Trademark Basics

June 2018

Trademarks and servicemarks[1] are important, but often overlooked, assets of any business, large or small.  Trademarks constitute your brand. They indicate the source of origin of your product or service.  Your existing and potential customers and clients think of “you” when they see “it.”  Trademarks help win the battle for marketplace identification.

Although trademarks are protected under both State and Federal law in the United States, businesses developing a new trademark or trying to bolster the strength of an existing one should consider the advantages of registering their trademark. Here is a primer explaining the process and how it might work for you.

What is a trademark?

A trademark is any a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods or services of one party from those of others.

How do we know if a trademark we wish to use is available?

An initial step is to just conduct an Internet search for your trademark. This search will likely reveal any obviously conflicting trademarks or terms. A second step often makes sense, and consists of your attorney performing a search of the United States Patent and Trademark Office (USPTO) database to determine whether any obviously similar trademarks are either registered or pending before the USPTO. However, these steps do not necessarily “clear” a trademark for use.

The best and most comprehensive way to clear a trademark is to do a “full” trademark search. FMJ engages outside search firms to conduct a computerized review of federal and state trademark offices, numerous business and trade directories, the Internet and other sources of trademark usage.  The search report details a comprehensive list of trademarks which are the same or similar to your trademark.  This allows your attorney to give you an opinion as to both (i) the likelihood that your trademark application will be accepted by the USPTO, and (ii) whether there are any unregistered trademarks which could conflict with your trademark in the future.  Having this information before you start using a new trademark can save you money and professional embarrassment.  It can be very expensive to scrap existing advertising and promotion programs because of a trademark conflict, or worse yet, to get involved in a dispute with a competing trademark holder.

Can we reserve a trademark like you can a corporate name?

An individual or company may apply for federal registration of a trademark based on a good faith intent to use the trademark.  Under these circumstances, the normal registration procedures are followed and, once approval is received from the Patent and Trademark Office, the applicant has at least six months to begin use of the trademark.  Most states still require actual use before an application can be made.

What trademarks qualify for federal registration?

Generally, a trademark, in any form, which (a) identifies the source of origin of your product or service, (b) is actually used in interstate commerce, (c) is not merely descriptive, and (d) is not likely to cause confusion with any other federally registered trademark, is suitable for registration with the USPTO.  This can include a name, a logo, a design, a word or series of words, and even colors, sounds and smells.

What are the advantages of federal registration of our trademark?

As stated above, merely using a trademark commercially provides the user with rights under state and federal law. However, registration of a trademark with the USPTO provides several significant benefits:

  • Registration creates a presumption that you have the exclusive right to use that trademark. This presumption helps eliminate the time consuming and expensive process of having to prove exclusive rights to the trademark in the event you have to commence infringement litigation against a third party.
  • A trademark which has been registered for five years becomes incontestable except in certain limited circumstances. This makes it very difficult for a third party to challenge your rights to the trademark.
  • Registration gives constructive notice to all third parties of your use. Even if a third party adopts the same or similar trademark without actual knowledge of your registration, they are not permitted to use lack of knowledge as a defense.
  • For businesses which perform searches for their new trademarks, your registered trademark should come up in the search and encourage the junior user to select a trademark that is not confusingly similar to yours. This helps eliminate subsequent disputes over rights to the trademark.
  • Registration provides remedies for infringement including injunctions, damages, recovery of profits and the destruction of infringing labels, packages, and ads.
  • Registration usually enhances the value of a trademark making it more desirable for possible licensing arrangements, and in the event of a sale of your business, provides a basis for negotiating a higher purchase price.

What is the process for obtaining a federal registration?

Once the trademark search has been completed and it appears that your trademark does not infringe upon any existing trademarks and is otherwise subject to registration, an application is prepared and filed.  The information required includes the name of the applicant, a description of the trademark, a specimen of the trademark and a description of the goods and services used with the trademark.  The application will be assigned to a USPTO examining attorney, who will search the existing records of registered and pending trademarks to determine if yours is likely to cause confusion with any others.  The examining attorney may also identify certain procedural points which need to be clarified before he approves the application.  If the examining attorney finds the trademark in condition for approval, it will be published in the Official Gazette to put third parties on notice of the pending application and gives them a thirty-day period to file an objection to the registration.  If no objection is filed during this time period, the trademark will be registered and a certificate of registration issued to you.

What do we need to do once our trademark is registered?

Once the Certificate of Registration is issued by the Patent and Trademark Office, you can immediately denote the registration by using the symbol “®.”  The initial registration remains in effect for 10 years.  However, you must file an Affidavit of Continued Use between the 5th and 6th years of the date of registration.  Further, after the initial 10-year period, the trademark must be renewed by filing a routine renewal application every 10 years thereafter.

How will a state registration help us?

Even if your trademark does not qualify for federal registration, you should still consider filing for state registration in each state in which the trademark is used.  Any trademark actually used by you in the particular state which is not confusingly similar to any other trademark registered in that state may be registered.  State registration plays a far less significant role in protecting trademarks, but can still be useful.  While state registration does not typically create any substantive rights to exclusive use of the trademark, it does provide a very helpful notice function.  Frequently, businesses which are considering use of a new trademark will not conduct a federal search, and will rather focus only on the availability of the trademark in their particular state by calling the Secretary of State’s office.  By having a state registration, you give notice to such inquiring parties that the same or confusingly similar trademark is already registered and should not be selected, and some states may reject the filing of documents for businesses with the same name as your trademark.  Again, this helps to minimize the number of infringement disputes which may develop later on.

Do I need to engage an attorney to assist with my trademark application?

The rules of the USPTO permit applicants to submit applications for registration on their own behalf, and it is not required to have an attorney represent you during the application process.  However, because the application process is not necessarily intuitive and the USPTO does not permit substantive changes to an application after it is filed, FMJ highly recommends that trademark applicants have FMJ assist them during the registration process.

What is the difference between the “SM,” “TM,” and “®” symbols?

Anyone can use either the “SM” (servicemark) or “TM” (trademark) symbols at any time to alert the public to their claim of proprietary rights to the trademark.  There is no requirement that the trademark is registered or that an application is submitted prior to use of either the “SM” or “TM” symbols, nor does use of the symbols mean that the user intends to file a trademark application.  However, only trademarks which are registered with the Patent and Trademark Office are entitled to use the “®” symbol, and then only if the trademark is associated with the goods and services listed in the registration.

FMJ provides a wide array of trademark services, including not only the clearance and registration services described in this article, but also assistance with registration of trademarks outside the United States, enforcement of trademark rights and defense of allegations of trademark infringement, and domain dispute issues. Click here to learn more about our trademark services and FMJ’s Intellectual Property practice.

Please feel free to contact Pat Shriver if you have any questions about the above article at pat.shriver@fmjlaw.com or 952-224-7285.


[1]     Because trademarks and servicemarks are virtually indistinguishable as a matter of law, as trademarks are related to products and servicemarks are related to services, each will be referred to as “trademarks” in this article.