See Frequently Asked Questions for more information about the difference between trademarks, copyrights and patents. Briefly, a copyright protects an original literary, artistic, and musical work and a patent protects an invention. The USPTO has a 41 minute video titled, “Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later.”
Trademark Creation. A trademark comes into being when one uses a mark on a product or to represent a service. Registration, either in State or Federal registration offices, is not required before such use. And, registration is not required after such use. State registration is available when a mark need only be enforced within a State. Federal registration offers enforcement rights in the mark in all the states.
Federal Trademark Registration Benefits. Registration of a trademark does not give the owner the right to use the mark. Rather, federal registration permits the owner to enforce the owner’s rights in the mark based on the federal registration.
Registration can often enable the owner to stop others from using the mark on similar products, that is, using the mark in a way that could cause confusion in the marketplace. However, a commercial use of the mark by someone else on their similar product, which pre-dates the registration, cannot be stopped by virtue of a subsequently-filed federal registration on your use of the mark: Federal trademark law recognizes the rights of prior users.
There are at least six benefits registration on the Principal Register of Trademarks:
- Constructive notice nationwide of the trademark owner’s claim.
- Evidence of ownership of the trademark.
- Jurisdiction of federal courts may be invoked.
- Registration can be used as a basis for obtaining registration in foreign countries.
- Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
- Exclusive right to use mark in commerce can become incontestable, subject to certain defenses.
When marks become famous, all unauthorized uses, even involving dissimilar products, can be stopped. Famous marks are protected in trademark laws to prevent “dilution” and tarnishment of the quality of the product represented by the mark in the eyes of the consumer.
What Does it Cost to Apply for Federal Registration of a Mark? Expect a filed application for a word mark to cost $850 and a graphic mark to cost $1,150 for one classification of goods or services. This cost includes a $100 discount from the USPTO for qualifying electronically filed applications. These numbers include filing costs and attorney fees for the application. Other attorney costs after filing, if required, are charged at $250 per hour.
According to the American Intellectual Property Law Association Economic Survey of 2013, the median charge in 2012 for a Trademark application is $1,700, which includes a $1,000 charge for a clearance search. In addition, the median post-filing prosecution attorney fees are $700.
- Total costs by Attorney Louis Ventre, Jr. for a trademark application filing in one classification are usually $850 for a word mark and $1,150 for a logo or design mark.
- Filing Costs. The usual government filing fee for a trademark application is $350 per class of goods and/or services. Certain electronic applications receive a $100 discount, which Attorney Louis Ventre, Jr. will obtain for eligible clients. After filing, the government may require you to pay for additional classifications if the description of the goods or services fits in more than one classification.
- Intent to Use. If an application is filed based on a bona fide intent to use the mark in commerce, additional forms and filing fees will be required at a later time, e.g., an Allegation of Use is a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant (see signature) attesting to use of the mark in commerce and this must be filed with a $100 fee at a later time. See the bullet below, “Actual Use in Commerce” for more information on this fee. The Patent Office publishes a current schedule of fees.
- Attorney Fees. Attorney Louis Ventre, Jr. charges a fixed- fee of $600 for a text mark and $900 for design/logo marks. Attorney Louis Ventre, Jr. employs electronic filing using the Trademark Electronic Application System, which is greatly preferred by the United States Patent and Trademark Office. Trademark prosecution costs after filing are billed at $250 per hour.
International Trademark Application. An application under the Madrid Protocol for trademark protection in multiple foreign countries may also be made. This is discussed on this Law Firm’s International Trademark page.
Affidavit of Use for a Trademark. It is a formal statement that the mark is still in use. For a trademark registration to remain valid, an Affidavit of Use (Section 8 Affidavit) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. The registrant must also file a Section 9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee. Attorney fees for a Section 8 Affidavit, which may simultaneously be filed with a Section 15 declaration for acquiring incontestability, are $350.
Period of Protection. Assuming that Affidavit of Use is timely filed, current registrations have a 10-year term. Renewals are currently for a 10-year term. One may renew a trademark as many times as desired. However, it is possible to lose trademark protection by non-use, failure to “police” infringing uses, and even misuse. For example, misuse might be construed if the trademark is licensed or sold to another party who does not provide the same level of quality or price previously associated with the trademarked goods. Attorney fees for a renewal application are $350.
Choosing a Trademark. Fanciful or arbitrary marks are the best choice when selecting a trademark. Examples of a fanciful mark are words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).
Arbitrary marks have absolutely no meaning associated with the owner’s product or service. Thus, arbitrary marks involve words that are in common use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).
You should avoid marks that are typically rejected by the United States Patent and Trademark Office because they describe the product, they are deceptively misdescriptive, they are geographically descriptive, they are merely a surname, or they are merely ornamental in nature. Other less common reasons for denial exist (national symbols, disparagement, scandalous, style or grade designations, title of a single creative work, etc), so it is best to ask an attorney before using a mark.
The trademark you settle on should not be a mark that is already in use. A search should be conducted in the Trademark Office files before you use your trademark.
You should also do a Google or Bing search to see if others are using it. Also, you should look in the dictionary for the word chosen to see if it has a meaning that you would not appreciate being associated with. The mark should be easy to remember and to guess at for spelling. Finally, you shoud check to see if the name is available for a web site. Many Internet domain names are already taken and this may affect your choice of a trademark.
Using a Trademark. Try to resist using your mark as a substitute for the product because this could turn it into a generic name with the consequent loss of rights. For example, aspirin was once a trademark, but now it is the generic name of the product. Proper use of a mark is as an adjective modifying the generic name of the product, for example “Kleenex tissues” or “Kleenex brand tissues” rather than “Kleenexes.” Also, take care to use the mark exactly as it was registered. Changes in spelling of the mark make it possible for an infringer to argue that the original registration was abandoned by using a different mark.
A Company Name as a Trademark. Your business name may be a trademark, but it is not usually the best choice for a trademark. You might be prevented from using your business name if it causes consumer confusion with a registered trademark. State common law trademark rights are acquired by use of a business name trademark in commerce. Generally, the first user a particular trademark in commerce for a particular product and in a specific geographic location may have a right to prevent others from using that trademark in the same geographic location for a similar product. Common law protections, however, may not always prevail. Those elsewhere that acquire a Registered Trademark may apply to make it incontestable after being continuously used in commerce for five years after registration. There are lots of maybes and mights in reliance on common law protection and it is likely to be expensive to resolve them. Furthermore, any infringement action against someone using a mark for pre-existing products may succeed only if there is a “likelihood of confusion” of the consumer. So it is best to use a completely arbitrary, fanciful trademark, which usually is not represented in a business name.
Using TM, SM and the R within the circle ®? Use of the TM for Trademark and SM for Service Mark symbols is governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to.
The federal registration symbol, the R enclosed within a circle, may be used once the mark is actually registered in the United States Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. However, several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.
Period from Application to Trademark. It takes about a year, but may take several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.
Elements of an Application. If you are already using your mark in commerce, you would file a “use” application with the United States Patent and Trademark Office. Generally, an application has the following elements:
- The name of the owner of the mark, along with a correspondence address.
- At least one international class for your mark selected from the International Schedule of Classes of Goods and Services.
- A clear black and white drawing, unless color is claimed as an important feature of the mark, and a specimen of the mark. If colors are important to a mark, the colors in a mark must be claimed and described. If it is a sound, e.g. the NBC chimes, then no drawing is needed.
- A brief listing of the goods or services for which registration is sought, usually including information that expands on the international class designation. There must be actual use of the goods or services in commerce or an intent to so use them.
- Use of the appropriate descriptive terms obtained from consulting the Acceptable Identification of Goods and Services Manual.
- The date that the mark was first used anywhere and the date the mark was first used in commerce.
- A specimen of a trademark for goods, which is typically a label or a photograph of the mark in use on the goods or in advertising for services. The United States Patent and Trademark Office does not want the actual goods and it prefers not to receive specimens involving invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards.
- The signature of your attorney, applicant, or other person authorized to bind the applicant.
Trademark Office Action. After an application is filed, the examining attorney at the United States Patent and Trademark Office reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration.
The United States Patent and Trademark Office does not decide whether you have the right to use a mark (which differs from the right to register). No matter how thorough the preliminary search, the United States Patent and Trademark Office may refuse to register the mark for conflicting marks it has found. The examining attorney decides whether or not there is a likelihood of confusion between the mark in the application and another mark that is registered or pending in the United States Patent and Trademark Office. There are also other legal reasons an examining attorney might reject an application. Typically, these might include, e.g., the mark being merely descriptive, deceptively misdescriptive, geographically descriptive, merely a surname, ornamental in nature, etc.
Receiving an objection to an application from the United States Patent and Trademark Office is common. If one is issued, you and your attorney then respond to the refusal with legal arguments that address the examiner’s objections to the application. Alternatively, you may decide to abandon the application.
If the examiner raises no objections to registration of the mark, or if all the examiner’s objections have been resolved, then the examiner will approve the mark for publication. If someone raises an objection within 30 days of publication, the United States Patent and Trademark Office may then hold an administrative proceeding to determine whether or not the opposition is meritorious. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.
Actual Use in Commerce. For applicants that have an intent to use a mark in commerce, an amendment to allege use may be filed after the application filing date but before approval of the mark for publication. If the Office issues a notice of allowance before such first use, then a Statement of Use within six months of the mailing date of the notice of allowance must be filed. Extensions for 6 months at a time can be granted with payment of additional fees. The Statement of Use ($100 filing fee, see above) or 6-month extensions up to 36 months may be requested wit the payment of a filing fee ($150). After that the application will be declared “abandoned.” Attorney fees for filing an amendment or Statement of Use are $350.
Using a Competitor’s Trademark. If you would like an opinion as to whether or not you can or should use a competitor’s trademark in your company’s advertising, give Attorney Louis Ventre, Jr. a call. You may be surprised to learn that you can use a competitor’s mark, under certain circumstances.
Attorney Louis Ventre, Jr. wants to help your business compete effectively, while minimizing liability for Trademark infringement. If you have received a “cease and desist” letter from someone demanding that you stop using their mark and account to them for all profits you may have made in using their mark, contact Attorney Louis Ventre, Jr. as soon as possible and, certainly, before you reply.
Canceling a Competitor’s Trademark. To oppose or cancel someone’s trademark registration, see this Law Firm’s web page on Opposition and Cancellation of Trademark.