Trademarks and Service Marks
Trademarks are words, phrases, symbols or designs that identify the source of goods of one party from those of other parties. A service mark is the same as a trademark, except that service marks identify and distinguish the source of a service rather than goods.
A trademark can be established simply by using the mark in commerce without registering it with the Principal Register, which is maintained by the U.S. Patent and Trademark Office. However, registration of a trademark provides advantages to the owner. Registration can serve as public notice of the ownership of the mark. If you want to sue someone for using the mark without permission, it must be registered. Registration creates a legal presumption that you are the owner of the trademark and have the exclusive right to use the mark. A trademark must be registered in order for U.S. Customs to prevent the importation of foreign goods that are using the mark illegally. In order to use the federal registration symbol ®, the trademark must be registered. However, if you do not register the trademark, you can use “TM” or “SM” to alert the public that you own the trademark or service mark.
In order to register a trademark or service mark, an application must be filed with the U.S. Patent and Trademark Office. Once you file the application, the USPTO will conduct a search through registered trademarks and will not register your mark if there is another mark that is similar to yours for related goods or services. It’s advisable to hire a patent attorney who can help you with the legal requirements of registering a trademark. Our law firm can help you prepare the application and assist you in the search through millions of registered trademarks to see if there could be a potential problem.
It usually takes three months for an application to get assigned to an examining attorney with the USPTO, and then the examining attorney will refuse or accept registration. There are many reasons a registration may be denied. There may be other marks already registered that may cause confusion with your mark because of their similarity and the commercial relationships between the goods and services the marks represent. The mark may also not be registered if it is a description for the goods or services, if it’s a geographic term, or a last name.
After the mark is approved by the examining attorney, it will be published online. The public then has 30 days to oppose registration. If there is no opposition, the USPTO will send a registration certificate about 12 weeks later.