General Information on Trademarks
A trademark is a word, phrase, symbol, design, etc. 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.
Trademarks, copyrights, and patents protect different types of intellectual property. A trademark typically protects brand names and logos used on goods and services. A copy-right protects an original artistic or literary work. A patent protects an invention. For ex-ample, if you invent a new kind of vacuum cleaner, you would apply for a patent to pro-tect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.
A domain name is part of a web address that links to the internet protocol address (IP address) of a particular website. For example, in the web address “http://www.uspto.gov,” the domain name is “uspto.gov.” You register your domain name with an accredited domain name registrar, not through the United States Patent and Trademark Office (“USPTO”). A domain name and a trademark differ. A trademark identifies goods or services as being from a particular source. Use of a domain name only as part of a web address does not qualify as source-indicating trademark use, though other prominent use apart from the web address may qualify as trademark use. Registration of a domain name with a domain name registrar does not give you any trademark rights. For example, even if you register a certain domain name with a domain name registrar, you could later be required to surrender it if it infringes someone else’s trademark rights.
Similarly, use of a business name does not necessarily qualify as trademark use, though other use of a business name as the source of goods or services may qualify it as both a business name and a trademark. Many states and local jurisdictions register business names, either as part of obtaining a certificate to do business or as an assumed name filing. For example, in a state where you will be doing business, you might file documents (typically with a state corporation commission or state division of corporations) to form a business entity, such as a corporation or limited liability company.
You would select a name for your entity, for example, XYZ, Inc. If no other company has already applied for that exact name in that state and you comply with all other requirements, the state likely would issue you a certificate and authorize you to do business under that name. However, a state’s authorization to form a business with a particular name does not also give you trademark rights and other parties could later try to prevent your use of the business name if they believe a likelihood of confusion exists with their trademarks.
Once you determine that the type of protection you need is, in fact, trademark protection, then selecting a mark is the very first step in the overall application/registration process. This must be done with thought and care, because not every mark is registrable with the USPTO. Nor is every mark legally protectable. That is, some marks may not be capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar mark on related goods or services. Businesses and individuals new to trademarks and the application/registration process often choose a mark for their product or service that may be difficult or even impossible to register and/or protect for various reasons.
Before filing a trademark/service mark application, you should consider (1) whether the mark you want to register is registrable, and (2) how difficult it will be to protect your mark based on the strength of the mark selected. Note in this regard that the USPTO only registers marks. You, as the mark owner, are solely responsible for enforcement.
Below are some factors to consider when choosing a mark. The USPTO examines every application for compliance with federal law and rules. The most common reason to refuse registration is a “likelihood of confusion” between the mark of the applicant and a mark already registered or in a prior-filed pending application owned by another party. The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source. Similar marks or related goods/services by themselves are not enough to support a finding of a likelihood of confusion, unless a court has held that the mark is actually a famous mark. That is, generally two identical marks can co-exist, so long as the goods and services are not related.
Each application is decided on its own facts and no simple mechanical test is used to determine whether a likelihood of confusion exists. Therefore, before filing your non-refundable application, it is very important for you to determine whether your proposed mark is likely to cause confusion with another mark. This determination can be made only after doing a thorough trademark search, as discussed below.
To determine whether a likelihood of confusion exists, the marks are first examined for their similarities and differences. Note that in order to find a likelihood of confusion, the marks do not have to be identical. When marks sound alike when spoken, are visually similar, have the same meaning (even if in translation), and/or create the same general commercial impression in the consuming public’s mind, the marks may be considered con-fusingly similar. Similarity in sound, appearance, and/or meaning may be sufficient to support a finding of likelihood of confusion, depending on the relatedness of the goods and/or services.
The following are examples of marks that would be considered similar:
• Sound: Although spelled differently, marks sound alike; i.e., they are “phonetic equivalents.” T. Markey and TEE Marqee.
• Appearance: The marks look very similar, even though the one on the right uses a stylized font. T. Markey and T.Markey.
• Meaning: The marks are similar because, when the Italian word “LUPO” is translated into English, it means “WOLF.” LUPO and WOLF.
• Commercial Impression: The marks convey a similar general meaning and produce the same mental reaction. CITY WOMAN and CITY GIRL.
Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services are related. Conducting a search of your mark before filing an application is important because the results may identify potential problems. After you file for a mark and as part of the application, the USPTO will conduct a search of your mark and let you know the results of that search. If the USPTO finds another registered mark or earlier-filed pending mark confusingly similar to yours for related goods/services, it will refuse to register your mark.
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.
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.
Your application can be filed directly over the Internet using the Trademark Electronic Application System (TEAS). For an initial Principal Register application, three electronic filing options are available: TEAS Plus, TEAS Reduced Fee (TEAS RF), and TEAS Regular. All of these electronic filing options allow you to pay by credit card, electronic funds transfer, or through an existing USPTO deposit account. Electronic filing has many advantages over filing on paper, including: TEAS is available 24 hours a day, 7 days a week (except 2 a.m. to 6 a.m. Sundays when you cannot pay by credit card, although you can create forms and save them for later filing). Most of your information is transferred directly from what you enter into the database and is generally not re-entered by hand at the USPTO.
The TEAS Plus filing option offers the lowest filing fee, at $225 per class of goods or services, and has the strictest requirements. TEAS Plus applicants must comply with the TEAS RF requirements specified below, and also some additional requirements regarding the selection of the identification of goods/services and the type of mark-related information that must be provided at the time of filing.
The TEAS RF filing option has a reduced filing fee of $275 per class of goods or services, and requires the applicant to (1) provide an e-mail address and authorize the USPTO to send e-mail correspondence concerning the application throughout the application process and (2) agree to file electronically through TEAS certain application-related submissions that may be filed during the application process, such as voluntary amendments and responses to Office actions.
The filing fee for a TEAS Regular application is $325 per class of goods or services. An applicant who files a TEAS Plus or TEAS RF application, but does not satisfy the relevant requirements for that filing option, must submit an additional processing fee of $50 per class of goods and/or services.
The information to include in the application is as follows:
• OWNER OF THE MARK (“APPLICANT”);
• NAME AND ADDRESS FOR CORRESPONDENCE;
• DEPICTION OF THE MARK (“THE DRAWING”);
• APPLICATION FILING FEE;
• BASIS FOR FILING;
• SPECIMEN FOR USE-BASED APPLICATIONS;
• SIGNATURE OWNER OF THE MARK (APPLICANT).
The application must be filed in the name of the owner of the mark. The owner of the mark is the person or entity who controls the nature and quality of the goods/services identified by the mark. The owner is not necessarily the name of the person filling out the form. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.
The applicant’s name and street address is required for the USPTO to send communications concerning the application. The applicant is strongly encouraged to provide an e-mail address and authorize the USPTO to correspond electronically, to allow the USPTO to e-mail notices regarding the application. Applicants who file using the TEAS Plus or TEAS RF filing option must authorize e-mail communication.
Every application must include a clear image of one mark (“the drawing”). The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette (OG) and on the registration certificate. If you have variations on the mark that you wish to register, each requires its own separate application and fee.
You must diligently monitor the status of your application. This means you must:
• Check the status of your pending application regularly. We recommend that you check your application’s status every 3 to 4 months. The assigned examining attorney will review your application approximately 3 months after the filing date. The overall registration process may take up to a year, or even longer, depending on several factors; for example, the basis of filing of the application and the completeness of the application at the time of filing.
• Respond to any issued Office action or notice within the appropriate timeframes, generally within 6 months of the issue date.
• Promptly contact the USPTO and request corrective action if you believe something is incorrect in the file.
Approximately 3 months from the date your application is filed, the application is assigned to an examining attorney to determine whether federal law permits registration. The examining attorney will examine the written application, the drawing, and any specimen, to ensure that they satisfy all of the federal legal requirements. The examining attorney may issue a letter (Office action) explaining any reasons for refusing registration or other requirements. If you receive an Office action, you must submit a response within 6 months of the issue date of the Office action. Your filing fee will not be refunded if the application is refused registration.
If no refusals or additional requirements are identified or if all identified issues have been resolved, the examining attorney will approve the mark for publication in the Official Gazette (OG), a weekly online publication. The USPTO will send you a Notice of Publication stating the publication date. After publication in the OG, there is a 30-day period in which the public may object to the registration of the mark by filing an opposition.
If no opposition or extension of time to oppose is filed or if you successfully overcome an opposition, you do not need to take any action for the application to enter the next stage of the process. Absent any opposition-related filings, the USPTO generally will issue a registration certificate about 11 weeks after publication.