What is a trademark?
A trademark is a word, phrase, symbol or design, or a combination of these elements, that identifies and distinguishes the source of goods of one party from those of other parties. A person or company may have multiple trademarks. If you wish to pursue a federal trademark for your business name, logo and slogan, for example, each of these would be separate applications within the same class or classes.
What is a service mark?
A service mark is the same as a trademark, except that it relates to services rather than goods. A business providing a product would register a trade mark, while a business providing a service would register a service mark.
In the following, as on the USPTO website, the word “trademark” will refer to both trademarks and service marks.
What does a trademark registration do for your business?
At the federal level, a trademark registration (if approved) generally grants you nationwide priority over all other users of the same mark in the same class or classes in which you are registered, other than against third parties who validly used the mark prior to your registration (see more below) and continuously use the mark thereafter (i.e., prior users). A prior user will have priority over you, but only within the geographical area in which it operated prior to your registration date (or, if you used the mark first, prior to your application date) and possible a “zone of expansion”. Outside of that area, a federal registration gives you priority, even against a prior user. If the prior user could demonstrate it operated nationwide prior to your registration and prior to your own nationwide use (if applicable), it would continue to have nationwide priority notwithstanding your application. In addition, it could challenge your application on those grounds. For more subtleties about the ranking of priorities, click here for an article about prior users from one of the top intellectual property firms nationwide.
A “trademark class” refers to the goods or services within that specific class. Class 41, for example, includes education; providing of training; entertainment; sporting and cultural activities. Click here for a full listing of trademark classes. Sometimes businesses operate in more than one class, each of which will require a separate application fee with the USPTO.
You may see that some trademark registration companies (not lawyers) state that a federal trademark gives you “exclusive rights” to the mark nationwide. As stated above, if there are prior users with “common law rights” or state registrations, this may not be correct. You should discuss this matter with your trademark attorney prior to filing a federal registration to understand exactly what your federal trademark will protect.
For state registrations, similar protection is provided, but at a state level.
Can anyone register a trademark for any name, logo, etc.?
Only an owner of a mark can register it, and you cannot register a mark that is already validly registered and in use by another party. In addition, there are certain requirements for trademark registration, which are spelled out in the USPTO publication referenced below. One notable requirement is that you need to be using the trademark at the time of the application or have an intent to use it. If you file an intent-to-use application, you will need to follow up with a statement of use within six months of the USPTO’s notice of allowance. You also must either use the mark in “commerce” or have an intent to use it in commerce. Commerce means interstate commerce, not sales within a single U.S. state. If you are unsure whether you are using or will use your mark in commerce, it is advisable to consult a trademark attorney.
What is the first step in seeking a trademark?
The first step is often to conduct a trademark search to determine whether any third parties are already using the mark, or a variation of it, in the same or a similar manner. This search serves two purposes. First, it informs you about the availability of the mark. Second, it helps you avoid possible infringement of a third party mark.
You can and should conduct an initial search in TESS, the database of the USPTO, to uncover any prior federal registrations, including ones that are prior, pending, abandoned or dead. The name, logo or other mark and any common variants should be searched. In addition, a comprehensive search will include all state registrations and also uncover common law uses by searching data aggregators on business names, both generally and in your particular industry, as well as domain name and social media searches. The depth of information provided by a search company often correlates to the fee charged.
Where can I find more information?
Since trademarks are a money-maker for the U.S. government, there is plentiful information on the USPTO website. I would start here: Basic Facts About Trademarks. In addition, if you would like to join my mailing list or bookmark my “trademarks” category, I will post more information here and at my website from time to time.
Law Office of Anne Marie Segal provides legal counsel to businesses and individuals. Please visit www.amscounsel.com for more information. None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. This is a public forum. Please do not post confidential or fact-specific information regarding your legal questions on this site.