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Trademark Overview

Trademarks are words, phrases, logos that identify a business’s goods or services. Technically if they cover services they are “service marks” although the words “trademarks” or “marks” are often used to cover both categories.

Trademark law is handled on a country by country basis. In the U.S. (as opposed to most other countries) rights to trademarks are generally acquired by using the mark in interstate commerce. The one exception to this is that trademarks can effectively be reserved on the federal level, though not on the state level, by filing an “intent-to-use” application with the U.S. Patent & Trademark Office (USPTO). Once the application is approved, it is retroactive back to the filing date. An “intent-to-use” application is good for six months, but can continue to be renewed in six-month increments. Once the mark is used in commerce across state lines, a certificate of use is filed with the USPTO and the application continues as a regular trademark registration.

With goods, there must be a sale across state lines before the interstate commerce requirements is met. With services, advertisements and web sites offering the services (as opposed to actual sales of the services) can be sufficient to constitute interstate commerce if they are written to meet the requirements.

Although just using a mark starts building ownership rights to it, registration strengthens those rights. Registration can be done at either the state level (although then there is protection only in the state(s) where the registration is done) or the federal level. There is no international registration for trademarks; instead, they must be registered country by country.

Even when a mark has been registered though, prior users of the mark or a similar mark have priority for the same or similar goods and services. For this reason, it’s important to conduct searches before settling on a mark to try to avoid conflicts with prior users. The USPTO has a free search service for all federal registrations and applications. This does not pick up state registrations (for that one needs to use a paid online service) or marks that are not registered at all. For those an Internet search should be performed and possibly a paid service that checks brands. With searches it’s important to search all variants of each word to identify similar marks. For example with CHILLY one might search “chillee”, “chill-e”, “chilie”, etc. (Marks are considered similar by comparing sight (how they look), sound and meaning.) After the user has run some initial searches on a mark, it’s generally a good idea to have an attorney conduct a more thorough search before spending the money on a trademark application.

It does not matter if a prior mark is identical or similar unless it is for the same goods or services, or similar ones or a natural extension of those uses. In other words, prior use of CHILLY for outboard motors does not affect later use of CHILLY for clothes.

Also, the more distinctive a mark is, the stronger it is. Marks run from fanciful (the strongest) to arbitrary to descriptive. Descriptive marks can only be registered on the supplemental federal registration (rather than the principal register) – and so get protection that is a bit less strong – but after five years they can be moved to the principal register. Generic marks are so weak that they cannot be registered at all; an extreme example would be TISSUE PAPER for facial tissue.

In applying for federal registration, the description of the mark is crucial. Basically the description should be as broad as possible for the class(es) being applied for. The USPTO can cut back the scope of a description during the registration process, but the description cannot be expanded (unless a brand new application with a new filing fee is filed). The description must identify at least one class of marks to be registered in. The classes are divided into goods and services and then into subgroups by type. To keep registration costs down, sometimes owners limit the registration to one class that best fits the mark, since even if someone later registers the same mark in a different class there is still infringement if the mark applies to the same or similar goods or services. (Also, if the mark is successful, applications for additional classes can always be filed later.)

Once an application is filed, within a month or two the USPTO virtually always responds with an objection to the application. (A number of years ago most applications went through without objections.) Apparently this is done to limit registrations to people who are serious about them and discourage others from tying up names they do not really intend to use. Because the objections are legal objections – citing statutes, regulations and cases – it’s extremely difficult for anyone other than attorney to prepare an adequate response to them. On the other hand, assuming that adequate searches have been done prior to filing the application, responses to the objections have a high rate of success and the application process then generally continues forward.

For more information on trademarks, see our articles in the Trademarks section of our web page Internet Law, Trademarks, Trade Secrets, Etc.