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Trademarks

Introduction

A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products or services and to distinguish those products or services from other entities. For example, the trademark “Nike,” along with the Nike “swoosh,” identify the shoes made by Nike and distinguishes them from shoes made by others. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark.

Marking

The symbols ®, TM and SM provide notice to the world that an owner is claiming trademark rights in any mark using these symbols. An owner may use the TM on marks identifying goods, and the SM on marks identifying services. An owner need not have a federal or state registration to use the TM or SM symbols. However, the ® symbol, which provides “statutory notice” can only be used if the mark is federally registered on either the Principal or Supplemental Registers maintained by the United States Patent and Trademark Office (USPTO).

Benefits of Federal Registration

  • Constructive notice nationwide of the trademark owner’s claim.
  • Evidence of ownership of the trademark.
  • Jurisdiction of federal courts may be invoked.
  • Registration can be used as a basis for obtaining registration in foreign countries.
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
  • The U.S. Patent and Trademark Office (“USPTO”) encourages online filing via the TEAS (Trademark Electronic Application System) on its website at www.uspto.gov.

Minimum Requirements to Obtain a Filing Date for Federal Registration

  • The name of the applicant.
  • A name and address to which the USPTO should send correspondence.
  • A clear drawing of the mark.
  • A listing of the goods or services.
  • The filing fee for at least one class of goods or services. A filing fee for each class of goods and/or services covered by the application is required.

USPTO Trademark Prosecution Process After the Application is Submitted

  • The USPTO will issue an official filing receipt.
  • The USPTO may issue an Office Action requiring clarification of certain information or objecting to registration of the mark. The applicant must respond to the Office Action within 6 months of its mailing date or the application will be abandoned. Some Office Actions may be resolved by a telephone conversation with the USPTO; others will require a written response.
  • After the application has passed examination, the USPTO will publish the mark in the Official Gazette to allow interested parties to oppose the application.
  • If the application is not successfully opposed, the USPTO will issue:

1. A Certificate of Registration for a use-based application; or

2. A Notice of Allowance for an intent-to-use application. An applicant has 6 months from the mailing date of a Notice of Allowance to either file a Statement of Use or a request for extension of time to file a Statement of Use. Either document requires a per class filing fee. A maximum of 5 timely filed extensions will be granted; acceptable “good cause” must be stated in the second through fifth extension requests, and the applicant’s continued bona fide intent to use the mark must be stated in each extension request. Once the USPTO accepts a Statement of Use, it will issue the Certificate of Registration in due course.

Timing of Federal Registration

If no substantial objections are encountered or oppositions lodged, it generally takes 12 to 18 months for registration to issue from date of submission by the applicant. Most applications will be reviewed by an Examining Attorney 6 to 9 months after filing.

If I have a trademark, do I have a domain name?

No, a trademark is not the same thing as a domain name. A trademark identifies goods or services from a particular source, or of a defined quality. If a trademark owner would like to use its trademark as its domain name, the owner must apply for a domain name registration with an ICANN-accredited registrar.

If I have a domain name, do I have a trademark?

Not necessarily. A domain name in and of itself is not the same thing as a trademark. Use of a domain name merely as an informational part of the domain holder’s Internet address does not qualify as trademark use. Examples of a domain name used only as an Internet address include a domain name used in close proximity to language referring to the domain name as an address or domain name displayed merely as part of the contact information for the domain name owner.

To qualify as a trademark or service mark, the domain name must function as a mark; that is, it must serve as an indicator of source and not merely as an informational part of an Internet Web address. If the domain name functions separately as an indicator of source, the domain name may be registered with the appropriate trademark office as a trademark or service mark.

Key in determining if use of a domain name rises to the level of a trademark usage is whether it is viewed by consumers as a symbol of origin separate and apart from anything else.

Last Modified: December 5th, 2009