A Trademark is a word, phrase, symbol, or device, and any combination thereof, used or intended to be used in commerce to identify and distinguish the goods of one provider from the goods of other providers and to indicate the source of the goods. Generally, a trademark protects the identification of the provider of goods.
A good may be any physical product that can be touched, used, worn, or owned.
Similarly, a Service Mark is a word, phrase, symbol, or device, and any combination thereof, used or intended to be used in commerce to identify and distinguish a provider’s services from those of others.
A service may be any action or task provided to a consumer, including brokerage, legal, or banking services.
Trademark rights may be secured based on common law or federal registration.
Common law based trademark rights are established solely through use in commerce associated with your business or product in a specific geographical area. No application process and no fees are associated with maintaining common law trademarks. However, while easily acquired, common law trademarks have their limitations. For example, the rights associated with common law trademarks are regionally limited to the area in which they are used. Also, common law trademark owners must use state courts and laws to enforce their trademark, state court decisions varying according to the differences in their state laws.
Federal registration based trademarks are established by filing a registration application for the desired mark and its associated goods and services with the United States Patent and Trademark Office (USPTO). The trademark application requires identifying a first use date and a first use in commerce date of the mark in conjunction with the associated goods and services. The USPTO will search the mark in conjunction with identified goods and services against existing registrations and common law uses. If the USPTO finds a confusingly similar mark, the registration application will be rejected.
If the application is approved, the USPTO will publish the mark in their online Trademark Official Gazette for a thirty-day period. During this period, any public member who thinks they’ll be harmed by the mark’s registration may oppose it by filing a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). If no one opposes the registration during the publication period, the application will proceed to registration. Once registered, the mark is added to the Federal Register, which puts the public on notice of the registered mark. This registration provides the trademark with a presumption of validity necessary to enforce that trademark in court.
While less easily acquired, registered trademarks have benefits over common law trademarks. For example, a registered trademark gives you priority to use your mark across the nation. Also, registered trademarks are enforced in Federal courts with uniform laws that result in more predictable decisions and remedies.
Generally, there are three types of trademarks:
include only standard characters without any accompanying style choices like color or font.
are comprised of stylized words, letters, numbers, and/or design elements. These are often referred to as a logo.
may consist of a word or words combined with design elements.
Trade Dress may protect the commercial look and feel of a product or service that identifies and distinguishes the source of those products or services. Some examples of trade dress are the packaging or labeling of goods, the design of a product, the flavor of the product, the color of a product, and the layout of a restaurant or store.
Identification of Goods and Services
A mark cannot be trademarked in the abstract. As such, a trademark must always be associated with goods and services. A trademark application must always identify goods and services associated with the mark.
In a trademark application, the identification of goods and services describes the products and services associated with a trademark application. This identification may include a combination of goods and services. There’s no limit to the number of goods or services that can be identified in an application. However, the cost of filing may increase with a greater number of goods and services.
The USPTO categorizes goods and services into 45 different classes for registration. It is common for different trademark owners to register the same mark for different products in different classes. As such, these classifications may help distinguish between marks. Moreover, greater weight should be given a conflicting mark in the same class than others in a different class. Once the application is filed, the identification of goods and services may not be expanded.
A trademark application may either be a use-based application or an intent-to-use application.
A use-based application is based on the use of the identified goods and services in commerce. The use-based application must include evidence of use in commerce, the type of evidence depending on the identified goods and services. Once the use-based application is approved, it proceeds to publication and registration.
An intent-to-use application does not include any evidence of use of the mark in commerce with the identified goods or services. Instead, the applicant must certify their bona fide intent to use the mark on the identified goods and services. Once the application has been approved and the mark published for opposition, the applicant has six months from the allowance of the mark to file a Statement of Use. The Statement of Use presents evidence of use in commerce for goods and services identified with the allowed mark. If the applicant is not ready to submit evidence of use within that 6-month window, it is possible to file for up to 5 6-month extensions for a total time of 3 years from the date of the notice of allowance. If no evidence of use can be submitted within that 3 year period, then the application must be refiled.