A trademark may be a name, a word, a phrase, a sign, a symbol, logo, design, image, or a combination of these elements that distinguishes your product or service from that of your competitors. A trademark identifies the source or origin of goods or services and distinguishes it from a competitor's product or services.
More than one trademark may be used to identify the origin or source of goods or services. For example, Coca-Cola®, Coke® and It's the Real Thing® are registered trademarks of the Coca Cola Company and are used to identify the Coca Cola beverage.
A trademark represents the goodwill of a product or service. The owner of the trademark has a right to prevent others from using the same or a confusingly similar work for that class of goods or services.
What is a service mark?
When a trademark is used in association with services of a product and not goods, the mark is a service mark.
What is a trade dress?
A trade dress refers to the visual appearance of the product - its packaging or image. It does not refer to words, logos, etc. A trade dress may also be protected under the Lanham Act.
What is a certification mark?
A certification mark is a word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner's permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
What is a generic mark?
A generic mark cannot be protected because it describes a group of goods and services and cannot be distinguished from one or the other. Marks such Xerox, Q-tips etc., have become generic.
How do I choose an appropriate trademark?
The trademark must be distinguishable from other trademarks, i.e., it must not be merely ornamental or decorative in nature; or generic or immoral, deceptive, or scandalous. It must not falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. It must not be a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits. It must not be merely descriptive or geographically descriptive. One cannot register a trade name or a surname.
How do I acquire rights to a trademark?
You can acquire rights to a trademark by simply being the first to use it on your product or services. However, you acquire the exclusive right to use your trademark by registering it. Trademark rights accrue by first use, not by first registration.
What is benefit of registration of trademark?
Registration of a trademark allows the owner the exclusive right to use the trademark throughout the United States on the goods or services associated with the trademark. This means that the owner of the trademark has a better chance to prevail in a suit for infringement of the trademark against a trademark that is not registered. Also, a registered trademark is readily identified in a trademark search which decreases the chances of the selection and use of the trademark by another entity. Furthermore, the symbol ® may only be used on goods or services that are federally registered. In addition, after 5 years of continuous use of a federally registered trademark, the trademark becomes "incontestable" which limits an attack to the invalidity of the trademark by a third party.
How long does the registration of the trademark last?
The certificate granted for a trademark registration is for an initial term of 10 years. There is the possibility that the trademark registration may lapse before the ten-year period expires, unless the owner files a statement within six years of the registration date (called a Section 8 Affidavit) stating that the mark is still in use in commerce. The original trademark registration may be renewed indefinitely for additional ten-year periods if the owner files the required renewal trademark applications (called a Section 9 Affidavit) with the prescribed fee with the U.S.PTO. The failure to renew a trademark registration will not cancel all the rights of the owner, only the special rights pertaining to the federal registration of a trademark.
Once the trademark application has been filed in the U.S.PTO, the trademark application will be assigned for examination to a trademark examiner in approximately 4-5 months. However, the critical date for determining trademark registrability is your filing date, NOT the actual trademark examination date. The overall process, from the time of initial filing of the trademark to final registration of the trademark, can take 13-18 months and even longer depending on many factors, e.g., the correctness of the original filing of the trademark or the type of trademark application filed.
How much does it cost to file for registration of a trademark?
The U.S.PTO charges a trademark filing fee of $375 (subject to change by U.S.PTO) per class of goods and services chosen for paper applications and a fee for $275 (subject to change by U.S.PTO) per class for electronic filing of the trademark application. Our trademark attorney files all trademark applications electronically.
What is the next step of the trademark registration?
If the trademark was filed under intent to use the trademark, 6 months after issue date of the Notice of Allowance of the trademark, a Statement of use or if the trademark is not yet being used in commerce. A Request For Extension Of Time must be filed. If a Request For Extension is filed, a new Request For Extension must be filed every six months until the statement of use is filed. You can file a total of five extension requests. Failure to file the required document during this period will result in abandonment of the trademark application
How long does a trademark remain in effect?
A trademark remains in effect as long as the following declaration and maintenance fees is paid between the 5th and 6th year from date of registration of the trademark, a Declaration Of Continued Use has to be filed with a fee of $100/class; and thereafter every 10 years (between the 9th and 10th year, 19th and 20th year, etc.) a Combined Declaration Of Continued Use With Section 8 Renewal has to be fled with a renewal fee of $500/class. Also, a Declaration of Incontestability with a fee of $200 may be optionally filed between the 5th and 6th year after registration of the trademark under Section 15 if the mark has been in continuous use for 5 years after registration with no known pending litigation against the trademark in any State or Federal court or TTAB (Trademark Trial & Appeal Board). The above mentioned fees and timelines are subject to change by the U.S.PTO.