Trademarks Generally

What is a trademark?

“Trademark” refers generally to the four types of marks that can be registered with the USPTO: trademarks, service marks, certification marks, and collective marks. Since registration confers essentially the same benefits for all types of marks, the term “trademark” is often used to generally apply to trademarks, service marks, certification marks, and collective marks.

A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Trademarks are used by their owners to identify goods (physical commodities that are natural, manufactured, or produced) sold, otherwise transported, or distributed via interstate commerce. In short, a trademark is a brand name.

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services. Service marks are used by their owners to identify services (intangible activities performed by one person for the benefit of others) for pay or otherwise.

A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services. A collective membership mark is any word, phrase, symbol or design, or a combination thereof which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members.

A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others.

Certification marks and collective marks can be registered in the USPTO, but occur infrequently and have some different requirements for registration than the more commonly applied for trademarks and service marks.

How are trademarks different from copyrights?

A copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

A copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Unlike trademarks, copyrights are registered by the Library of Congress’ Copyright Office.

Many successful businesses and individuals combine copyright, patent, and trademark protection to create a comprehensive intellectual property portfolio. For more information regarding the forms of intellectual property protection best suited to protect your needs, kindly contact Nyman IP at hello@nymanip.com or 312.724.9938.

What is “interstate commerce”?

For goods, “interstate commerce” generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involves rendering a service to customers in another state or rendering a service that affects interstate commerce. Nonexclusive examples of services affecting interstate commerce include restaurants, gas stations, and hotels.

Can I apply for federal trademark registration if my mark is not presently being used in commerce?

In short, yes. A trademark application can be filed if a mark is being used, or intended to be used, in commerce to identify and distinguish the goods or services associated with the mark. The basic difference between “use” and “intent to use” is whether the mark is currently being used on all the goods/services for which registration is sought. If a mark is already used in commerce, a federal trademark application can be filed alleging “use in commerce.” If the mark is not yet used in commerce, but intend to be used in the future, a federal trademark application can be filed alleging “intent to use.” An “intent to use” basis will require an additional forms and fees beyond that which is required for federal trademark applications alleging “use in commerce.”

What is the deal with the TM, SM, and Circle-R (®) symbols?

Use of the TM and SM symbols may be governed by local, state, or foreign laws to claim rights to a mark. In the United States, the circle-R symbol (®) indicates federal registration and may be used only once the mark is actually registered in the USPTO. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. While a federal trademark application is pending, applicants should claim their rights using the TM and SM designations, as the circle-R cannot be used before the mark has actually become registered.

In summary, three important restrictions exist for use of the circle-R (®) symbol:

(1) The circle-R may only be used after the mark is registered. The circle-R may not be used use during the application process.

(2) The circle-R may only be used on or in connection with the goods and services listed in the federal registration.

(3) The circle-R may only be used while the registration is still alive. The circle-R may not be used if a federal registration expires, is canceled, or is otherwise not maintained.

Without federal registration, businesses and individuals may use the “TM” (trademark) or “SM” (service mark) designations to alert the public to a claim of a “common-law” mark. No registration is necessary to use a “TM” or “SM” symbol. In fact, the “TM” and “SM” symbols can be used even if the USPTO refuses to register a mark.

Why bother with federal trademark registration?

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. However, federal registration on the Principal Register provides some very important benefits, such as:

Constructive notice nationwide of the trademark owner’s claim.

Evidence of ownership of the trademark.

Jurisdiction of federal courts may be invoked.

Registration can be used as a basis for obtaining registration in foreign countries.

Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

What is the difference between the Principal Register and the Supplemental Register?

The Principal Register is a primary trademark register of the U.S. Patent and Trademark Office. When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Trademark Act.

The Supplemental Register is a secondary trademark register for the U.S. Patent and Trademark Office. The Supplemental Register allows for registration of certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services. Marks registered on the Supplemental Register receive protection from conflicting marks and other protections, but are excluded from receiving certain advantages of the Trademark Act.

Registration common on the Supplemental Register permit a registrant to use the circle-R registration symbol (®), provides access to federal court for enforcement of the mark,  is protected against registration of a confusingly similar mark under Trademark Act Section 2(d), and may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements. However, registration on the Supplemental Register does not convey legal presumptions of validity, ownership, and exclusive rights to use the mark, as afforded by registration on the Principal Register.

Can I register the name of my band or musical group?

Generally, yes. A band name may function as a service mark for federal registration purposes, for example, if it is used to identify live performances.

May I assign or transfer the ownership of my trademark to someone else?

Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee.

What are trademark monitoring and document filing services?

Applicants for federal trademark registration often receive unsolicited communications from companies requesting fees for trademark-related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies that offer these services are not affiliated or associated with the USPTO or any other federal agency. Great caution should be exercised before paying any money to these solicitors. If you have hired a trademark attorney to assist with your federal trademark application, any correspondence you may receive directly (addressed to you, not your legal representative) should be treated with great suspicion.

Should I conduct a search for similar trademarks before filing an application?

It is advisable to conduct a search before filing your application. Registration of a mark by the U.S. Patent and Trademark Office is not guaranteed. A comprehensive trademark search allows a potential applicant to assess the trademark landscape for their proposed mark, providing insight to possible challenges with federal registration. Commissioning a comprehensive trademark search and option additionally allows a business or individual to identify and evaluate potential opposition or infringement issues, facilitating an informed decision as to whether to continue a branding strategy for a proposed mark. Nyman IP provides a comprehensive trademark search, analysis, and opinion package for clients desiring detailed knowledge of a proposed mark prior to embarking on extensive branding or marketing campaigns.

Does the USPTO determine trademark infringement?

The USPTO examines trademark applications to determine if there is likelihood of confusion between the mark in the application and a previously registered trademark or another mark in a prior-pending application. If no conflict is found and all other statutory requirements are met, the examining attorney can approve the mark for publication. The USPTO has no powers of enforcement concerning the use of trademarks in the marketplace.

What if someone else is using my registered mark on related goods and services?

You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting a law firm or attorney practicing in trademark law, such as Nyman IP at hello@nymanip.com or 312.724.9938. Time can be of the essence.

Should I hire an attorney?

The trademark application process is complex. Although not required, most applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration. A private trademark attorney (not associated with the USPTO) may help you avoid many potential pitfalls.

For more information relating to representation for preparation, filing, examining, and maintaining your federal trademark registration, contact a trademark law firm such as Nyman IP at hello@nymanip.com or 312.487.2532.