Below are frequently asked questions about trademarks.
The best trademarks are words that are not descriptive of the goods or services that are offered. Made-up words (e.g., Google) or words that are taken out of their known context (e.g., Apple Computer) are the strongest type of trademarks. Words that are not descriptive but are suggestive of the good or service can generally be registered, but they are not quite as strong. For more information, read our overview of trademark law: Learn more>>>
Fanciful marks are terms that have been created for the sole purpose of acting as a trademark; they have no meaning other than as a mark. In short, they are made-up words or nonsense words that become associated with goods or services — representing a valuable investment in branding.
Fanciful marks are considered to be the strongest type of mark and are the easiest to get if you seek trademark registration. Examples of fanciful marks are GOOGLE, EXXON, and EBAY.
An arbitrary mark is a term with a common meaning that has no relation to the goods or services being sold. Examples of arbitrary marks include APPLE (for computers), LOTUS (for software), and SUN (for computers).
Perform a “clearance search.” There are two types of clearance searches. The first is called a “preliminary knock-out search” and the second is called a “full search.” Each search serves a different purpose.
Preliminary Knock-Out Search: A preliminary knock-out search is a check of the Federal Trademark records. A positive result generally indicates that your trademark is a likely candidate for registration. If the trademark is already registered by someone else in your field of goods or services, you will need to “go back to the drawing board” and pick a new trademark.
Full Search: A full search on the other hand is intended to determine if use of your trademark might infringe the rights of others. A more thorough review of Federal Trademark records, a full search also includes a look at state trademark registrations, common law sources, and Internet sources. If your proposed trademark would infringe another person’s trademark rights, we advise against further use of the trademark. This is to avoid investing money in branding a trademark that may well trigger a later claim of infringement.
Yes. You can declare your intent by filing an “Intent To Use” trademark application prior to actually using a trademark. If the trademark is allowed, you will be required to show use of the trademark before expiration of a six-month time period. If you are not ready to use the trademark in that period of time, you can submit a request for an extension of time to begin use. You can file up to five extension requests, each of which are six months long. This means that the timeframe within which you must begin using the trademark can be extended up to 30 months from the date of allowance.
You can stop someone from using your trademark if you can show that you are the first user of the trademark and that their use of the trademark is likely to cause confusion among consumers.
Although a Federal Registration will provide you with a better mechanism to stop the infringer, even common law rights can give you a legal basis to stop them — as long as the infringer is within a market in which you regularly do business.
If you believe your trademark is being infringed, you should immediately contact a trademark attorney, who can advise you appropriately.
The length of time for the examination process varies; but it is generally six months to one year, although it can take longer if complexities arise, such as a legal opposition. An experienced trademark attorney can expedite the examination process, by submitting a well-thought-out application. Mistakes in an application are irreparable; even if a trademark is eventually registered, errors in the initial application could later render a registration invalid and open for cancellation by a third party.
Use a monitoring service that will alert you when someone seeks to register your trademark or a confusingly similar trademark. Policing your mark is not only prudent; it is your obligation as a registrant.
Trademark monitoring services, such as our NameSentry™ service, protect your ongoing investment, goodwill, and branding of the mark, by identifying any third parties who might be using confusingly similar trademarks in a channel of trade related to your product or service.
An Internet domain name can be registered as a trademark but only when it is used to identify and distinguish goods or services. Simply having a URL is not enough to register a trademark.
If two people are using the same trademark and neither is registered, each party would have common law rights that are limited to their geographical reach. However, if the geographical reach as well as the field of goods or services overlap one another, then the party who can establish an earlier date of use of the trademark would generally have “prior rights.”
Federally registering your trademark is the best way to guarantee that your trademark rights cover the broadest possible geographic region. Plus, federal registration affords you remedies you would not otherwise have, including the recovery of attorney fees.
You can legally use the ® symbol once your trademark is registered; simply filing an application is not sufficient.
If it is not registered, it is advisable to accompany uses of a mark with a ™ symbol, for the trademark of a product, or SM symbol, for a servicemark.
The name of a series of books may be federally registered as a trademark. To determine whether your work is a book series or a “single creative work,” which is not eligible for registration, consult an Intellectual Property attorney.
A company slogan used to indicate the source of goods or services can be registered as a trademark, provided all use requirements are met. Slogans or phrases used on T-shirts or buttons that are not used to identify a source of goods or services are not eligible for trademark registration.
A trademark is a name, design, slogan, device, or combination thereof that identifies and distinguishes a good. A servicemark is a name, design, slogan, device, or combination thereof that identifies and distinguishes a service. A trade name is the name of a business or company, which is eligible for trademark registration only if the name is used on goods supplied or in connection with services rendered.
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