What is a trademark?
A trademark is an identifying word, name, phrase, symbol, design or any combination thereof used to distinguish the source of products or services from those of others.
How are trademark rights established?
Trademark rights arise out of use, not registration. Trademark rights may be based on unregistered common law use, or through, federal registration and/or state registration. To obtain federal registration and the benefits that inure with such a registration, the trademark must be used in connection with goods or services in interstate commerce.
What are the benefits of obtaining federal trademark registration?
Federal trademark registration offers many benefits. These benefits include, but are not limited to:
- The presumption of nationwide notice of ownership of the mark as of the date of registration
- The presumption of validity and ownership of the trademark in connection with the goods and services in the registration
- The right to use the ® symbol with the trademark, when the mark is used in connection with the registered goods and services.
- The opportunity to bring suit in federal court
- Prevents the registration of third-party trademarks that are confusingly similar. Once a mark is registered, the USPTO has a duty to prevent the registration of subsequently filed confusingly similar marks on the Federal Register
- The option to record the registration with US Customs and Border Patrol, which will then will block imports of counterfeit or infringing goods.
Do registered trademarks have a specific term?
Yes. A trademark owner is first required to file a Declaration of Use between the fifth and sixth year after registration. Subsequently, the trademark owner will be required to file Declarations of Use and Renewals 10 years after the date of registration, and every 10 years thereafter. The registration will expire if these Declarations are not filed. Ultimately, a trademark registration may exist indefinitely, as long as the trademark owner is using the mark in interstate commerce and timely files the requisite renewal documents.
How do you obtain a trademark registration?
The process for obtaining a federal trademark begins with filing an application with the United States Patent and Trademark Office (USPTO). A Trademark Examining Attorney at the USPTO will then examine the application to determine whether it complies with all applicable rules and statutes. State registrations are available through equivalent state governing bodies that may or may not examine the application. Common law rights do not have any registration process.
Who can apply for a trademark or service mark registration?
The only person or entity that can file an application for registration is the legal owner of the trademark, meaning, the party that controls the nature and quality of the goods and services offered under the trademark. An application filed by anyone other than the legal owner will be void.
Do you need to do anything to preserve a trademark?
Yes, you must continue to use the trademark in connection with the registered goods and/or services in interstate commerce. For federally registered marks, you must file all necessary documentation with the USPTO at set intervals.
Can I sell or license a trademark or service mark?
Yes, however, there are certain conditions that apply to any such agreement as the rights in the trademark stem from the nature and quality of the goods and services.
Is a U.S. trademark protected internationally?
No. A U.S. registered mark does not have foreign protection and you must file in each country for national protection. There are some pathways to ease the filing in each country as described below.
Can a U.S. trademark owner obtain international protection?
Yes. There are international treaties that address foreign registrations such as the Madrid Protocol, which provides for the filing of one international application to seek registration within the member countries. However, each country must still grant the individual registration.
For additional information, visit the USPTO website
The above is for informational purposes only and is not legal advice. Neither the availability, operation, transmission, receipt nor use of this information is intended to create, or constitute formation of an attorney-client relationship or any other special relationship or privilege. You should not rely upon this information for any purpose without seeking legal advice from a licensed attorney.