Robert Kleinman is an experienced licensed attorney.
He earned an LL.M. in Intellectual Property from the
Benjamin N. Cardozo School of Law.
rkleinman[at]austinlegalcounsel.com
What is a trademark?

Generally speaking, a trademark is a distinctive word, symbol, or picture that a seller of goods or services affixes to distinguish its products from those of others. Product designs, product packaging, product color, and overall product presentation can achieve trademark status under certain circumstances–such status is referred to as trade dress. The owner of a trademark has exclusive right to use it on the product it was intended to identify and often on related products. The term Service Mark refers to a mark that identifies a service rather than a good, although the term trademark is often used to refer to both service marks and trademarks.

How does trademark differ from patent and copyright?

The three doctrines of trademark, patent, and copyright are related, and often confused. Briefly, copyright protection extends to the expression of an original idea fixed in a tangible form, such as a novel or a painting, and patent protection extends to an original functional invention, such as a new light bulb, or an original product design, such as a new basketball sneaker. An example will illustrate the differences: Fred’s Burgers has 10 restaurants nationwide. They use a special grill of Fred’s original design which cooks food very fast and saves power. The burgers are wrapped in wax paper with a cartoon of Fred’s face. “Fred’s Burgers” will likely be a valid trademark; Fred’s special grill may be patentable; The wax paper wrapper may be a copyrightable design..

What is the source of trademark rights and law?

The great body of trademark law in the U.S. comes from Federal law, which traces its authority from the Constitution. The Federal Statute governing trademarks is called the Lanham Act , at 15 U.S.C. 1051 – 1127. But each state may have its own statutory and/or common. law, and its own procedures for registration.

Do I need to register my trademark to receive protection?

No–although protection for a registered mark is far easier. One’s rights to a trademark are based in the use of the mark–not in registration. In fact, registration will not be granted until the mark is used in commerce. Trademark registration carries significant benefits, and is highly recommended. Importantly, registration extends a trademark’s reach nationally–unregistered marks may carry protection only in the specific geographic areas where they are used. Also, a registered mark serves as an initial determination of the validity of the mark. Thus, a registered mark carries weight when pursuing an infringer.

What do the symbols ® and ™ mean?

The symbol ® means that a mark is a registered mark, and should be applied only to marks that have received U. S. trademark registration. The symbol ™ means that the user is claiming rights in the mark, but that the mark is not yet registered. These symbols should always appear near your marks.

If two people are using the same trademark or similar trademarks, how is the matter decided?

Trademark rights are granted to whomever uses their trademark in commerce first. Often, two users will be using marks that are not exactly the same, but bear some similarity to each other. If the marks are not exact, as in the case of Evolution and Revolution, the matter is resolved by asking “is there a likelihood of confusion between the marks? Of course, the primary factor is the similarity between the marks, but a tribunal may consider other factors in answering the likelihood of confusion inquiry. For example, what is the proximity of the goods, i.e., is one user selling paint, and the other handbags? A lack of proximity between the goods makes confusion less likely. And, is one user a wholesaler, and one a retailer? Dissimilarity in the channels of commerce makes confusion less likely.

Practical and Statutory Restrictions.

Trademark rights are limited by practical concerns and by statute. A profane mark will be denied registration. A mark using the name of a living president will be denied registration. Also, marks that are “descriptive” of the goods they identify are unregisterable or of limited value. For example, one cannot register or gain rights in the trademark “The Car” for automobiles. To allow trademark rights for “The Car” would prevent other car manufacturers from using the term “Car” to describe their products. A descriptive mark is a weak mark, and an “arbitrary and fanciful” mark is a strong mark. Examples of an arbitrary and fanciful marks can be found in pharmaceutical products such as Viagra and Valium. Such terms are completely new words–their sole purpose is to exist as trademarks.

How Do I Determine If Someone Is Already Using a Mark?

You perform a trademark search. You can 1) hire a service to search for you, 2) search the U. S. trademark records manually at a Patent and Trademark Depository Library, or 3) search online using the form below. Searching for trademarks, though, is an imperfect science, and no search can be expected to discover all potential users of a mark. Remember that trademark rights are created by the use of a mark, and not by registration. Thus, unregistered marks may be valid marks–and they are much more difficult to discover. Registered marks, on the other hand, are easily searchable through the U. S. Trademark Office.

Hiring a search service will usually yield the most thorough search, because such services search the federal trademark registries, state trademark registries, and “common law”. Common law trademark searches often search sources such as phone book records and the like. Such services cannot guarantee that such a search will find all marks. Also, even if a mark shows up on a common law search, that does not mean that the user of that mark has any rights at all–you may need to do further research.

At best, interpreting search results is highly technical, and best left to an experienced practitioner.

Searching the Federal Trademark Database.

Follow this LINK to search the U. S. Patent and Trademark Office’s TESS database of registered and pending marks. A pending mark is a mark that is in the process of registration, but for which a certificate of registration has not issued. A WARNING: the U. S. PTO does not keep the database up-to-date, and should be used as a preliminary search only.

How can I register my trademark in California?

The following is a list of fees for filings and services related to California state trademarks and service mark filed with the Trademark Unit of California’s Secretary of State’s Office. The informational materials and forms are provided in PDF (Portable Document Format) files, which can be viewed or printed using your Web browser and Adobe’s Acrobat Reader 3.0 software. These materials may be downloaded or may be obtained by contacting the Secretary of State’s Office in Sacramento, CA. The forms provide the minimum filing requirements of the California Business and Professions Code, and are not intended to provide legal or business advice. If you have specific legal questions or concerns you should contact a private attorney. All documents submitted to the Secretary of State should be typed, in order to provide sufficient contrast and legibility for microfilming purposes.

Registration of Trademark/Service Mark (LP/TM 100) Download (247k – 6 pages). The Fee is $70.00.
Assignment of Trademark/Service Mark (LP/TM 108) download (142k – 4 pages). The Fee is $30.00.
Renewal of Trademark/Service Mark (LP/TM 109) Download (126k – 3 pages). The Fee is $30.00.

Mail completed forms, with fee, to:

Secretary of State
Trademarks/Service Marks
P.O. Box 944225
Sacramento, CA 94244-2250
Phone Number: (916) 653-4984

Is registering a trademark in a state worthwhile?

Yes, especially in the more populous states such as California and New York. State trademarks usually cost less, and the review process is less rigorous. Often, a federal trademark cannot be as broad as one wishes, because of the thousands of currently existing federal marks (see the section below on interpreting trademark search results and registering a federal trademark). A state trademark can often buttress existing federal rights or a federal registration. Also, if you are not using the mark in interstate commerce (across state lines), your mark is not eligible for federal registration.

How Can I Register My Mark Federally?

Federal U. S. Trademarks are filed with the U. S. Patent and Trademark Office. The U. S. PTO now offers trademark registration services directly over the internet. Their e-TEAS service allows you to file directly, or PrintTEAS allows you to print an application that you can mail in. You can download forms for Federal Trademark by following the links below. The initial filing carries a fee of $325.00 per class of goods and services. Thus, choose your classes wisely. See the tutorial for how to complete the application at the U.S. PTO’s website.

If you wish to register a trademark that you are not yet using “in commerce”, you must 1) file PTO/TM/1478 as an “intent to use” application; and 2) thereafter file one of the following forms (with a fee of $100) :an “Amendment to Allege Use” if the application has not yet been approved for publication, or a “Statement of Use” if the mark has been published and the PTO has issued a Notice of Allowance. Links to the most common forms appear below:

Federal Trademark Forms.

The application and all other correspondence should be addressed to “The Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.” The initial application should be directed to “Box NEW APP / FEE.” An AMENDMENT TO ALLEGE USE should be directed to “Attn. AAU.” A STATEMENT OF USE or REQUEST FOR AN EXTENSION OF TIME TO FILE A STATEMENT OF USE should be directed to “Box ITU / FEE.”

The applicant should indicate its telephone number on the application form. Once a serial number is assigned to the application, the applicant should refer to the serial number in all written and telephone communications concerning the application.

It is advisable to submit a stamped, self-addressed postcard with the application specifically listing each item in the mailing, that is, the written application, the drawing, the fee, and the specimens (if appropriate). The PTO will stamp the filing date and serial number of the application on the postcard to acknowledge receipt. This will help the applicant if any item is later lost or if the applicant wishes to inquire about the application. The PTO will send a separate official notification of the filing date and serial number for every application about two months after receipt.

 

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