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Frequently Asked Questions
Trademark Law 101


If you're like most people, choosing a name for your business was difficult. You probably spent days thinking about whether the name properly reflected the nature of your goods or services, and whether the name was catchy enough. If you're like most people, after all of that hard work, you breathed a sigh of relief and started advertising. And, unfortunately, if you're like most people, you did not research whether the name you selected was available to be used as a trademark—and it could be extremely costly to your business. The reasons why trademarks are fundamentally important to all businesses is answered by the responses to the following questions.

Remember, we have other excellent publications on this subject matter for you, for example: Introduction to Trademarks, The Federal Trademark Registration Process.  You can also search our site for even more content!


Table of Contents

  1. I just started a business, why should I start thinking about trademarks now?
  2. I thought that I would be protected if I filed for a fictitious name or incorporation. Isn't that right?
  3. Okay, it's starting to make sense. What should I think about in order to select a name or logo that can be used as a trademark?
  4. After I select a name, how can I determine whether it is able to be used as a trademark?
  5. If the name is not being used by another business and it is able to be used as a trademark, then what?
  6. When do I get a trademark? Don't I have to register it with the government?
  7. Well, I've already used my trademark in commerce. Why should I register it?
  8. I've seen businesses use a "TM" symbol and the ® symbol. Why are there different symbols, and which should I use?
  9. What should I expect regarding the federal trademark registration process?
  10. I filed an "Intent to Use" application that has been "Allowed" by the Patent and Trademark Office.  Now what?

I just started a business, why should I start thinking about trademarks now?

When you started your business, you selected a name and logo because you believed that they distinguished your goods or services from those of others. Over time, your customers, and potential customers, will recognize the quality of your goods or services solely because of the business name and logo. Developing a quality reputation that is based solely upon a business name or logo takes valuable time. But, you may not realize that your business name, logo or product name may be unavailable to be used as a trademark. If so, you will spend years building "good will" in a business name, that, ultimately, you will have to forfeit. A future trademark problem could destroy a lucrative franchising or growth opportunity. Contact us for details.


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I thought that I would be protected if I filed for a fictitious name or incorporation. Isn't that right?

No. Remember that fictitious name filings and incorporations are performed at the state level only. Even if you could afford to maintain a yearly filing in every state, you would still not be immune from trademark problems. For example, consider the following situation: A company incorporates as PlumbingTech Service, Inc., and provides the service of computerizing home plumbing. Another company incorporates as AllTek Corp., and one of many services it offers is its PlumbingTech Service, which is also to computerize home plumbing. Clearly, the reputations of the two companies would be confused by the consuming public. Thus, even though both companies are properly doing business from the Corporation Bureau's perspective, there are obvious trademark problems. Contact us for details.


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Okay, it's starting to make sense. What should I think about in order to select a name or logo that can be used as a trademark?

There are two basic reasons why a name you select will not be available to be used as a trademark: either the name already has been used by another business, or it is generic.

As in so many areas of the law, first in time is first in right. If another business has already used a similar name for similar goods or services, then that business will have the exclusive right to use the trademark. Thus, in such cases, often the best advice for a new business is to choose a new name.

Even if the name has never been used by another business, not all names can be trademarks. For example, generic names are not available for trademark protection because they are generally the very name of the product or service itself. For example, a business could not trademark "spoon" for a shovel-like kitchen utensil. Also, names that describe the goods or services are generally not available to be trademarks. For example, "Best Computer Service" for a computer servicing company describes the services offered. The best and most valuable trademarks are arbitrary. For example, the term "Kodak" does not otherwise have any relation to photographic equipment.  Contact us for details.


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After I select a name, how can I determine whether it is able to be used as a trademark?

The only way you can obtain some assurance that a name or logo has not previously been used is to perform a trademark search. Preliminary computerized research can be performed at our office for about $50 to $100. Additional research can be performed by independent trademark research companies that do nothing but research trademarks for about $250 to $500 per mark, with very little flexibility in the mark to be searched. If that seems to be expensive, consider how much it costs to purchase advertising, stationery and signage, and then to find out that your name or logo must be changed to avoid a trademark infringement lawsuit.

Neither this law firm nor any trademark research firm of which we are aware will guarantee that a mark is available.  The search is to determine what can be reasonably found, not to determine that nothing exists.  This is because of the nature of trademark law and the limited ability to search.  A search is limited to the records searched, the cost to the client, the potential variations of the mark that make it difficult to search.  For example, if someone is doing business to "KLEENINGKREW" on hills of Wyoming, and the mark is not registered there, that person has superior rights on the hills of Wyoming.  See below.  However, because it is not registered anywhere, it cannot be reasonably searched and found.  Furthermore, because of the unusual spelling, even if it were registered somewhere, the search would need to be in that registry and with the unusual spelling.  Contact us for details.

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If the name is probably not being used by another business and it is able to be used as a trademark, then what?

After you perform adequate research, you should then perform your state business filings such as an incorporation or fictitious name registration. If you have already performed your business filings, or selected logos or product or service names, then you should still perform the research as explained above. You are far better off performing the research after the fact, than to continue to use and develop a name or logo without knowing your legal rights.  Contact us for details.


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When do I get a trademark? Don't I have to register it with the government?

No. There are two types of registrations: state and federal. You may not realize that you obtain rights in your trademark on the first date you actually use the trademark in commerce. For a state trademark, the first date you use the mark in that state is the date when you begin to develop trademark rights. For a federal trademark, the first date you use the mark in interstate commerce (between at least two states) is the date when you begin to develop federal trademark rights. You do not have to register the trademark with the state or federal government to obtain trademark rights.

However, the scope of your rights will be limited to the market territory where you actually use the trademark. Therefore, without more, you would have to do business nationally, in every market, to obtain complete national trademark protection of an unregistered trademark.

Generally, you cannot obtain a trademark without first actually using the mark in commerce. However, pursuant to recent amendments in federal trademark law, you now have the ability to secure a federal registration filing date which precedes your actual use of the mark in interstate commerce. The type of filing, called an "intent-to-use application," is an extremely valuable way to secure rights in a mark without disclosing the mark prior to its actual use.  Contact us for details.


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Well, I've already used my trademark in commerce. Why should I register it?

Whether a state or federal registration is advisable is a function of the costs and benefits of each registration. The benefits of a state registration vary with the law of each individual state. Most often, state laws do not provide any more protection than available without a state registration, i.e. protection in the actual market territories within the state. However, state registrations are usually entered into computer databases that are nationally available; thus, it may act as a deterrent to another business that is performing a trademark search.

If you federally register a trademark, you will have the following advantages, among others: expansion of your trademark rights from your actual market territory to include the entire United States, regardless of where you actually do business; you will be presumed to be the owner of the trademark; a registration will prevent similar marks from being registered; and you may receive triple damages and attorneys' fees if you are injured by infringement.  Contact us for details.


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I've seen businesses use a "TM" symbol and the ® symbol. Why are there different symbols, and which should I use?

There is also the "SM" symbol for a service mark. Most people use the term "trademark" generically. Actually, there are trademarks for products and service marks for services. Until you receive a federal registration of a mark, you should use the "TM" symbol (for products) or the "SM" symbol (for services) to alert the public that a mark is being claimed. While use of those symbols does not convey any rights, it is good practice--especially because it prevents an infringer from claiming that the infringement was innocent. After a federal registration of either a mark, you should use the ® symbol to signify that the mark is federally registered. The ® symbol should never be used prior to a federal registration.  Contact us for details.



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What should I expect regarding the federal registration process?

See our memorandum, The Federal Registration Process.  Also, contact us for more details.


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I filed an "Intent to Use" application that has been "Allowed" by the Patent and Trademark Office.  Now what?

You cannot obtain a federal trademark registration until you actually use the mark in federal commerce, meaning between or among states or internationally.  There are two types of applications for registration: Actual Use (AU) and Intent to Use (ITU).  AU applications are used when you have used the trademark in federal commerce prior to applying for the mark.  ITU applications are used when you intend to use the mark in federal commerce, generally within the next few years.

All applications for registration proceed primarily the same way, except that, at the end of the Patent and Trademark Office (PTO) approval process, an AU application will immediately lead to a registration of the mark, but an ITU application leads to a "Notice of Allowance."  The reason is because, by its nature, and an ITU application is not based upon a federal use of the mark, and such a use is a precondition to registration. See The Federal Trademark Registration Process.

If you receive a Notice of Allowance, then the PTO has allowed the mark.  The next step is to examine the mark and the description of goods and/or services.  Basically, you need to use the mark interstate or internationally.  For goods, that usually means making a sale of the goods claimed with the mark on the goods or packaging of the goods.  For services, that usually means with advertising materials that use the mark and describe the service offered for sale.  Generally, advertising uses work for services, but you need sales for goods.

Once you actually federally use the mark on the goods or services claimed, you must tell the PTO you have done so.  There is a filing fee.  You need to include "specimens" of use; that is actual originals of what you used.  This can be the advertising materials or flyers for services, or flattened boxes/packaging for goods (or pictures of the goods with the mark).

You also need to inform the PTO of the first date that you used the mark anywhere, and the date when the mark was used in federal commerce.

You have six months from the date of the Notice of Allowance to actually use the goods and inform the PTO.  If you have not done so, you may extend the mark for 2 1/2 years, at six month intervals, for a fee each time, for a total time period of three years to actually use the mark.

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In conclusion, the lesson is that choosing a name or logo for a business should be done with the proper advice, research and care. Building a business with a name and logo that are not available for trademark protection is like building a home on sand.

See also, Introduction to Trademarks, The Federal Trademark Registration Process.

Contact us if we can assist you in achieving your goals. If you would like to obtain our other firm publications, and/or our newsletters, then please call us as soon as possible to be placed on our mailing list.


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Contact us today!  Our firm can assist you with understanding and applying the law to your particular situation.  We Represent the Entrepreneurial Spirit®If you would like to obtain our other firm publications, please go to our mailing list page.
 

Articles and information are for general information only, and often address issues, without expressly indicating, in generalizations. Laws vary between and among jurisdictions.  You should not rely upon any information provided by or on the website, including articles, as applicable to your particular situation. The law, filing fees, etc., change often, so the information in this document may not be current. The laws of various jurisdictions may be different than provided here.  Please contact us at info@zegarelli.com if you are interested in becoming our client--only then would this office be in the position to provide advise with regard to your particular situation.  It is important for you to review Terms of Use.

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