.
Q: What is a "common law trademark"?
A: A "common law trademark" is a mark that is being used in commerce but has not yet received either a federal or state trademark registration. A trademark which has not yet been registered is designated by either a "TM" for marks used in association with goods or an "SM" for marks used in association with services.
Q: What is the process for registering a trademark?
A: A trademark attorney normally will conduct a clearing search to determine the availability of the mark selected, as well as the potential for conflicting marks. When a mark has been cleared for usage, the trademark attorney will next file and prosecute a trademark application for that mark. If no conflicting marks are found by the U. S. Trademark Office, the mark is published for opposition. If unopposed, then the mark will register. (It is possible to file for a state registration of a mark either alone or in conjunction with a federal registration.) Also, during the process of registration, it is necessary to provide proof of use in commerce either federally or in the state in which registration is being sought.
Q: What is the meaning and proper use of "SM" and "TM"?
A: The "TM" symbol after a mark denotes that the mark is a "trademark used on goods" while the "SM" symbol after a mark denotes that the mark is a "service mark used in association with services". After the mark is registered with the U. S. Trademark Office, whether it is a trademark or a service mark, it should be followed by an "®".
Q: What additional benefit is obtained by registering a trademark?
A: A mark can be an extremely valuable asset to a business. By obtaining registration of a trademark, notice is given to others of your use of this particular mark which prevents other businesses from using marks which are confusingly similar to yours.
Q: Which government entity registers trademarks?
A: Trademarks can be registered federally with the United States Patent and Trademark Office, a branch of the Commerce Department, or can be registered by individual states in which trademarks are used in commerce. State trademark registration is normally handled in the Office of the Secretary of State for each state.
Q: Is it necessary to use an attorney to obtain a trademark registration?
A: Federal trademark registrations, as well as state trademark registrations, should be obtained through a trademark attorney. Although there is a form which can be used to file an application and the rules are not as strict for those for filing a patent application, the expertise of a trademark attorney would be invaluable, especially during the prosecution phase prior to actual registration.
Q: What is the life of a trademark?
A: The life of trademarks is indefinite as long as there is continual use of the mark. Federal trademark registrations must be renewed every ten years with the U. S. Trademark Office, and State registrations normally are renewable every ten years, also.
Q: What are the most frequent mistakes made relating to trademarks?
A: The most frequent mistakes made relating to trademarks is in the selection of the mark itself. Failure to perform a trademark search prior to using a particular mark and even prior to filing a trademark application can be very costly. Often a mark selected without first conducting a search is already in use by someone else or is confusingly similar to another mark. If this occurs, advertising costs could be wasted as well as possible trademark infringement litigation costs incurred.
A: The general rule is that it is necessary to file individual application in each country in which you are seeking trademark protection. However, there is an exception to this rule. In 1996, it became possible to file an application for a Central European Trademark Registration which provides trademark protection in all of the European Union countries.
Q: What is required to make a trademark registration incontestable?
A: In order to maintain a trademark registration, a trademark attorney must file a Section 8 Affidavit between five and six years after registration of the mark attesting to continual use of the mark in interstate commerce. In order to make a trademark registration incontestable, a trademark attorney must also file a Section 15 Affidavit after five years of continuous usage of the mark. Generally, these two affidavits are filed together as a Combined Section 8 and Section 15 Affidavit. Filing a Section 15 Affidavit, or alternately, a Combined Section 8 and Section 15 Affidavit, has the effect of making the registration incontestable.
Q: What if I have a question that is not answered here?
A: Submit your question to Molly McKay.