A trademark is a word, name, symbol, or device, alone or in combination that is used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.
What is a service mark?
A service mark is any word, name, symbol, device, alone or in combination that is used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
Do I have to register my trademark or service mark?
No, but federal registration has several advantages.
What are the benefits of federal trademark registration?
1. Constructive notice nationwide of the trademark owner’s claim;
2. Evidence of ownership of the trademark;
3. The federal courts may be used to protect the trademark;
4. A U.S. registration can be used as a basis for obtaining registration in foreign countries;
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods; and
6. The exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
Do I have to be a U.S. Citizen to obtain a federal registration?
No, but an applicant’s citizenship must be set forth in the application.
When is it proper to use the federal registration symbol “®”?
The federal registration symbol may be used ONLY once the mark is actually registered in the U.S. Patent and Trademark Office. The federal registration symbol should only be used on goods or services that are the subject of the registration.
Is a federal registration valid outside the United States?
No. However, if you own a trademark application pending before the USPTO, or a registration issued by the USPTO, then you may seek registration in other countries through the Madrid Protocol by filing an “international application”. Also, some countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.
Can the USPTO refuse to register a mark?
Yes. The USPTO will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.
Additionally, federal codes recite several reasons for refusing registration, including:
1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant’s goods or services are likely to cause confusion, mistake, or deception;
6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant’s goods or services;
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant’s goods or services;
8. the proposed mark is primarily merely a surname; and
9. matter that, as a whole, is functional.
How long does a trademark registration last?
Trademark registrations can be renewed indefinitely, but a trademark holder has to file certain documents to maintain the trademark.
Can the ownership of a trademark be assigned or transferred from one person to another?
Yes. A registered mark, or a mark for which an application to register has been filed is assignable. Written assignments may be recorded in the U.S. Patent and Trademark Office for a fee.
What is a certification mark?
A certification mark is any word, name, symbol, device, alone or in combination that is used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
What is a collective mark?
A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.
Karish & Bjorgum attorneys have years of experience filing trademark applications and working with the USPTO to obtain trademarks for our clients and we can help you.