Trademarks

What is a trademark or service mark?

A trademark is any word, name, symbol, or device, or any combination thereof, that is used in commerce to identify the goods or services of one party and distinguish those goods or services from those of another. Simply stated, a trademark is a source identifier.

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

Typical examples of trademarks include:

  • Logos or designs
  • Names
  • Slogans or tag lines
  • Distinctive product configurations and product packaging

How are Trademark Rights Created?

Trademark rights are established based on first use of the mark in commerce on the goods or in connection with the services. The first person to use a particular word, name, symbol or device, or a combination thereof, in commerce will acquire trademark rights in the mark.

Is registration of a mark required?

No. However, both federal and state trademark registrations can be obtained.

Are there advantages to having a federal trademark registration?

Yes. Owning a federal trademark registration on the Principal Register provides important advantages:

  • constructive nationwide 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 exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • the ability to use the U.S registration as a basis to obtain registration in foreign countries;
  • the ability to record the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods; and
  • the registered mark may become incontestable on all but a few bases after a period of time

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

After use of the mark commences, the owner may use the “tm” (trademark) or “sm” (service mark) designation to alert the public to the claim or ownership, regardless of whether the owner has filed an application seeking registration with the USPTO. However, the federal registration symbol “®” may not be used unless and until the USPTO actually registers the mark, and not while an application is pending.

What is the duration of a federal trademark registration?

Ten years, subject to renewal. Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times.

What is the proper grammatical usage of a trademark?

Always use trademarks as adjectives, not verbs or nouns. As an example, the maker of SUPERIOR lawn mowers must always refer to its lawn mower as “a SUPERIOR mower” and never as “a SUPERIOR” by itself.

How should we choose a trademark?

The process of choosing a trademark should include a trademark clearance search. If a clearance search is not made, there is a risk of infringing the rights of another trademark owner. A trademark clearance search typically includes a search of state and federal trademark applications and registrations, business directories, electronic nationwide yellow page listings, company names, domain names and the internet.