Some Frequently Asked Questions about Trademarks
- What is a trademark/service mark?
- How do I get a trademark?
- My company was incorporated/formed through the State Corporation Commission – isn’t my name protected?
- What can be used as a trademark?
- Is there anything that can’t be a trademark?
- What is a trademark search?
- Should I federally register my mark?
- Once I get the mark registered does that mean I own it?
- Should I get a trademark search?
- How much will it cost?
- How long will it take?
- Do I have to wait until it’s registered before I can use it?
- Do I need a lawyer?
- Why should I hire a lawyer?
- I think someone is infringing my mark. What should I do?
- Someone is using my name for unrelated goods or services. Is that an infringement?
- If I register my mark will the Government make sure no one infringes it?
- Once I register my mark am I protected in other countries?
- What are the remedies for trademark infringement?
What is a trademark/service mark?
A trademark is any distinctive word, symbol, logo, or other feature that identifies the source of a product (e.g. Clorox is a trademark for a brand of bleach) or that identifies who controls the quality of the product (e.g. a Big Mac is cooked and prepared by a local McDonald’s franchise, but McDonald’s H.Q. sets the quality standards for the Big Mac.) A service mark is what we call a trademark when it is used for services (e.g. “Wachovia” for a brand of banking services). In this article I will use the word “trademark” to refer to both trademarks and service marks.
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Trademark rights arise by using the trademark. Registering the mark provides additional rights and has other benefits, but is not needed to establish rights in a mark. An unregistered trademark only develops trademark rights in the geographic territory where it is used.
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No. When the SCC forms a company they do not clear the name for trademark purposes.
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What can be used as a trademark?
The only requirement is that the mark be distinct. Words, designs, colors, sounds, and smells have all been registered as marks. Some familiar examples are: the words “Coca-Cola”; the Nike swoosh design; the color pink for fiberglass insulation; and the sound of the NBC chimes. The Trademark Office rejected Harley Davidson’s application to register the sound of its motorcycles.
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Is there anything that can’t be a trademark?
Generic terms and words that simply describe the product or service are generally not capable of acquiring trademark rights because they are not distinct. Geographic terms are usually considered descriptive and are difficult to register. Some exceptions are made for descriptive terms that have been used a long time, if competitors are not using similar terms. Words that are commonly understood to be last names also have special requirements.
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A trademark search attempts to find other uses that may be confusingly similar to the proposed mark. The U.S. Patent and Trademark Office website provides the ability to search its database for free: http://www.uspto.gov/ebc/index_tm.html . If the proposed mark survives this search, then I recommend using a search company to get a comprehensive search of both registered and unregistered uses. No search is bullet proof, but it’s best to find out about similar marks as early as possible.
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Should I federally register my mark?
Some benefits of registering a mark include: 1) expanding your trademark’s geographic territory; 2) making it easier for others to find your mark, and then avoid adopting a mark similar to yours; 3) making it easier to prove you own the mark; 4) making it harder for others to challenge your trademark rights; 5) building an asset that can more easily be sold, licensed, and valued.
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Once I get the mark registered does that mean I own it?
Although a federal registration provides many benefits, it is important to note that initially it only establishes a presumption that the owner has the exclusive right to the mark. That presumption can be overturned by someone who has actually been using the trademark in commerce since before the trademark application was filed. For example, if a company in Kalamazoo has been using the XYZ trademark since 1950 for lawn mower repair services, they have the right to keep using XYZ for lawn mower repair services in Kalamazoo even if you get a federal trademark registration for XYZ for lawn mower repair services in 2007. The federal registration gives you the presumption that you can use it nationwide, but it will not take priority over a senior user. If your company expands into Kalamazoo in 2007 you will have to come up with a new name to use in that town.
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Should I get a trademark search?
I recommend two levels of searching. The first is a “screening” search of the Federal Trademark Office records. This search weeds out choices that have obvious problems. If the mark survives that search, I recommend obtaining a comprehensive search of both registered and unregistered uses. This comprehensive search is designed to find the Kalamazoo repair shop (see above), so you can avoid that surprise later on. No search is perfect, but the comprehensive search gives you a much higher comfort level. People often ask if they can rely on the Trademark Office to find these unregistered uses in the course of the application process. The Trademark Office only reviews its records of federally registered marks, and does not research unregistered uses.
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Each case is different, and I will provide a quote on each case, but as a general rule screening searches on the Trademark Office website are about $150, and comprehensive searches are about $1,200. If the search is clear, you file in one class, and there are no issues at the Trademark Office (sorry for all the legal qualifiers) you can expect to spend approximately $1,500 - $2,000 to process the federal application. State registrations are much simpler. The search process is the same, but the application process usually costs about $500.
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Federal applications are taking about 18 months.
Virginia registrations can be obtained in 2 – 4 weeks.
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Do I have to wait until it’s registered before I can use it?
No. Just the opposite. You have to use the mark before you can get it registered. You can apply for a federal registration before you use the mark, but it won’t get registered unless you later file proof of use. In Virginia you can’t file the application until after the mark is already in use.
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No you don’t. The US Trademark Office website is user friendly. http://www.uspto.gov/ebc/index_tm.html You can file an application online by using your credit card. The instructions for filing in Virginia are also available on-line: www.scc.virginia.gov/division/srf/webpages/forms.htm
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A trademark attorney will evaluate your mark to check for common problems such as likelihood of confusion, descriptiveness, generic terms, descriptions of the goods or services, and the classifications for the goods and services. In addition a trademark lawyer will help you consider ownership and licensing issues.
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I think someone is infringing my mark. What should I do?
Call your lawyer. If you accuse another party of infringing and it turns out they were using the mark first, you will have a big problem – even if you are registered and the other party is not.
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Someone is using my name for unrelated goods or services. Is that an infringement?
Not necessarily. Examples of unrelated companies using the same names are Delta Dental, Delta Airlines, and Delta Faucets.
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If I register my mark will the Government make sure no one infringes it?
No. That is the trademark owner’s responsibility.
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Once I register my mark am I protected in other countries?
No. A US registration only applies to goods or services in the United States, but you can often piggyback off of the US application to apply for trademark registrations in other countries. Registering a in the US does not give you rights in other countries The mark has to be separately registered in each country, and has to meet each country’s registration requirements.
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What are the remedies for trademark infringement?
An infringer is almost always ordered to stop using the infringing mark, and to destroy or turn over to the trademark owner any remaining supply of infringing labels, signage, or other materials. In addition the infringer can be ordered to pay to the trademark owner all of the infringer’s profits that were made from the infringing use, plus any damages suffered by the trademark owner and the costs of the lawsuit. If the court believes the infringement was committed in bad faith, it can treble the damages award and require the infringer to pay the attorney’s fees of the trademark owner.
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