TRADEMARKS AND SERVICE MARKS

What is a trademark or service mark?

• A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, 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 a product.

Is trademark registration required?

No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages:

• 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.

When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark (via trademark registration or otherwise), you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the United States Patent & Trademark Office (“USPTO”). However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

HOW DO I REGISTER A TRADEMARK?

Basis for filing:

The application should include your “basis” for filing. Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future. Knowing which one applies to your situation is vital when completing trademark registration in compliance with trademark law.

TRADEMARK SEARCHES

State Trademark Search

Information regarding state trademarks and searches is typically handled by the Secretary of State.

Common Law Trademark Search

Unregistered trademarks can be more difficult to find because of their very nature of not being registered. A trademark that has not been registered with the federal government is a common law trademark. Information regarding common law trademarks is done by using various online search engines.

Trademark Search Online

A very basic federal trademark search can be conducted online at the United States Patent and Trademark Office’s (USPTO) official website at www.uspto.gov.