Trademarks are an important part of your business’s intellectual property portfolio. But if you’re like many small business owners, you may not be sure exactly what a trademark is, whether you have one, or how to protect it. Below, we highlight everything your small business needs to know about trademarks and trademark lawyers.
What is a trademark?
A trademark (or “mark”) is any word, phrase, symbol, or design that identifies and distinguishes your goods from those others. The term “service mark” is also sometimes used in the context of trademark rights but it means the same thing except that it identifies or distinguishes services instead of goods.
How is a trademark different from a copyright?
A trademark is a word, phrase, symbol, or design that identifies and distinguishes your goods from those others. A copyright is used to protect original works of authorship such as books, paintings, songs, and even computer software, when they are fixed in any tangible form. Copyrights don’t protect facts, ideas, systems, or methods of operation.
Copyright registrations are handled by the US Copyright Office, you can learn more about copyright registration here.
Do I need to file a registration with the USPTO to have trademark rights?
No. Trademark rights in the US are established as soon as you start using the mark in commerce to identify your goods or services. The rights you have simply by virtue of using the mark are called “common law” trademark rights because they are not based on registration but on use in commerce.
Common law rights are weaker than the rights that come with a federal trademark registration. For example, in most cases, common law rights limit your right to a trademark to the geographic area where you operate. On the other hand, common law rights will establish your priority to use a trademark over a similar mark used for similar goods/services that started in use after your use of the mark. However, in case of a dispute over trademark rights, a common law trademark requires more evidence to prove ownership than a federal trademark registration.
How long does it take to register a trademark?
It depends. In an application based on “use” of the mark in commerce, assuming there are no initial refusals or other obstacles, you can expect a registration in 12-15 months. An application based on “intent to use” is similar in length of time to a “use” application, but will require proof of use of the mark in commerce before the USPTO will issue a registration. From the point that you can show acceptable use of the mark in commerce, you can expect a registration in 2 months.
Is your small business in need of a trademark lawyer? Contact an Exemplar trademark lawyer today!
What’s the difference between “use” and “intent to use” trademark filings?
As the name implies, a filing based on “use” means that you are currently using the mark on your goods or services in commerce. “Intent to use” means that you have a “bona fide intent” to use the mark in commerce at a later date.
The USPTO allows you to file a trademark application based on intent to use as long as you genuinely intend to start using the mark for all the goods or services in the application. The USPTO cannot grant a registration until you submit proof of use, but will grant you up to 5 extensions of 6 months each to give you time to start using the mark in commerce. If you cannot show use of the mark within that time, the application will be deemed abandoned.
What are the benefits of a trademark registration with the USPTO?
There are several benefits to a trademark registration. Among the most important are:
- Notice to competitors throughout the US of your legal ownership of the mark
- The USPTO will block later-filed applications of a similar mark for similar services
- Jurisdiction of federal courts may be invoked, also allows you to collect treble (3X) the amount of damages and attorney’s fees if you win.
- 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
- You can use the ® symbol after your mark.
How much does a trademark application cost?
Current USPTO filings fees are between $250– $350 per class of goods. The lower fee requires accepting a USPTO-approved description of goods or services and other restrictions, while the higher fee allows you to draft your own description. You can see a full table of USPTO filing fees here.
What are trademark classes?
Trademark classes are descriptions of your goods or services that are classified by category and number, based on USPTO guidelines. The classes describe in detail the actual goods or services you are providing (or intend to provide) under the mark, and are used as the basis to determine if another similar mark is infringing yours (or vice versa).
What’s the different between the TM and ® symbols?
The ® symbol can only be used after registering the mark with the USPTO. The “TM” symbol can be used as soon as you start using the mark to provide goods or services.
How do I know when I can use another trademark?
Generally, trademarks exist to identify particular sources of goods or services and allow their owners to prevent others from using them to confuse the public as to the source of the goods or services. However, there are circumstances when it’s ok to use another trademark – these circumstances are called “fair use.”
Fair use is an exception to trademark infringement. It generally arises in two circumstances: (1) when a trademark is used in its ordinary descriptive sense to describe a product or service (called “descriptive” fair use); and (2) using the trademark to refer to the trademark owner and the goods and services associated with the mark (called “nominative” fair use).
What’s the difference between a state and federal trademark registration?
Both state and federal registrations protect your trademark from competitors using a similar trademark for similar goods or services. State trademark protection is limited to the state of registration, whereas a federal registration protects your trademark throughout the US. The costs and procedural hurdles are lower for a state registration than for a federal one.
How long does a trademark registration last?
A trademark registration lasts as long as the mark continues to be used in commerce. The USPTO requires certain maintenance documents to be filed between the 5th and 6th years after a registration is issued, and again between the 9th and 10th years, then between every 9th and 10th year after that.
You can find more information about the USPTO’s post-registration requirements here.
Is there an international trademark?
No. Trademark rights are territorial, meaning they apply only within the borders of the country where the mark is used. But it is possible to register your trademark in several different countries by filing one international application through the USPTO’s International Bureau. This filing is done under an international agreement called the Madrid Protocol and can protect your trademark in over 97 countries and organizations. You can learn more about international applications and the Madrid Protocol here.
Exemplar Trademark Lawyer For Your Small Business Needs
Exemplar Law has an experienced team of intellectual property attorneys that provide a full range of IP services including trademark, copyright, patent development, and securing intellectual property rights for entrepreneurs, inventors, artists and small businesses. Whether you need to secure rights for your idea, business, creative work, or want to make sure you are not infringing on others, we can help. Contact us today.
You May Also Like
In 2021, we live in a digital world where digital assets are everywhere. From the photos stored on your iPhone to the movies you stream from Netflix or Hulu, the documents you store in the cloud, and more, most people are interacting with digital assets hundreds, if...
This is article is one of a multi-part series to help our network understand the many facets of capital available to them. In this first article, we will focus on direct debt. In future articles we will address the concepts of securitization and convertible capital....
Estate Planning: Potential Estate Tax Changes In 2021 Here’s What You Need to Know Estate planning has become a very hot topic lately, but most people think estate planning is for the uber wealthy. However, the estate tax benefits may revert back to lower levels...