Why do I Need a Trademark Registration?

Do I Really Need a Trademark Search?

What About My Domain Name?

The Registration Application Process

How to Use a Trademark

Why do I Need a Trademark Registration?
A trademark is a word, phrase, symbol or design used to identify and distinguish the origin of goods sold. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Most business names are service marks.

Marks are symbols of quality. Consumers are assured that each product or service symbolized by a mark originates from and is the same quality as other goods and services of the mark owner. Trademark and service mark rights arise from either actual use of the mark in interstate commerce or the filing of an application to register a mark in the Patent and Trademark Office ("PTO") based upon the applicant's bona fide intention to use the mark in commerce. Federal registration secures benefits beyond the rights acquired by merely using a mark.

• Registration is the only way to establish rights in a mark if you have not yet had interstate sales of goods or services. An "intent-to-use" application will lock in the filing date as your date of priority of trademark rights when the registration issues
• Registration constitutes "constructive notice" throughout the United States of your ownership of the mark. Any business that adopts a mark confusingly similar to yours cannot later claim ignorance of your rights.
• Registration of your mark may prevent others from using an identical mark as an Internet domain name.
• The "®" symbol may only be used with registered trademarks. Use of the "®" symbol with unregistered marks, or marks that are registered only in states, is a violation of Federal law. Although such violations are common on the Web, the consequences are likely to arise only down the road in the context of infringement litigation or a contested registration. Under certain circumstances, use of the "®" symbol prior to Federal registration may constitute grounds for refusing to issue or canceling a registration. The proper symbols to use for unregistered marks are "tm" for trademarks and "sm" for service marks.
• In the event of an infringement lawsuit, the owner of a registered mark (1) is entitled to the presumption by the court of mark ownership and exclusive use since the application filing date; (2) may be entitled to statutory remedies such as triple damages and attorneys fees in certain cases; (3) will obtain registration "incontestability" upon five years of continuous use and satisfaction of filing requirements; and (4) will be entitled to enforcement rights under certain international treaties.

What about my Internet Domain Name?
InterNIC domain name registration is not enough! An Internet Domain Name, or address, is very often used not only as a means for locating a Web site, but as a symbol of the goods or services sold, published, advertised or transmitted on the Web site.

Domain Names are assigned under the auspices of the Internet Network Information Center, or InterNIC, which was created by the National Science Foundation. InterNIC assigns Domain Names on a first-come, first-served basis and makes no investigation regarding whether a proposed name is likely to be confused with a trademark; it simply ascertains whether a requested address name is already registered in its database. InterNIC registration does not create any rights other than the right to use a particular Domain Name. Even this right is tenuous. If another party provides to InterNIC proof of Federal registration of a trademark that is identical to a Domain Name and the Domain Name owner does not own a Federal trademark registration, the Domain Name may be placed on "hold" rendering it unavailable to the Domain Name owner. If you use your Domain Name to represent your business, InterNIC registration provides no protection of the good will and reputation that your Domain Name has come to represent. Federal trademark registration should be considered.

What's Involved In the Application Process?
To the surprise of many people, Federal trademark and service mark registration is not a simple prospect. The entire process typically takes a year or more. Filing an application starts a lengthy process of examination, negotiation, written correspondence and filings that is commonly referred to as application "prosecution." Law firms seldom, if ever, include within their trademark application fees the additional fees for prosecution. These fees are usually charged at hourly rates of $175 and up (you pay for each hour the law firm says it worked). Filing companies and paralegals cannot legally represent an applicant before the U.S. Patent and Trademark Office ("PTO") and you are, in that case, on your own. Our experienced trademark attorneys prosecute your application as well as prepare and file it. All of these services are included within our registration services fee.

When an application is received, the PTO reviews it to determine if it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the PTO assigns it a serial number and sends the applicant's attorney an official receipt.

Several months after filing, an examining attorney at the PTO reviews the application and determines whether the mark may be registered. If the examining attorney determines that the mark cannot be registered, the examining attorney will issue a letter (an "Office Action") listing any grounds for refusal. The most common reasons for refusal are (1) likelihood of confusion between the applicant's mark and a registered mark, or (2) the mark is merely descriptive of the applicant's goods or services. The examining attorney may also contact the applicant's attorney by telephone. The applicant's attorney must respond to any written objections within six months of the mailing date of the letter by written legal and factual arguments that cite appropriate statutes, regulations, court cases and PTO determinations, or the application will be abandoned. If the attorney's response does not overcome all objections, the examining attorney will issue a final refusal.

If there are no objections, or if the applicant's attorney overcomes all objections, the examining attorney will approve the mark for publication in the PTO's Official Gazette. Upon publication, any party that believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a lawsuit in the Federal courts, but is held before the Trademark Trial and Appeal Board.

If no opposition is filed, or the applicant prevails in an opposition proceeding, the PTO will register the mark and issue a Registration Certificate several months after the date the mark was published or the opposition concluded.

If the application was filed before any products or services were sold in interstate commerce, the PTO will instead issue a Notice of Allowance. The applicant then has six months from the date of the Notice of Allowance to either (1) use the mark in interstate commerce and submit a Statement of Use, or (2) request a six month Extension of Time to File a Statement of Use. The applicant may request additional extensions of time under certain circumstances. If the Statement of Use is filed and approved, the PTO will then issue the Registration Certificate. The application process is a lengthy, interactive process that typically takes 18 months or more to complete.

How to Use a Trademark
Registration is only the first step in maintaining your exclusive right to your mark. A trademark must be properly used as well. Widespread misuse of your mark can result in it becoming generic or diluted. A generic name is a common name of the product or service the mark identifies. If a mark becomes generic it can be used by anyone. For example, "escalator" is a generic term for moving stairs. However, at one time it was a trademark representing the products of one company. Widespread use of "escalator" as a name for moving stairs resulted in it becoming generic and making it available to anyone.

A. Trademarks should be used as adjectives, not a nouns or verbs:

• "Kleenex tissues" NOT "a Kleenex"
• "Apple computers" NOT "an Apple"
• "a Xerox copy" NOT "Xerox this document"

B. Use the proper trademark symbol:

• ® for trademarks or service marks registered by the U.S. Patent and Trademark Office
• TM for unregistered trademarks
• SM for unregistered service marks

C. Use marks consistently. Do not change spellings or add dashes, slashes, etc.

D. When using a trademark in text, use underlining, bold, capitalizing or italics to separate it from text.

E. Use notices:

• "Trademarks Online is a service mark of Trademarks Online, Inc."
• "JEEP is a registered trademark of the Chrysler Corporation."