What is a Trademark?

A trademark is a company's brand name for its products or   services.   A trademark can be a word, phrase, symbol,   logo or a design (or combination thereof) that identifies   and distinguishes the source of the goods of one party.     Essentially, a trademark can be anything that identifies a   single company as the source of manufacturing, or the    source of origin, of products or services.  Nike is a word   mark, but the Nike swoosh symbol logo is a separate   trademark of the company.   A “service mark” is the same   as a trademark, but identifies a company’s services   instead   of products.   For example, Citibank is a registered trademark owned by Citigroup Inc. which identifies its banking services. 

Federal Registration

Trademarks can be registered in New York State, but federal registration with the US Patent and Trademark Office (USPTO) provides much broader protection for your company’s name or brands.  However, registration with the USPTO is not the source of trademark rights; trademark rights accrue only from actual “use in commerce” in the United States.  When you file, you must provide samples of products or services which are already being used in interstate commerce.  You may file an "intent to use" application, but then you must provide proof within six (6) months that you are actually using the trademark in connection with the sale of products or services. 

Trademarks are registered by product or service, and your registration protects your trademark only in the categories of products specified in your application.  There are 45 Categories in the USPTO International Schedule of Classes of Goods and Services.   A trademark in one category does not generally protect use of the mark outside that category.   In fact, two different companies can have the same word mark for two entirely separate categories of products, provided there is no danger of creating consumer confusion.  For example, no one could reasonably be confused into thinking that Ford Motor Company is affiliated with the Ford Modelling Agency.  Therefore, each company can register “Ford” as a trademark in their respective categories/industry.  There is a separate filing fee for each category you choose.

You must also provide the USPTO with an accurate description of your specific products or services with your application.  Many applications are rejected or inordinately delayed because the product description is not acceptable to the USPTO.  Unlike a simple copyright registration, trademark registration is not an intuitive process, and you should always consult and retain an attorney to prepare the application for your company.  Even with a competent and experienced attorney, the registration process takes several months or more to complete, and mistakes can be costly to overcome.  Contact our office today for a flat fee quote for our registration and trademark renewal services.

Using the ® Notice

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, even if you have not filed an application with the USPTO.   Usually the TM or SM is indicated by a raised superscript to the right of the trademark  (Ex: “You Deserve a Break Today” ^TM ).   However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

Why are trademarks so valuable?

A trademark often represents the entire goodwill of a company.  It is the first and most important investment of startup companies. The Coca-Cola trademark is far more valuable than all of the physical and tangible assets of the company combined.     

Importance of Selecting A "Distinctive" Trademark and Brand Name

The strength of a mark is a good predictor of the long term value of the mark and the cost of defending it.  Given the initial investment it takes to build a company brand and to implement a marketing strategy, it is expensive to make a mistake.  Most clients tend to make the common mistake of picking brand names that are descriptive, such as "Speedy Copy Center," because these are easy to market.  However, the USPTO frowns upon marks which are "descriptive" and may refuse registration.  The USPTO will not typically grant someone exclusive trademark rights to a descriptive term or phrase, because it  prohibits competitors from using common vocabulary to advertise their own products and brands.  Apple is a "distinctive" trademark because it is not descriptive of any product.  It is an "arbitrary" trademark.  The strongest trademarks are suggestive (Greyhound  bus lines),  arbitrary (Apple), and  fanciful or coined terms (Kodak, Celebrex).

Generic names can't be a trademark because it would grant a monopoly over product categories.  Notably, a word may be generic for one class:

                       KNIFE MAGAZINE -   magazine selling cutlery

yet arbitrary in another class:

                      KNIFE MAGAZINE -   music magazine    

Warning: By failing to police or protect a strong trademark, even a fanciful trademark can become generic.  The Bayer company for example, coined the mark "Aspirin," which later became a generic category of product and therefor lost its trademark protection.

Trademark Registration Maintenance

¡      File proof of use 5-6 years after registration (Section 8; 15 USC 1058)

¡      File Application for Renewal every 10 years after registration (section 9; 15 USC 1059)

¡      After 5 years, file proof of 5 years continuous use (Section 15)