Answers to Frequently Asked Questions About Trademarks


What Is A Trademark?

A trademark may be a word, group of words, symbol, or design which is used to identify and distinguish the goods or services of one person from other persons selling similar goods or services.  For example, the word "Ivory", when placed on a container of soap, indicates that the soap was made by Proctor and Gamble.  A Rolls Royce hood ornament indicates that the car was made by Rolls Royce, and not Ford.



How Can I Protect My Trademark?

The user of a trademark can acquire an exclusive right to use that trademark by using the trademark extensively, so that the public associates the trademark with the particular products of that user.  However, it is hard to establish that this sort of trademark recognition has been created, so it is difficult to prove the existence of trademark rights in this way.  A more simple way to protect a trademark is by registering the trademark with the United States Patent and Trademark Office.  If the Patent and Trademark Office issues a certificate of registration on the principal register, the registrant is entitled to a presumption that he has the exclusive right to use the trademark with respect to the identified products or services, throughout the United States.



What Are the Requirements for Applying for a Federal Certificate of Trademark?

A trademark application must be filed, together with the required filing fee, and a drawing meeting the requirements of the Patent and Trademark Office.  If the trademark is already being used to identify goods or services being sold, a specimen such as a label or tag showing how the trademark is used must also be submitted.  If the trademark is not currently being used, the applicant must verify that he has an intent to use the trademark in the future.



What Might Cause the Trademark Application to be Rejected?

The Patent and Trademark Office will not issue a certificate of trademark if another person is using a similar trademark to identify similar goods or services.  Registration may be refused in a number of other situations as well.  For example, registration is not permitted if the trademark is deceptive, immoral, primarily a surname, primarily geographically descriptive, or merely descriptive of the goods or services.



How Long Is A Trademark Registration Effective?

A federal trademark registration is effective for ten years from the date the certificate of registration issues, if an affidavit is filed with the Patent and Trademark Office between the fifth and sixth anniversaries of the certificate date, establishing that the trademark is still being used.  The trademark registration can be renewed indefinitely for periods of ten years each, if the trademark is still being used and a renewal certificate is properly requested.



What Are the Benefits of a Federal Trademark Certificate?

A federal trademark certificate on the principal register establishes a presumption that the registrant has the exclusive right to use the trademark to identify goods or services identified in the Certificate throughout the United States.  The registrant has the right to sue anyone using a confusingly similar trademark, to obtain a court order forcing the infringer to cease using the trademark.  The infringer may also be held liable for lost profits, actual damages, costs, and in some cases, attorney's fees and three times the amount of actual damages.



Is a Trademark Search Required?

An application for a federal trademark certificate can be filed without conducting a trademark search.  However, a trademark search can be conducted using the website of the Patent and Trademark Office, and is highly recommended prior to filing a trademark application.



How Much Does a Trademark Application Cost?

Gould, Whitley & Marshall will prepare and file a trademark application for a flat fee of $475.  Additionally, a filing fee (usually $325) is payable to the Patent and Trademark Office.  If the trademark application is rejected for any reason, then more attorney time may be involved to respond to that rejection, billed at our normal hourly rates.



Is It More Expensive to Register a Trademark If You Are Not Using It?

Yes.  If the application is based on an intent to use the trademark in the future, rather than stating the date on which goods or services were first provided labeled with the trademark, then the application process is a two step process.  The original application costs the same as if the trademark were already in use.  Within six months of the trademark application being allowed by the Patent and Trademark Office, the applicant must file a Statement that the trademark is now being used.  The cost of filing the Statement is typically $400, including filing fees.  If the trademark is not used within that six months, a six month extension of time can be obtained, usually at a cost of $450, including filing fees.



What Do "Tm" and "®" Mean?

Some people indicate that they are using a particular word or logo as a trademark by placing "Tm" or "Sm" next to the trademark.  Once a trademark is registered with the Patent and Trademark Office, the symbol "®" should be used to provide notice that a certificate has been obtained.  It is not permissible to use the symbol "®" prior to obtaining a federal certificate of registration.



How Do I Start the Trademark Registration Process?

Please call us at 719-531-0994, or e-mail Linda Gould.

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