Trademark

 

 

What is a trademark or service mark?

• A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.

• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods. Throughout this booklet, the terms “trademark” and “mark” refer to both trademarks and service marks.

 

Is federal registration of my mark required?
No. In the United States, parties are not required to register their marks to obtain protectable rights. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides a number of significant advantages over common law rights alone, including:
• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);
• Public notice of your claim of ownership of the mark;
• Listing in the USPTO’s online databases;
• The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol “®”;
• The ability to bring an action concerning the mark in federal court; and
• The use of the U.S. registration as a basis to obtain registration in foreign countries.

 

When can I use the trademark symbols TM, SM, and ®?
Each time you use your mark, it is best to use a designation with it. If registered, use an ® after the mark. If not yet registered, use TM for goods or SM for services, to indicate that you have adopted this as a trademark or service mark, respectively, regardless of whether you have filed an application with the USPTO. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration. However, no specific requirements exist as to the precise use of the “®” symbol as to placement, e.g., whether used in a subscript or superscript manner. Note: Several foreign countries use “®” to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.

 

INFORMATION TO INCLUDE IN THE APPLICATION
• OWNER OF THE MARK (“APPLICANT”)
• NAME AND ADDRESS FOR CORRESPONDENCE
• DEPICTION OF THE MARK (“THE DRAWING”)
• GOODS/SERVICES
• APPLICATION FILING FEE
• BASIS FOR FILING
• SPECIMEN FOR USE-BASED APPLICATIONS
• SIGNATURE

 

GOODS/SERVICES
Goods are products, such as bicycles or candles. Services are activities performed for the benefit of someone else, such as bicycle rental services or catering.
The difference between goods and services may be confusing. Are your customers paying for a product or paying you to perform a specific activity? If your customer is paying you for a product, such as a candle or bicycle, then you have goods. However, if your customer is paying you to perform an activity, such as catering or bicycle rental, then you have services. You may list both goods and services in an application.
You must list the specific goods/services for which you want to register your mark. If you are filing based upon “use in commerce,” you must be using the mark in commerce on all the goods/ services listed. If you are filing based upon a “bona fide intent to use the mark,” you must have a good faith or bona fide intent to use the mark on all the goods/services listed.