Do I need a trademark?  Obtaining a trademark is a powerful way of ensuring that consumers think of you, and only you, when they see a certain symbol or saying or phrase.  Trademarks may make your marketing strategy possible.  They help drive your brand, create customer loyalty, and bring immediate recognition of your business.

How do I obtain a trademark?  Use it.  Simply registering your trademark is not enough.  Rights to a particular trademark are acquired through use.

Why register my trademark?  Using your trademark gives you common law rights in the jurisdictions in which you use the mark.  Registering your trademark with the United States Patent and Trademark Office (USPTO), however, gives you significant additional advantages, such as:

1. Constructive notice to the world that you claim ownership to the mark
2. A presumption that you are the owner of the mark
3. A presumption that you are entitled to exclusive right to use the mark nationwide on the goods/services you listed in the registration application
4. A presumption that your trademark is valid
5. The right to use the® symbol
6. The ability to file suit based on your trademark in federal court
7. The ability to file for a foreign trademark based on your U.S. registration
8. The ability to prevent imports that infringe trademark by filing your registration with the U.S. Customs and Border Protection (CBP) Service
9. Listing the registration in the USPTO’s online searchable database

When should I file?  You can file a “used-based” Section 1(a) registration application if you are already using your trademark in commerce.  If not, you can file an “intent to use” Section 1(b) registration application if you have not yet actually used the mark in commerce but have a bona-fide intention of doing so.  You must file proof of use within six months of the USPTO providing you Notice of Allowance of your registration application.   This deadline may be extended.  If your application is accepted, you will be required to pay an issue fee as well.

How long does it last?  A trademark can last forever.  If you continue proper use of the mark and pay the required maintenance and other fees, your rights to the trademark may continue forever.  It should be noted, however, that trademark rights can be lost by non-use or improper use.

How much does it cost to file a trademark registration application?  The cost to pay a practitioner to register your trademark vary depending on a number of actors, including whether you desire a clearance search, how many classes you will be applying for, etc.   The United States Patent and Trademark Office’s (USPTO) filing depends on several factors, including how many international classes you claim and which type of application you file for.  Click here http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm to see what the USPTO’s processing fees are.

Should I conduct a trademark search before I file?  Yes.  Although it is not a guarantee that the USPTO will accept your registration, hiring a patent attorney to conduct a clearance search may help you determine if your trademark is already registered.  The USPTO discusses other reasons to obtain an attorney to help you in the search and registration process in a posting entitled, “What a Private Attorney Could Do to Help Avoid Potential Pitfalls” which can be found at http://www.uspto.gov/trademarks/basics/private_attorney.jsp.

What do the symbols “TM”, “SM” and ® mean?

“TM” means you are claiming a common law trademark.

“SM” means you are claiming a common law service mark.

Neither the use of “TM” nor the “SM” require registration with the USPTO.  In fact, the USPTO says that you can “continue to use these symbols even if the USPTO refuses to register your mark.” See http://www.uspto.gov/faq/trademarks.jsp#_Toc275426679.

® means you are claiming a trademark that has been accepted and registered with the USPTO and is still alive (i.e. not expired).

What is the difference between a trademark and a service mark? Technically, trademarks are associated with products and service marks are associated with services.  It is common, however, to refer to product and service marks as trademarks.

What is a trade name?  A trade name is the name of the business.  If the trade name is also associated with a good or service it may be considered a trademark as well.

How do I select a trademark?  When selecting your trademark it is important to begin with the end in mind.  Thus it is important to try to pick a trademark that may be approved by the USPTO (assuming you desire to register it with the USPTO).   There are five general categories in which a mark may fall: fanciful, arbitrary, suggestive, descriptive or generic.

Fanciful marks (e.g. KODAK) are completely made up words and are the easiest to register.

Arbitrary marks (e.g.  APPLE, AMAZON) are, unlike fanciful names, real words and are the second easiest to registers.  The problem with arbitrary and fanciful marks is that consumers don’t initially link them to a particular product or service and thus significant effort and resources may be spent on brand recognition.

Suggestive marks (e.g. BURGER KING, etc.) suggest but don’t describe a particular good or service.  Thus it may be easier to promote such names but, perhaps, a little harder to protect them.

Descriptive marks (e.g. HOLIDAY INN, etc.) describe a good or service.  These types of marks, typically cannot be registered.  There is, however, an exception.  To obtain a mark on a descriptive name one must show that the good or service has become so widely known that consumers link the mark to your trade.  This is called secondary meaning.

Generic marks (e.g. boat, car, fork, email, etc.) describe the product not the source and belong in the public domain.  You cannot get a trademark on a generic name.

What happens after I file?  The USPTO examines your registration and determines whether it creates a “likelihood of confusion” with an already existing or pending trademark registration.   A likelihood of confusion exists when (1) the two marks under examination are very similar (but not necessarily identical) and (2) when the goods and/or services associated with the marks are so related that consumers would mistakenly believe that they come from the same business.  The USPTO’s website also states that “[s]imilarity in sound, appearance, and/or meaning may be sufficient to support a finding of likelihood of confusion.”  See http://tess2.uspto.gov/webaka/html/Likelihood/Likelihood_of_Confusion.html.  The determination as to whether a likelihood of confusion exists is made on a case-by-case basis.  Click here http://www.uspto.gov/trademarks/process/tm_timeline.jsp for an approximate timeline of events regarding the trademark registration process.

What is the difference between a patent, trademark and copyright?  A patent is the right to exclude others from making, using or selling what you invented.  A trademark protects the association of a particular “mark” (i.e. word, phrase, slogan, name, symbol, color, design, logo, thing, etc.) with your business.  A copyright protects your original works of authorship (i.e. music, drawings, written text, photograms, etc.).