A “trademark” is a word, phrase, symbol, design, or any combination of those things, that identifies the source of particular goods. A “service mark” identifies the source of particular services rather than goods. The terms “trademark” and “mark” are often used for both trademarks and service marks.
Examples of trademarks:
In the United States, trademark rights are created through the bona fide use of a mark in connection with the sale of goods or services in interstate commerce. Registration of a mark is optional in the U.S., but registration can strengthen and enhance trademark rights (see Registration below).
A trademark is a brand name, logo, symbol, or design that identifies the source of goods or services. Trademark rights may exist whether or not a trademark is registered with the U.S. Patent and Trademark Office (USPTO).
Copyright protects original works of authorship, such as text, graphical or musical works, or computer software, that has been fixed in a tangible medium of expression. Copyrights may be registered with the U.S. Copyright Office.
Utility patents protect useful processes, machines, and other useful inventions. Unlike trademark rights or copyrights, patent rights are acquired only through the issuance of letters patents by the USPTO.
Design patents protect non-functional, ornamental features of useful objects. Like utility patents, design patent rights are available only when granted by the USPTO.
The strength of a trademark and the scope of protection granted to the mark are based on the degree of distinctiveness of the mark. Generic and descriptive marks are generally the weakest type of marks (for example, COMPUTER TRAINING CENTER for computer training centers, or EASY-WIPES for disposable washcloths), and arbitrary or fanciful marks are generally the strongest (APPLE for computers, HAAGEN DAZS for ice cream, OREO for cookies).
How do I know if anyone else is infringing my trademark rights?
Trademark infringement exists when someone adopts a trademark that creates a “likelihood of confusion” among consumers as to the source of its goods or services and those of another, senior trademark user, due to similarities between the parties’ marks. Factors considered include:
In addition to registering your trademark, other ways to preserve and strengthen your trademark rights include:
The benefits of registration in the USPTO include:
The USPTO accepts applications for trademark registration based on either the trademark owner’s existing use of the mark (a “use based” application) or on the applicant’s bona fide intent to use the mark in commerce (an “intent to use” or ITU application). Trademark applications in the USPTO are examined by the USPTO’s trained trademark examiners to ensure that the mark is entitled to registration. The application process can be lengthy: up to a year or more for a use-based application, and at least a year for an ITU application.
Use based applications
Use-based applications require the following steps:
An ITU application does not require that the mark has been used before the application is filed, but is based on the applicant’s good faith intention to use the mark in commerce at a future date. The initial ITU application does not require a specimen, or sworn statement that the mark is in use; rather, it requires the applicant’s sworn statement that he or she has a bona fide intention to use the mark in the future. The ITU application process is otherwise similar to a use-based application, up to the point of publication for opposition. Following publication, an ITU application follows these additional steps:
Trademark rights can last perpetually if properly maintained. In the United States, a trademark owner may maintain a registration by filing a Declaration of Continued Use (a sworn statement confirming use of the mark in commerce) or, in some cases, a Declaration of Excusable Nonuse in the sixth year after registration. A trademark owner must continue to file a Declaration of Continued Use (or Excusable Nonuse) on the ten-year anniversary of the initial registration, and every ten years thereafter. A trademark owner must also file an Application for Renewal on the ten-year anniversary of registration and every ten years thereafter, and must pay the required fee. The failure to timely maintain or renew a trademark registration will result in the expiration or cancellation of the registration, but will not affect common law trademark rights.
Different countries have different laws relating to the protection of trademark rights, and many require registration in order to enforce your trademark rights. Unlike the U.S., where priority of trademark rights is based on use of a mark, in many other countries priority of trademark rights is determined by the first to register the mark. The procedure for registering a trademark does not vary a great deal from country to country: it nearly always consists of an application and examination process, an opportunity for objection by third parties, and the issuance of a registration certificate. Sometimes, a separate application must be filed in each country where you seek to protect it; in recent years, however, international trademark treaties and conventions have resulted in much more efficient means of registering in multiple countries, such as the countries of the EU.
Please contact a Gray Plant Mooty trademark attorney to request information about registering your mark in specific countries.
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