What is a trademark/service mark?

Do I need to register my mark?

Why should I register my mark?

What is the difference between state and US Federal trademark registration?

Do I have to be a US citizen to register my mark in the US?

Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?

When is it proper to use the federal registration symbol (the letter R enclosed within a circle - ® - with the mark)?

What if I don't obtain trademark protection?

Can my company register a trademark?

How long does a federal trademark registration last?

How long does it take for a mark to be registered?

Can the Trademark Office refuse to register a mark?

What if someone is using the same or similar trademark?

Do I need to preform a trademark search?

Can I sell or assign my trademark now or later?

How do trademarks and service marks compare to copyrights and patents?

I registered my mark and someone is using it, what can I do?

How do I file for international trademark protection?

What is the Madrid Protocol?

What countries are member of the Madrid Protocol?

How can a U.S. trademark owner file an internation application with the Trademark Office?

What happens after the international application has been submitted to the Trademark Office?

Will the International Bureau Automatically register the mark in an international application once it has been certified by the Trademark Office?

What happens after the International Bureau registers the mark in the international application?

Where can I get more information about the Madrid Protocol?

What is a trademark/service mark?

A tradmark is a word, phrase, symbol or design, or a combination of words, phrases, symols or designs, that identifies and distinguishes the source of the good of one party from those of others. Thus, a trademark is essentially a brand name.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

Often, trademark is used to refer to both trademark and service marks.

Do I need to register my mark?

No. You establish what are called common law trademark rights with the appropriate use of your mark. However, these rights are more limited than if you register your mark.

Why should I register my mark?

Registering your mark comes with significant benefits, including:

• Constructive notice to the public of the registrant's claim of ownership of the mark;
• A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• The ability to bring an action concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods

What is the difference between state and US Federal trademark registration?

To obtain state trademark registration you generally apply to the Secretary of State's office in the desired state. This may potentially give you trademark rights in that particular state. However, a federal trademark will give you significantly more rights, including a trademark nationwide.

Do I have to live in the US to register my mark?

An applicants citizenship must be including in the filing of the trademark application. However, there is no requirement that the applicant be a citizen of the United States.

Are there federal regulations governing the use of the designations "TM" or "SM" with trademarks?

No. Use of the symbols "TM" or "SM" (for trademark and service mark, respectively) may, however, be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted. These designations usually indicate that a party claims rights in the markand are often used before a federal registration is issued.

When is it proper to use the federal registration symbol (the letter R enclosed within a circle - ® - with the mark)?

The federal registration symbol may be used once the mark is actually registered in the U.S. 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. [Note: 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.]

What if I don't obtain trademark protection?

To the exent your mark qualifies, you will have a common law trademark. However, as such, you will not have many of the benefits a Federal Trademark provides.

Can my company register a trademark?

Absolutely.

How long does a federal trademark registration last?

In general, you must continue to use your trademark or you may lose it. An affidavit of Use must be filed between the fifth and sixth year following registration. Following that, you have to file and Affidavit of Use within the year before the end of every ten-year period after the date of registration.

Trademarks can be renewed for additional 10 year terms indefinitely.

How long does it take for a mark to be registered?

The amount of time it takes to register a trademark varries significantly. However, an applicant will generally receive a response form the Trademark Office around six months after it is filed.

We will of course keep you appraised of the status of your application if you chose to have Stricker & Trunck LLP register it.

Can the Trademark Office refuse to register a mark?

Yes. The Trademark Office will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks.

Additionally, Section 2 of the Trademark Act (15 U.S.C. § 1052) contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as:

• the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
• the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
• the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
• the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
• the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;
• the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;
• the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;
• the proposed mark is primarily merely a surname; and
• matter that, as a whole, is functional.

What if someone is using the same or similar trademark?

If someone is using the same or a similar trademark, the ability for you to obtain trademark protection on your mark is very complex. It depends on a multitude of factors, including whether your use is likely to be confused with that same or similar trademark. Nevertheless, if someone is using the same or similar trademark, your chances of success are going to be less. This is why a trademark search is generally advisable.

Do I need to preform a trademark search?

While you do not need to, it will behove you to. A trademark search will not only benefit you for potential trademark protection, but also for the general success of your business. You certainly do not want your name to be similar to one already on the market, especially if the product or services offered are similar.

At Stricker & Trunck LLP we have many choices for your trademark search needs. Click here to find out more

Can I sell or assign my trademark now or later?

Absolutely. A trademark application or a registered mark is assignable. Written assignments may be recorded with the Trademark Office. There are certain exceptions concerning the assignment of applications filed as an intent to use.

Contact us for assistance with your assignment needs

How do trademarks and service marks compare to copyrights and patents?

Patents protect inventions and improvements to existing inventions. Copyrights Cover literary, artistic and musical works. Trademark are brand names and/or designs which are applied to products or used in connection with services.

At Stricker & Trunck LLP we can help you with all your intellectual property needs

I registered my mark and someone is using it, what can I do?

You need to act. If you do not stop their use you may lose some or all of your trademark rights. There are a multitude of options when someone is using the same or similar trademark.

You should contact is, or any competent trademark attorney as soon as possible

How do I file for international trademark protection?

You file for international trademark protection under the Madrid Protocol. You first must have a U.S. applcation or registration. With that, you then file for international protection with the Trademark Office.

What is the Madrid Protocol?

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application." The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system.

The resulting Òinternational registrationÓ serves as a means for seeking protection in member countries, each of which apply their own rules and laws to determine whether or not the mark may be protected in their jurisdiction. Neither the Madrid Protocol nor the Madrid Agreement provide for registration of an Òinternationally effectiveÓ trademark.

What countries are member of the Madrid Protocol?

As of November 2007, 74 countries have joined the Madrid Protocol. These countries are called "Contracting Parties." A current list of the Contracting Parties is available online at the World Intellectual Property Organization (WIPO) website: http://www.wipo.int/madrid/en/members.

How can a U.S. trademark owner file an internation application iwth the Trademark Office?

An international application may be filed electronically using the Trademark Electronic Application System (TEAS) for International Applications. However, because of the multitude complexities and regulations, we advise you retain Stricker & Trunck LLP, or any competent trademark attorney, to prepare your application.

What happens after the international application has been submitted to the Trademark Office?

If the international application meets the requirements of 37 C.F.R. §7.11(a), then the USPTO will certify that certain information in the international application is the same as the information in the U.S. basic application or registration and forward the international application to the International Bureau.

If the international application does not meet the requirements of 37 C.F.R. §7.11(a), then the USPTO will not certify the international application. The Trademark Office will notify the international applicant of the reasons why the international application cannot be certified. The certification fee is not refundable. The international applicant may promptly resubmit a corrected international application based on the same U.S. application or registration. The certification fees must be included with the new submission.

Because of the potential cost of additional fees, you very well may save money by using Stricker & Trunck LLP

Will the International Bureau Automatically register the mark in an international application once it has been certified by the Trademark Office?

No. Certification by the USPTO is only to ensure that the international application is properly based on a U.S. application or registration and to validate the date of receipt of the international application by the USPTO. The International Bureau must still review the international application to determine whether it meets the Madrid Protocol filing requirements. If the requirements are met and the fees paid, the International Bureau will then register the mark, publish it in the WIPO Gazette of International Marks (WIPO Gazette), send a certificate to the international applicant, now called "holder of the international registration", and notify the Offices of the Contracting Parties designated in the international application.

What happens after the International Bureau registers the mark in the international application?

Once the International Bureau registers the mark, the International Bureau will notify each Contracting Party designated in the international registration of the request for an extension of protection to that country. Each designated Contracting Party will then examine the request for an extension of protection the same as it would a national application under its laws. If the application meets the requirements for registration of that country, then the Contracting Party will grant protection of the mark in its country.

There are strict time limits for refusing to grant an extension of protection (a maximum of 18 months). If a Contracting Party does not notify the International Bureau of any refusal of an extension of protection within the time limits set forth in Article 5(2) of the Madrid Protocol, the holder of the international registration is automatically granted protection of its mark in that country.

Where can I get more information about the Madrid Protocol?

The legislation, regulations and guide for implementing the Madrid Protocol in the United States and notices regarding paper filings are posted on the USPTO website: www.uspto.gov.

More detailed information about the Madrid Protocol, Common Regulations, Administrative Instructions, Guide to International Registration of Marks, Madrid Express (on-line database), schedule of fees, individual fees and the International Bureau Fee Calculator are available on the WIPO web site at: http://www.wipo.int/madrid/en/.