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Frequently Asked Questions on
TRADEMARKS

What is a trademark?

A trademark is something used by a manufacturer or merchant to identify the source of goods or services in commerce. Trademarks originally derived from the "hallmarks" which the Guild Halls of early metalsmiths stamped into their work to indicate who had made them, and attest to the purity of the metal. Today, nearly anything that can distinguish your goods or services from your competitors' can be considered a trademark. ("Hallmark" itself is a trademark for greeting cards owned by Hallmark Cards, although in that mark  "Hall" had nothing to do with Guild Halls - "Hall" was the name of the founder of the company).

Strictly speaking, a trademark used in connection with services is called a "Service Mark", and there are also special-purpose marks called "Collective Marks" (such as "IGA" for members of the Independent Grocers Alliance) and "Certification Marks" (the "Good Housekeeping Seal of Approval" or the Underwriters Labs mark). They all work in more or less the same way, so for the purposes of this discussion, we'll just call all such marks "trademarks". You can find more detailed discussions of these special marks below. 

Hallmark logo is a registered trademark of Hallmark Cards, Incorporated - IGA logo is a registered trademark of IGA, Inc.

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What kinds of things can be a trademark?

Pretty much anything which can serve to distinguish your product or service from another's:

  • A word or name: "Exxon" for petroleum products, "Century 21" for real estate services.
  • A phrase or slogan: "It's the real thing" for soft drinks, "Where do you want to go today?" for software.
  • A way of presenting a word: the "stripey" IBM logo, or Walt Disney's signature on films.
  • A symbol or drawing ("logo"): The Rock of Gibraltar for Prudential Insurance, or Chrysler's pentagram.
  • A character: "Speedy Alka-Seltzer", or the Exxon tiger (on top of this page!)
  • A shape: the famous Coca-Cola bottle.
  • A distinctive building design: KFC's striped roof, McDonald's Golden Arches
  • Details of packaging ("Trade Dress"): The L'eggs egg for pantyhose; the yellow Kodak film box..
  • In rare instances, other things, such as: 
    • A sound: Tarzan's yell or the MGM lion's roar
    • A spoken phrase: Aamco's "Double A" beep beep "M C O"
    • A sequence of notes: the NBC chimes (hear them: MIDI Real)
    • A piece of music: the Harlem Globetrotter's "Sweet Georgia Brown" or the Lone Ranger "William Tell Overture" theme
    • A color: pink Fiberglas® insulation; or a combination of colors: Green body and yellow wheels, for John Deere tractors. 
    • A fragrance: a floral scent applied to Clarke thread 
    • A light display: "pre-programmed rotating sequence of a plurality of high intensity columns of light projected into the sky to locate a source at the base thereof" for Ballantyne of Omaha

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How do I choose a trademark?

There are lots of factors involved in choosing a trademark. Most important, pick a distinctive trademark which will set a tone for your product or service, set it apart from others, and make customers want to buy it. The mark needn't be descriptive - in fact, it's better if it isn't. Trademark professionals call this the "strength" of a mark - you want a mark which is as strong as you can make it.

There is a spectrum of types of marks, ranging from very strong to very weak:

Very Strong

Coined

Xerox

Strong

Arbitrary

Apple

Less Strong

Suggestive

Rent-a-Wreck

Weak

Descriptive

Very Best

Not a mark

Generic

Aspirin

You will want to review our "Trademark Do's and Don'ts" page for more details.

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How can I tell if I can use a mark?

Before you begin to use a mark, choose it carefully and be sure you're not infringing on someone else's mark. With today's computerized databases, a trademark search is relatively inexpensive and fast, and cheap insurance against having to change your mark or defend a lawsuit later. We recommend that you start by doing a preliminary search yourself, and then, when you've settled on a mark you think is OK, have us do a professional search. See our Trademark Budget Estimator for details.

The test of a mark is "likelihood of confusion" - that is, "is the proposed mark so close to an existing mark that it is likely to confuse the intended consumer as to the source of the goods?" If there is any question, play it safe and try another mark (or consider contacting the prior user and getting his OK, if you really want to use a mark which might be a problem).

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I've formed my corporation, and the state corporation bureau approved the name. 
Does this mean I can use the name as a trademark? 

No. You may have registered your corporation (or LLC, LLP, etc.) with your state's corporation bureau (Secretary of State, in NY), but that does not mean that you are clear to use the name as a trademark. The state has only reviewed your proposed company name to make sure that it is not identical with any other company name in the state. They just want to be sure there is some small difference which would allow them to distinguish your name from others for purposes of billing you for your corporate tax, or allowing someone who wants to sue you to serve papers on the proper company. For example, New York has a "Premier Alliance Corp." in Great Neck, Long Island, and also "Premier Alliance Consultants, LLC" in Brooklyn. From the trademark point of view, there is clearly a likelihood of confusion between these names, but for corporation purposes, they're just fine. 

Also, most states will search corporate names only within their own state and won't search Federal trademark registrations at all, so there could well be a "Premier Alliance Corp." in each of the other 49 states, and a company in Nampa, Idaho has a Federal registration for the mark "Premier Alliance" for financial planning services.  

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Now that I've chosen a mark, how do I trademark my product name?

You don't - the word "trademark" is a noun, not a verb. That is, it's something you have, not something you do. You create your trademark rights as soon as you begin using the mark in commerce, as long as you are using it correctly, and they continue for as long as you continue to use the mark in commerce. The longer you use your mark, and the more widely you use it, the stronger your trademark rights become.

Your trademark will give you the ability to stop others from using similar marks in the same market and on similar goods or services, if they adopted the mark after you did and with notice of your use.

In order to keep your rights, though, you must protect them. If you allow others to adopt the same marks and use them themselves, your mark will be made weaker ("diluted").

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How do I protect my trademark?

Let the world know your mark is your mark - if someone does not realize that you are claiming trademark rights in a mark, they may be able to adopt it innocently and keep on using it even after you discover their use.

By the way, our owl logo and tag line "Our knowledge protects yours" 
are registered trademarks of Brown & Michaels, PC

One way to ensure that everyone knows about your mark is to register it. That's called "constructive notice", and means that once you're registered no one can claim that they didn't know you were using the mark if they began using it after your registration. You may apply to register the mark with the Patent and Trademark office as soon as you have begun to use the mark in interstate commerce or foreign, or if you have the intention to do so. (See "Why should I register my mark?", below, for the benefits of registration.)

Whether or not the mark is registered, you should be sure to give proper notice that you intend to reserve your trademark rights. You do this by placing a "tm" or "®" (the r-in-a-circle mark) next to the trademark when you use it in connection with the goods. Don't use r-in-a-circle "®" unless the trademark is registered with the U.S. Patent and Trademark Office.

Once you've established your rights to use your trademark, you must be sure to enforce it. That is, if you become aware that someone else is using your mark you must inform them of your rights and demand that they stop. Otherwise, they may wind up acquiring rights to the mark, too, which might in time come to supercede yours. Coca-cola has "truth squads" who travel around the country ordering "coke" at restaurants, and serving warnings on those who serve them Pepsi!

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Why should I register my mark?

Registration gives you these advantages:

  • The registration becomes "constructive notice" of your ownership of the mark. That is, once your mark is registered on the Principal Register, anyone anywhere in the United States who starts to use the mark is presumed to know about your use. This can be important, since in the absence of a Federal registration, if someone in another state starts using the mark without knowledge of your use, they will have the right to continue using it, and may also be able to stop you from expanding your use.
  • You may use the r-in-a-circle ® notice.
  • You may sue in Federal Court.
  • Your registration can be used in disputes over internet domain names to defeat a domain name owner who does not have a registration, at least according to current rules.
  • Statutory damages and treble damages are available, the latter in cases of "counterfeit" goods.
  • After five years of registration on the Principal Register, you can have the mark declared "incontestible", which means that no one can later stop you from using it, even if you adopted after they did.
  • If your mark is registered on the Principal Register, you can file it with the US Customs and Border Protection Agency, which can help in stopping importation of infringing goods. 

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If I register my mark in color or in a specific type font, 
can someone else register or use the mark in a different color or font? 

The standard for both infringement and registration is "likelihood of confusion". So, if you register the logo in black and white, without claim to color, no one can register or use a confusingly similar logo in any color (or no color) without infringing (and the PTO will not register such a mark).

It's not quite so clear if you DO claim color, since such a claim means that you consider the colors to be an essential part of the mark. For an example of where color matters, think of the Mobil sign, where the "o" is red and the "M-bil" is blue. They registered both as a word mark and in color, because they want to preclude others from using "Mebil" (word mark) and also "Force" with the "o" in red and the "F-rce" in blue.

The answer would depend on the logo, really - if your logo was a simple cross, and you register it in sky blue with a claim to the color, you wouldn't have much of a claim against other crosses in other colors (like, for instance, the Red Cross). There are just too many similar logos for you to claim any exclusivity. On the other hand, if your logo were really unique (Mobil's Pegasus flying horse, say) and you register it with a claim to a color, the protection would probably extend to the same unique logo (and maybe other flying horses) in other colors.

Bottom line - unless the color is essential, don't claim it. 

As to type fonts ("stylized marks"), the same standard applies.  Think of the striped "IBM" logo for example - IBM wants to protect the look of the mark (i.e. NEC should not use NEC in a similar striped fashion, even if the word NEC is not confusingly similar to the word IBM). On the other hand, they also want to protect "IBM" as a word. Many companies which have stylized marks also register as word marks ("standard characters"), to cover both situations.

IBM logo is a trademark of International Business Machines Corporation. 

"Mobil" and Pegasus flying horse are trademarks of Exxon-Mobil Corporation. For an interesting history of these marks (and the Exxon tiger, too) see the Exxon-Mobil website 

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If I register my mark in one class, can someone else register the mark in another class? 

The class is really just for the convenience of the USPTO. "Likelihood of Confusion" depends on the goods/services covered by the mark more than the class number. If you register for fan belts for farm machines in class 007, that probably would be confused with the same mark for fan belts for land vehicles in class 012 (but probably not with belts for blue jeans in class 025). On the other hand, all scientific and technical goods are in class 009, so you could easily have the same mark registered to different people for floppy disks and x-ray machines, which both fall in that class.

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How long is my trademark valid?

Your rights in a trademark continue as long as you use the mark.

Federal registrations are valid for ten years, but they may be renewed over and over, so long as you are still using the mark in interstate commerce. The oldest continuously registered mark dates back to the 1870's. While your attorney may be able to remind you to file renewals, you should be sure to keep track of the renewal dates yourself, too, so that you will not have your registration lapse for failure to file the appropriate forms.

Note that during the first ten-year term (only) you'll need to file a "section 8 affidavit" during the fifth year of registration, indicating that you're still using the mark, to keep the registration alive. You'll also need to file a "section 8 affidavit" with each renewal application over the life of the registration. As with renewals, be sure to keep track of the dates these forms are due, and be sure they are filed on time, or your registration will lapse.

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What does registration cost?

The cost of registration depends on the type(s) of goods or services on which you are using the mark, and whether or not the Patent and Trademark Office has any problems with the application. You should expect to spend $1000 or more to register a single mark in a single class of goods or services.

For each additional class of goods or services, there's an additional fee to the Trademark Office. For example, if you're using the mark on t-shirts (class 25) and mugs (class 21), or perhaps for custom printing services for t-shirts (class 42), each class of goods requires a separate filing fee. The same is true when you renew the registration, etc.

We have a detailed trademark costs estimator on this website.

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What information do I need to provide for an application to register a trademark?

For us to prepare an application for you, you will need to provide the following:

Information on the Mark

  • The mark you want registered. 
  • If the mark is anything other than a word or words in English which can be registered in typed form without any special typography, then we will need a clear drawing of the mark. This drawing will become the image on the printed registration, when it issues, so it is important that it be as clear and crisp as possible. We can accept the drawing in printed form, suitable for scanning, or in electronic form as a GIF, JPG or TIFF image file. If you use the mark on a web site, give us the URL and we can download an image from the site. Note that a drawing image is required for word marks only if they must be in a specific type font or format, or if they use any special or non-English characters ("stylized").
    • If the drawing is in color, we need to know whether or not you actually want to register the colors - in most cases it's better to file the application without reference to color, in case you will be using the mark in black-and-white or other colors at some point. 
    • If color is a necessary part of the mark (think of the "Mobil" logo, with the blue letters and red "o"), then we need a verbal description of the colors as used in the mark, and how they are used. Do not assume we will recognize "turquoise" or "teal", or realize that only part of a letter is aquamarine, and the rest is royal blue  - if something needs to be sky blue or taupe shading to burnt umber, say so. The drawing must also be in color, and must match the verbal description. 
  • If the mark is something which can't be represented in a simple drawing (a sound, a color (as such), etc.) we need a description of what the mark is.

Information on the Mark Owner

  • The name of the trademark owner.
  • What kind of entity is the trademark owner? (i.e., a Pennsylvania Corporation, New York Partnership, individual United States citizen, Spanish Limited Liability Company). 
    Note: If the owner is an individual from a country which does not always follow the US standard of given name first, followed by family name, please avoid confusion by either capitalizing the family name ("CHOU Hong-Sin" or "Hong-Sin CHOU") or specifically indicating which is the family name ("Chou Hong-Sin - Chou is the family name").  
  • The address of the trademark owner. 
    Note that neither we nor the USPTO are familiar with the particular addressing conventions of every country. 
    • In the US, the standard address is: 
      ## Any Street - XXX
      City, State ZIP
      where "##" is the house number, XXX is an apartment or office number or the like, and ZIP is the postal code.  
    • If the address is a named building, then it would appear as:
      XXX M & T Bank Building
      ## Any Street
      City, State ZIP
    • If your country uses any other standard, to avoid confusion please indicate which parts of the address are Building name/number, Street Address, City name, and which is a postal code. If part of the address is a prefecture or state or other political entity, it would help to label that as such, too ("Mie Prefecture").  
  • If the trademark owner is a foreign entity, and/or if the application is to be based on a foreign application or registration, there are other requirements - contact us for details.

Information on the Use of the Mark

  • A description of the goods or services on which the mark is (or will be) used.

It is important to note that the USPTO requires a very detailed list of goods in applications - not just "clothing", but "t-shirts, skirts, socks, men's jackets and dirndls". If you're filing an "intent to use" application, you can list any item on which you intend to use the mark - but if you are filing based on actual use in commerce, you must make sure that you have used the mark on every item on the list. Many applications and registrations have been declared invalid for fraud because the owner was not selling some of the items on a long list of goods. 

  • The date the mark was first used, and the date the mark was first used in interstate or international commerce (if the application is based on use - otherwise let us know the application will be filed on an "intent to use" basis).
  • If the application is based upon actual use, you will need to supply a "specimen" of the mark as actually used on the goods or services. If you have a web page with clear pictures of the goods, you can just send us the URL and we can get the specimen from there. Note that the specimen is not the same as the drawing. For the drawing, we need a good clear image of the mark. For the specimen, we need a picture of the mark as used on the goods or services.
    • For goods, this means either actual labels, or photographs of the goods showing the mark physically applied to the product - advertising material is not acceptable, unless it contains a photograph of the goods showing the mark. 
    • For services, advertising material is acceptable, or business cards, flyers, program brochures or catalog pages, etc. 

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What are some trademarks you've registered?

We have a web page showing a sample of some of the trademarks and service marks we've registered for clients. 

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What about those special types of trademarks you mentioned?

  • Service Marks distinguish one person's services from another. Normally, if you just sell goods, the act of selling the goods does not require a service mark. You might have a service mark and a trademark for the same business, though. For example, if you're using your mark on clothing sold in many stores, and also on a chain of clothing stores selling various brands of clothing, you might have a trademark for the name or logo on the clothing, and a service mark for "retail clothing services" (for example, "Old Navy"). If you sell pies in your chain of restaurants, you might have a service mark for "restaurant services" and a trademark for "pies". There are some slight differences in how you apply for service mark registrations, as opposed to trademarks, but basically the two function and are treated the same.
  • Collective Marks are used to indicate membership in an organization, for example the "IGA" mark used on supermarkets and grocery stores indicates membership in the Independent Grocer's Alliance. This differs from service marks for the same services (say, "A&P" or "Topps" for "retail grocery services") in that the mark is owned by the Alliance, but the stores are owned by individuals. "FTD" (and the winged Mercury logo at left) is another example of a collective mark, used by the individual member stores of the Florists' Transworld Delivery Association. The union label in clothing or printed goods is somewhat similar to this use. 
  • Collective Membership Marks indicate membership in an organized group. For example, the letters "AAA" inside an oval indicates membership with the American Automobile Association, or the diamond logo of the ARRL at right indicates membership in the American Radio Relay League.
  • Certification Marks certify that goods or services of others meet certain standards established by the owner. Note that you cannot apply a certification mark to your own goods or services, you certify the goods or services of others, and they apply the mark to their goods or services. You will most commonly see certification marks used to certify:
    • Geographic Origin: goods from a specific geographic region, such as "Harris Tweed" cloth, from the Isle of Harris in Scotland.
    • Testing Standards: goods or services are tested in relation to the quality, materials, or mode of manufacture. The "UL" mark indicating Underwriters Laboratory approval, the "Woolmark" logo, or the Good Housekeeping Seal of Approval are examples of certification marks. 
      Woolmark logo at right is a registered mark of Woolmark Americas, Inc. 
    • Compatibility with a Standard: The Windows logo, which Microsoft allows software which meets certain standards of compatibility with the Windows operating system  to display, is an example of this type of certification mark. The quality of the software isn't necessarily at issue, just that it works with Windows.

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Does my US registration protect my trademark internationally?

 A US trademark registration does not have any direct effect in other countries. However, under the provisions of various treaties a US registration (or even an application to register) may be used as the basis for filing applications to register your mark in other countries. The variations from country to country are too complex to detail here. If you are interested in pursuing trademark registrations in other countries, contact Brown and Michaels for details.  

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What is the "Madrid Protocol"?

The "Madrid Protocol" is a system coordinated by the World Intellectual Property Organization (WIPO) whereby a trademark owner can protect a mark in many different countries by filing one application, based on a national application to register the mark in the owner's country. The application is filed in one receiving office in one language, without the need to separately file in each country. The application fees depend on which countries are selected and, since they are stated in Swiss Francs, will change with the exchange rate.  

The Madrid Protocol was established in 1996, but initially  this system was not available to US nationals. The US signed the Protocol in 2002, and effective November 2, 2003, it became possible to file Madrid Protocol applications through the USPTO. More information on the Madrid Protocol is available on another page on this website. 

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How can I take advantage of the reduced "TEAS-Plus" filing fees? 

The normal USPTO electronic filing fee (presently $325) is discounted an additional $50 (per class) if the application is filed through the "TEAS-Plus" system. Basically, this means that the application must be filed electronically with the goods and services selected from a list of acceptable goods and services, and with all of the required information supplied at the time of filing. TEAS-Plus status must be maintained throughout prosecution of the application by doing all post-application filing electronically and remaining within the TEAS-Plus requirements for descriptions, etc. 

Specifically, to file through TEAS-Plus, your application must meet the following requirements:

  • Must contain at least the following information: The applicant’s name and address; The applicant’s legal entity; The citizenship of an individual applicant, or the state or country of incorporation or organization of a juristic applicant; If the applicant is a partnership, the names and citizenship of the applicant’s general partners; A name and address for correspondence; An e-mail address for correspondence, and an authorization for the Office to send correspondence concerning the application to the applicant or applicant’s attorney by e-mail;

  • Must have one or more bases for filing that satisfy all the requirements for that basis (i.e. 1(a) actual use, 1(b) intent to use, 44(d) foreign application or 44(e) foreign registration);

  • The identification of goods and/or services must be selected from from the Office’s Acceptable Identification of Goods and Services Manual. No changes or additions are permitted, except if the listing in the manual requires completion. For example, if the listing is "Parts for Motor Vehicles, namely...", you can fill in "brake drums and brake shoes", but you cannot add "and watermelons, cantaloupes and mangos."

  • The goods or services must be correctly classified (note: since the description must be taken from the Manual, this will be automatically filled in when you choose the goods) 

  • In an application based on foreign application or registration, the scope of the goods and/or services covered by the section 44 basis may not exceed the scope of the goods and/or services in the foreign application or registration;

  • There must be a clear drawing of the mark. If the applicant does not claim standard characters, the applicant must attach a digitized image of the mark in .jpg format. If the mark includes color, the drawing must show the mark in color;

  • If the mark includes color, there must be a statement naming the color(s) and describing where the color(s) appears on the mark, and a claim that the color(s) is a feature of the mark;

  • If the mark is not in standard characters, you need to provide a description of the mark;

  • If the mark includes non-English wording, you must file an English translation of that wording;

  • If the mark includes non-Latin characters, you need a transliteration of those characters (what they sound like, in English characters)

  • If the mark includes an individual’s name or portrait, you need either (i) a statement that identifies the living individual whose name or likeness the mark comprises and written consent of the individual, or (ii) a statement that the name or portrait does not identify a living individual

  • If the applicant owns one or more registrations for the same mark, you must make a claim of ownership of the registration(s) identified by the registration number(s)

The following kinds of applications cannot use the TEAS-Plus system:

  • Applications for certification marks

  • Applications for collective marks or collective membership marks

  • Applications for registration on the Supplemental Register

  • Applications which need to file something which cannot be filed through the TEAS system (for example, if a video tape is required, or something which can only be supplied in print form). Note that sound marks can be filed through TEAS-Plus, using a WAV or MPG file (which must be filed in a special way).

We receive many requests to file applications to register marks for many different kinds of goods. TEAS-Plus is really most suitable for applications with only a few items on the list of goods, chosen from the USPTO's list. If your application has more than four or five items in the list of goods, it takes much longer to search and select the goods from the USPTO's list than it does to simply type the descriptions. In that case, the small savings in USPTO fee will be more than outweighed by the increase in cost for our time to use TEAS-Plus.  

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You're not done yet! You should also look at our Trademark Do's and Don'ts web page.

Back to Trademarks Page

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