For our free comprehensive e-book “Winning with Trademarks” click here.Â
What’s the difference between Patents, Trademarks, Servicemarks, and Copyrights?
It is common for people to confuse patents, copyrights, and trademarks. Although there may be some similarities among these kinds of intellectual property protection, they are different and serve different purposes.
What is a Patent?
Patents protect new, useful and non-obvious inventions. A patent for an invention is the grant of a property right to the owner of the patent, issued by the U.S. Patent and Trademark Office (USPTO). The rights conferred by a patent grant are the rights to exclude others from making, using, offering for sale, selling or importing the invention.
What is a Copyright?
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authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.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. The 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. Copyrights are registered with the Copyright Office of the Library of Congress.
What is a Trademark?
There are two basic types of marks: trademarks and service marks. A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. You can use trademark protection to prevent others from copying your mark in an attempt to lure customers into purchasing their products or services, thinking it is yours. The rights in a mark can be used to maintain yourself as the exclusive source of a product or service. The rights to a mark are an asset that can be sold or licensed to others.
What can be Trademarked?
A business name, phrase or logo may be federally registered as a trademark if it is, fanciful, arbitrary or suggestive.
Fanciful - Fanciful marks are generally marks without a dictionary meaning. Examples include, Exxon and Xerox.
Arbitrary – Arbitrary marks have nothing to do with the goods or services with which they are associated. Examples include, Diesel for clothing and Apple for computers.
Suggestive – Suggestive marks indirectly refer to the goods or services with which they are associated. Examples include Greyhound for bus services indicating swiftness.
Fanciful, arbitrary and suggestive marks are good choices when choosing a potential trademark or service mark.
Marks to Avoid When Choosing a Trademark or Service Mark:
Descriptive – Descriptive marks are marks that describe the goods or services with which they are associated. Generally, descriptive marks are not registerable. Descriptive marks may, however, become registerable upon a showing of what’s called secondary meaning.
Generic – Generic words are common words that describe an entire class of goods or services. These words do not serve as an indication of the source of goods or services and should be avoided when choosing a potential mark.
Geographically Misdescriptive or Deceptively Misdescriptive Marks – These types of marks are not registerable without a showing of secondary meaning.
Scandalous or Immoral Marks – These are marks that offend the conscience.
Surnames – Surnames are not registerable without a showing of secondary meaning.
Deceptive Marks – Deceptive marks are not registerable.
Do I need to be using my Trademark to Register it?
No, but you must have a bona fide intent to use the mark in interstate commerce. If you have not yet used your mark, you may file an intent to use application. Additionally, the intent to use applicant must later file a Statement of Use when the mark is used in interstate commerce. There are additional filing fees associated with filing a Statement of Use. See our trademark fees.
Trademark Protection
Generally, trademark protection exists on three levels: Federal registration, State registration, and by common law. Federal registration can be based on either actual use of the mark in interstate commerce or on a bona fide intent to use the mark in future interstate commerce. One advantage of Federal registration is that the registrant obtains national priority rights from the date the trademark application is filed. Without a Federal registration, the owner’s rights are limited to the areas where the mark has actually been used and the natural areas of expansion. Your business name and logo and the goodwill associated with them are valuable assets. A federally registered trademark can be a valuable asset if you decide to sell your business. Federal trademark registration provides comprehensive protection and enables you to prevent others from using any mark which is the same or confusingly similar to your trademark.
Obtaining a Federal trademark registration can provide other significant advantages such as:
- Constructive 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 the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
- the ability to bring an action concerning the mark in federal court;
- the use of the U.S registration as a basis to obtain registration in foreign countries and the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Rights in a federally-registered trademark can last indefinitely, provided the trademark owner (1) continues to use the mark on or in connection with the goods and/or services in the registration, and (2) files all necessary subsequent documentation in the USPTO at the appropriate times. For example, to keep your trademark from being cancelled, it is necessary to file a Section 8 Declaration of Use between the fifth and sixth year of registration. Subsequent filings must be made on each 10 year anniversary of registration. Failure to maintain your trademark can result in the loss of your trademark or unnecessarily limiting your rights.
Use of the trademark symbols TM, SM and ®
Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
How do I obtain a Federal Trademark?
Trademark Searching: Whether or not you decide to pursue a federal trademark registration, it is advisable to perform a professional trademark search in order to determine if your mark is eligible for adoption, use and federal registration. The search will also alert you as to whether your mark would be infringing upon another’s trademark rights. If your mark contains both words and designs, it is wise to conduct searches for both. SUTTON LAW CENTER offers two types of trademark searching: a preliminary in-house trademark search, and a more comprehensive trademark search that is performed by a professional trademark search firm.
The scope of the preliminary in-house trademark search only covers pending, registered and dead federal trademarks that are included in the USPTO database. This search may be used to determine if there are any obvious conflicts with the mark and whether your intended mark is already in existence or is too close to another mark filed with the USPTO.
The scope of the comprehensive trademark search includes federal trademark databases, state trademark databases, common law databases, corporation and internet databases, and other information sources which may be used to determine whether your proposed mark will be in conflict with any other existing marks. We strongly recommend a comprehensive search (federal, state and common law) be performed on any mark for which you intend to invest a substantial amount of money, or for which it would be difficult to change the mark in the future.
Applying for Federal Registration:
Assuming that the search results look promising, a trademark application may be prepared and filed with the USPTO. The application must specify the mark that is to be registered, and identify the goods and/or services which are/will be used in connection with the mark. Depending upon the goods/services identified, it may be necessary to apply for Federal trademark registration for the proposed mark in more than one class of goods/services. Currently the USPTO fee for applying for trademark registration is $335 per class.
Once your application is filed at the USPTO, the USPTO will issue a filing receipt. A trademark examining attorney will examine the application, and may issue what’s called an office action which may include one or more objections to registration of the mark. An appropriate response to the office action must then be prepared and filed to overcome the examining attorney’s objections. In some cases, the examining attorney will maintain his or her objections even after considering the filed response, effectively denying registration of the proposed mark. However, assuming that the application passes the examination phase, the mark will be published in the Official Gazette. Publication in the Official Gazette gives interested parties an opportunity to file a Notice of Opposition or request for extension to file a Notice of Opposition. If there is no opposition or the opposition is unsuccessful, the USPTO will issue a Certificate of Registration. For an intent to use (ITU) application, the USPTO will issue a Notice of Allowance. Within 6 months of the Notice of Allowance, a statement of use must be filed. Once the Notice of Allowance is accepted, the Certificate of Registration will issue.
How Long Does It Take For the USPTO to Process My Application?
Once a trademark application is filed, the USPTO may take anywhere from 8 to 18 months to process your application for registration. However, the most important date is the filing date, if registered, protection dates back to your filing date. During the application process, you will be provided with routine updates on the status of your trademark and are encouraged to contact us.
Where can I obtain more information on trademarks?
To receive our free e-book “Winning with Trademarks”, click here.Â
