A Q&A on Trademarks
Trademark FAQ | A Primer on TM Basics
This article covers common questions with answers to important trademark inquiries about use, registration, maintaining protection, and enforcement, to help trademark owners make the most of their valuable intellectual property rights.
1. Why should I register my trademark?
Federal Registration is not required to establish trademark rights as “common law” rights arise from the actual use of a trademark, even without registration. However, there are many benefits to federal trademark registration, including (1) constructive notice to the public of your ownership of the mark; (2) establishes legal presumption of your ownership of the mark; (3) the ability to bring a trademark litigation action related to your trademark in federal court; (4) can be used as a basis for obtaining international registration; (5) can be filed with U.S. Customs to prevent the importation of infringing foreign goods; and (6) allows for use of the â symbol to alert the public to your federal registration.
2. Do I need a trademark to sell my product or services?
Federal registration of a trademark or service mark is not required to sell your goods or services, as common law rights will arise out of the actual use in commerce of the mark. However, as noted above, there are a number of significant benefits to federal registration.
3. What do the different trademark symbols mean and why/when do I need to use them? (® TM SM)
A trademark is a word, phrase, or symbol/design that identifies the source of the goods or services associated with the mark and distinguishes the source of those goods or services from those of other parties. A service mark is simply a type of trademark that identifies the source of services rather than goods. The term “trademark” is often used to refer to both trademarks and service marks, collectively.
The ™ and ℠ marks may be used with the sale of goods and services in connection with a common-law (meaning not federally registered) trademark ™ or service mark ℠. The ® symbol cannot be used with a common-law trademark or service mark, but may only be used upon the actual registration of a trademark with the United Stated Patent and Trademark Office (not merely upon the filing of an application).
4. Is trade dress different than a trademark? What about a copyright? How do I know what I need?
Trademark, trade dress, and copyright protect different types of intellectual property. A trademark typically protects brand names, tag lines, and logos used on or with goods or services. Trade dress rights protect the characteristics of the visual appearance of a product or its packaging or even the atmosphere or décor within a place of business. Copyright protects an original artistic or literary work, such as a written work, movie, or artwork.
5. Do I need to do a trademark search?
Most likely. You, or someone acting on your behalf, should consider conducting a preliminary search of the USPTO database before filing your application to identify whether anyone is already claiming trademark rights in your mark (or a similar mark) through federal registration. Your search should also include a general Internet search to identify any common-law uses of your mark or a similar mark that could predate your use. Failure to conduct a proper trademark search before filing your application may result in an inadequate assessment of whether your mark should be filed and a rejection by the USPTO Examiner.
6. What will I need to file a trademark?
If you are a foreign domiciled applicant, you must have a U.S.-licensed attorney represent you to the USPTO. If you are domiciled in the United States, you are not required to have an attorney represent you, but having an experienced trademark attorney to provide advice at the forefront can save time and money for fixing mistakes after filing. You will also want to have (1) a clear idea of the mark you want to register, (2) the goods or services on which you are or wish to use the mark, and (3) a clear understanding of whether you will be filing based on existing use of the mark or a true intent to use the mark in the future.
Additionally, you will need to be prepared to pay a registration filing fee. The amount of your filing fee will depend on the basis of your application, i.e., whether you are filing on the basis of existing use or an intent to use, the number of marks you seek to register, and the number of classes of goods/services included in your application.
Finally, you will need a “specimen” or real-life example of your mark as it appears on the associated goods and/or services. The specimen may not be an artistic rendering or computer-generated image but must be an example of use of the mark on actual goods or services.
7. Once I file for my trademark, when can I start using it?
You can begin using your mark at any time either prior to or after you file an application for federal registration, since common law rights arise out of the actual use of a mark regardless of whether the mark is federally registered. If you filed an existing use application, you must have already begun using your mark in commerce before you filed your application. If you filed an intent to use application, and no opposition is filed or you successfully overcome an opposition, you will receive a “Notice of Allowance” from the USPTO. You will then have months from the date the Notice of Allowance was issued to file a “Statement of Use” demonstrating your actual use of the mark in commerce.
8. How long is the registration process?
It is difficult to predict exactly how long the trademark registration process will take, since many factors can impact the amount of time required. Generally, an applicant will receive a filing receipt from the USPTO almost immediately upon filing its application and often will receive substantive examination from the USPTO within approximately 4 months after filing the application, with most applications proceeding to registration in just under one year. However, total time to registration can last anywhere from six months to one year or longer depending on your basis for filing and any issues that may arise during the registration process (such as the existence of other, similar marks for similar goods and/or services).
9. What is the lifespan of a trademark? Do they expire?
In order to obtain a valid registration, one must file a Declaration of Use with the USPTO between the fifth and sixth year following registration and within the year before the end of every 10-year period after the date of registration to maintain the registration. So long as a Declaration of Use is timely filed, registrations granted before November 16, 1989 have a 20-year term, while registrations granted after November 16, 1989 have a 10-year term. There is no limit to the number of times a trademark can be renewed provided that the owner’s use of the mark is continuing.
10. Do I have to file for a trademark in the U.S. before applying for one internationally?
There is no requirement that you must first file for trademark registration in the U.S. before filing an international registration. However, you should file in the country where you are currently using the mark to secure protection where it is most urgently needed. Additionally, most countries have international treaties that allow for filing foreign applications on the basis of an original country registration and/or application. An experienced trademark attorney can provide advice for best protection strategies under the particular circumstances and provide a game plan for the most effective, efficient, and cost beneficial protection.
11. When creating a new business, when should I apply for a trademark? What happens if I wait too long?
As noted above, your common law rights to a name arise as soon as you begin using it in commerce, even without formal registration with the USPTO. However, common law protections are limited to the particular geographic location where your mark is used. In many cases, you will want to file for federal registration of your mark as soon as you file your LLC or corporation paperwork. This way, you can ensure federal, nationwide protection of your mark before you expend significant amounts of money in marketing, advertising, and launching your goods/services into the commercial market.
Moreover, in the context of intent-to-use applications, if your application is ultimately allowed to proceed to registration your filing date will be your “date of first use,” even though you had not begun commercial use of your mark at that time. This date-of-first use can be very important if a conflict arises with another mark or user down the road, as the first to use a mark typically will have priority over a subsequent user.
12. What if someone else is using my trademark? What are my rights to get them to stop?
You are responsible for enforcing your own rights, as the USPTO does not “police” the use of trademarks by others. You can assign the task to someone internal to your business, hire an attorney to monitor third-party use, or secure an enforcement company to regularly monitor third-party use of your mark (or similar marks) in connection with the same or similar goods or services.
If you discover infringing use of your trademark, you have a variety of enforcement options, including: (1) sending a cease and desist letter to the user to inform them of your registered trademark and demand that they stop their use of the mark in connection with similar goods or services; (2) if the third-party use is via an online marketplace, you can consider submitting a notice of infringement or “takedown” notice to the online marketplace seeking the removal of the third-party listing on the basis of trademark infringement; or (3) you can bring a federal lawsuit for damages arising out of trademark infringement.
13. What are damages available for trademark infringement?
Generally, a successful trademark owner can collect its lost profits plus the profits of the infringer and in some cases may recover its attorneys’ fees. For more information, see our trademark infringement damages post.
14. What is trademark counterfeiting?
Trademark counterfeiting is where a party creates goods or services with a mark that looks exactly like the trademarked goods/services, such as a logo or name, and sells them to the public as the goods/services of the trademark owner. For additional information on counterfeiting, please see our trademark counterfeiting post.
For more insights on trademarks, see our Trademark Services Overview and Industry Focused Legal Solutions pages.