Trademark FAQ

Q. What is a trademark?

A. A trademark includes any word, name, symbol, or device, or any combination, 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. In short, a trademark is a brand name.

Q. What is a service mark?

A. A service mark is any word, name, symbol, device, or any combination, 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. A service mark is the same as a trademark, except that it is used to identify services instead of goods.

Q. Do I need to register my trademark?

A. No. However, federal registration has several advantages including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

Q. What are the benefits of federal trademark registration?

A. The benefits are:

1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with US Customs Service to prevent importation of infringing foreign goods.

Q. When is it proper to use the federal registration symbol (the letter R enclosed within a circle -- ® -- with the mark?

A. The federal registration symbol may be used once the mark is actually registered in the US Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

Q. What constitutes interstate commerce?

A. To obtain a federal trademark/service mark registration, the goods or services must be used in interstate commerce. For goods, "interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).

Q. What are common law rights?

A. Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration.

Q. How do I obtain a federal trademark registration?

A. A registration may be applied for by filing a properly executed application with the Patent and Trademark Office (PTO).

Q. Who may file an application?

A. Only the owner of the trademark (or an attorney on the owner's behalf) may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

Q. Do I need an attorney to file my trademark/service mark application?

A. No, but an applicant is responsible for observing and complying with all substantive and procedural issues and requirements whether or not represented by an attorney.

Q. Can the Trademark Office refuse to register a trademark or service mark?

A. Yes. The Office 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.

Q. How long does a federal trademark/service mark registration last?

A. The Trademark Office requires proof of trademark use in the sixth year after registration for the registration to remain valid. Additionally, registrations must be renewed every ten years from the date of registration. However, renewals granted prior to November 16, 1989 have a 20-year renewal term.