What Are Trademarks and Service Marks?
Whereas trademarks are used in connection with goods, service marks are used in commerce to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.
Both trademarks and service marks are types of intellectual property and both may be referred to as a “mark” (although often, the term “trademark” is used interchangeably for both trademarks and service marks). A mark can be protected by applying for registration of the mark with the United States Patent and Trademark Office (USPTO), which examines trademark applications and issues federal registrations for trademarks and service marks in the United States. To be eligible for federal registration with the USPTO, a mark must be in use in interstate commerce. A federal registration is a grant of statutory rights under federal law in a trademark or service mark to the user of the mark.
What Types of Terms Are Registrable as a Trademark?
Unlike generic terms, distinctive terms are registrable with the USPTO as trademarks. Such distinctive terms fall into four categories of distinctiveness: (i) descriptive marks (e.g., WORLD BOOK for encyclopedias); (ii) suggestive marks (e.g., Q-TIPS for cotton-tipped swabs); (iii) arbitrary marks (e.g., APPLE for computers); and (iv) fanciful marks (e.g., KODAK for cameras).
Descriptive marks are capable of acquiring distinctiveness and are only registrable on the USPTO’s Principal Register once they acquire secondary meaning in their use in commerce but may be registrable on the USPTO’s Supplemental Register until such secondary meaning is acquired. Fanciful marks, also known as coined terms, are the most distinctive marks as they consist of “made up” or non-existent words. Of the two intermediate categories, arbitrary marks, which consist of real words used with goods or services unrelated to their normal understood meanings, are more distinctive, and therefore more easily registrable, than suggestive marks, which only suggest rather than describe the qualities or characteristics of the goods or services with which they are used.
What Types of Marks Will Not Be Registered By the USPTO?
Must a Trademark Be in Use Before an Application Is Filed?
The law related to the use in commerce requirement varies in foreign countries and jurisdictions. Please contact one of our attorneys if you are not yet using your mark in commerce in a particular foreign country in which you wish to obtain a registration to protect your mark against unauthorized users.
What Types of Use Satisfy the Use in Commerce Requirement for Registration of a Mark?
With respect to services, a mark is deemed to be in use in commerce when (i) it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or (ii) the services are rendered in more than one state or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
Before a mark can become registered, the date of first use of the mark anywhere, the date of first use of the mark in interstate commerce, and at least one specimen evidencing use of the mark in commerce must be submitted to the USPTO.
Should I Conduct a Trademark Search?
Although conducting a trademark search is strongly recommended prior to both adopting and using a mark as well as before filing a federal trademark application, such searches are optional. Note, however, that the USPTO conducts trademark searches as part of its routine examination of each trademark application.
What Happens After a Trademark Application Is Filed?
Rejections are raised by the examining attorney in USPTO-issued correspondence known as office actions. The trademark applicant is provided with an opportunity to respond to an attempt to overcome the rejections through argument, amendment of certain parts of the application (but not the mark itself), or a combination of both. Several office actions may be received in connection with a trademark application before a federal registration for a mark is issued. Once the examining attorney is satisfied that all issues raised in the rejections have been addressed and overcome, the application may be allowed after which it may ultimately issue as a federal registration.
If the rejections in a USPTO office action cannot be overcome, other options may be available for continuing the pursuit of trademark protection for the mark. Where a response to an office action is not filed within the allotted time for responding, the application will become abandoned.
How Long Is the Life of a Trademark Registration?
Can Rights to a Trademark Be Granted to Another Person or Business Entity?
If certain legal requirements are met, ownership in a trademark application also can be transferred to another person or to a business entity by a trademark assignment.
Without transferring ownership rights in a trademark registration or application (and the mark identified therein), limited rights to use the trademark may be granted by the trademark owner to a licensee that is another person or a business entity by means of a trademark license agreement.
Does the USPTO Enforce a Trademark Owner’s Trademark Rights Against Infringers?
How Can A Mark That Is Not in Use in Interstate Commerce Be Protected?
However, a mark that is in use with goods or services sold locally in only a single state may be protected under state law of the state in which such mark is used. Marks may be registered at the state level and territorial level in the states and territories of the United States. The extent of such protection and rights varies according to the laws of the state or territory in which the mark is used and/or registered.
What Are the Rules for Proper Use of Trademark Markings?
The circle R marking (®) should be placed in a conspicuous location next to a mark that has been registered with the USPTO, e.g., TRADEMARK®. The ® marking should not be used with a mark before the mark is registered with the USPTO including during any time period while a federal trademark application for a mark is only pending.
Until a trademark becomes registered with the USPTO, a capital TM for marks used with goods and capital SM for marks used with services should be placed next to the mark in small font to show that trademark rights are claimed in the mark, e.g., TRADEMARK™ or TRADEMARKSM. The TM and SM markings should be used with marks registered with any U.S. state or territory and with marks that are unregistered but in which common law rights are claimed by the user of a mark.
Failure to use appropriate markings with your trademark can limit the remedies available to a trademark owner against an infringer in the event that a lawsuit for trademark infringement is filed by the trademark owner to enforce rights in and to the trademark.
The general trademark marking rules above are applicable only in the United States, its states and territories. Different rules may apply in certain foreign countries. Improper use of trademark markings in some foreign countries may subject the trademark owner or licensee to civil lawsuits, criminal prosecution, fines, and/or imprisonment. Please consult one of our attorneys prior to using trademark markings in foreign countries.
Can Trademarks Be Protected in Foreign Countries?
Please contact one of our attorneys if you are interested in conducting a trademark search or if we may assist you in the preparation and filing of a trademark application in the United States, in any state or territory of the United States, or in any foreign jurisdictions or with the drafting or negotiation of a trademark license agreement.