Trademark Information

What is a trademark?
A trademark is anything that is used in commerce to identify the source of goods. Usually this is a word or stylized mark of some sort; however, it can also sometimes be how something looks (like a coke bottle) or once in a while a color. Trademark law also applies to business names and marks that identify services. A typical trademark is Coke®. You should notice the symbol ® that I used after the name coke. This symbol means the trademark is registered with the United States federal government, and is thus protected in all 50 states and in all US territories. The key to getting and keeping a trademark is that it must be used in commerce.

What types of marks are there?
There are trademarks, service marks, tradenames, and collective or certification marks. A trademark typically appears on an item being sold. A service mark identifies a service being provided. A tradename identifies a business, and a collective or certification mark identifies a region of origin of a product or a means of manufacture. An example of a certification mark is "THE GOOD HOUSEKEEPING SEAL OF APPROVAL®.

How is a trademark different from a patent?
A patent gains its rights directly and only from the government by being novel and not obvious. A trademark gains its rights by being used in commerce to identify a source of goods or services. The government will add protection to a registered mark providing it is not just generic or descriptive of the product, it is not confusingly similar to a mark already registered for the same class of goods, and it is being used in commerce.

What is required to obtain rights in a mark?
A mark obtains trademark rights by being used in commerce to identify the source of particular goods or services. When a mark that has not been registered is used, it should always carry the superscript "TM" or "SM" (for a service mark). This announces that it is being used as a mark. However, this superscripting is not essential to gaining rights. Rights are gained in local markets by any use of the mark in commerce. To gain US national rights, the mark should be registered by the US Patent and Trademark Office. A registered mark can use the ® symbol. To keep rights, the mark must continue to be used in commerce. Marks can also be registered in foreign markets (countries) around the world.

What does one register a mark?
Before a mark is chosen or registered, a search should be performed to make sure there is no confusingly similar mark in the same class of goods. If not, there are two approaches to registration: 1) actual use in commerce, and 2) intended use in commerce. To get registration, there must be actual use in commerce; however, the trademark office will start the procedure and assign a priority date if there is a genuine intent to use the mark within six months (can be extended). This is a little more expensive because later proof of actual use must be supplied; however, the intent to use application has the advantage of an earlier priority date.

What happens after an application for registration is filed?
The trademark examiner performs a search to make sure there is no confusingly similar mark in the same class. The examiner also requires that the mark not be generic or simply descriptive of the product (for example the mark "YELLOWCHEESE" is generic or descriptive of cheese products and could not be registered. A mark like "HUB-BUB" for bicycles is not generic and not descriptive. It could be registered for bicycles if there are no confusingly similar marks already registered for bicycles. For example, suppose somebody has registered the mark "RIM BUB" for bicycles. This might be confusingly similar and might not be able to be registered. After the examiner approves the mark for registration, it is published in the Patent and Trademark Office Gazette. Here, anyone is free to challenge the registration if they feel there is a reason it should not be registered. Such a challenge is called an opposition. An opposition is decided by the Office.

How long is a registration good for?
The registration is good for as long as the mark is used in commerce to represent the registered class of goods or services, and as long as the mark does not become generic of the products. A good example of a registered mark is XEROX®. This mark is, unfortunately for Xerox Corp., becoming generic for copying machines. For example, the sentence "I'll xerox it for you right away!" Here the mark is being used as a verb for copying. Enough common usage like this, and Xerox Corp. could lose the mark.

What is a strong mark?
A strong mark is one that is very well known. An example is Coca-Cola®. A strong mark is given additional protection outside its normal usage and class. For example, if your company wanted to introduce a line of perfume called "Coca-Cola for Ladies", the Coca-cola company would go to court and prevent you from using this name. The reason is that this use of the famous mark would "dilute" it. It would also confuse the consumer as to the source of the perfume. Consumers might believe that the product was being produced by the Coca-cola company. Anti-dilution laws arise under both state and federal law.

How long does it take to register a mark?
If there is no confusingly similar mark, and the mark is not generic or simply descriptive of the product, and there is no opposition, a mark can be registered in the US in about 9 months. Registration in other countries can be much faster.

What does it cost to register a mark?
As with patents, there is no easy answer to this. The quick answer is between $900-3000 depending on how much searching is done and how close other marks may be.

What about international protection?
Marks can be protected in most countries (markets) around the world. In some countries, it is not necessary to actually use the mark in that country to register it.