Find answers to some of the most frequently asked questions about trademarks and service marks below. To speak with a trademark attorney about your specific case, call (800) 451-4041 for a free consultation, or contact our local offices to speak with a trademark attorney in Albany, New York City, Phoenix, Washington DC, or Boston.
What Can Be Trademarked?
Any phrase, word, symbol, design, or combination thereof that identifies the source of goods or services and distinguishes it from another can be trademarked. While trademarks indicate the source of goods, service marks identify and distinguish the source of services. Generally speaking, trademarks and service marks are used to identify and protect a brand – business names, logos and slogans – but even a color can be trademarked.
Examples of things that cannot be trademarked include vulgar, disparaging, immoral, deceptive or scandalous words or phrases, government symbols or any likeness of a U.S. President. In addition, proper names or likenesses cannot be trademarked without consent, and the trademark cannot affect the performance or functionality of the good, such as the tint on eyeglasses.
Why is a Trademark Important?
Trademarks are the best way to protect the goodwill associated with your products or services that define your brand. In simple terms, a trademark protects the owner by law if someone steals their logo or otherwise infringes upon their brand. Proper registration, usage, and enforcement of trademarks are critical to their value, which is why most major brands enlist the help of a trademark attorney.
In addition to providing a Trademark Clearance Opinion on whether or not a proposed trademark is registerable with the U.S. Patent and Trademark office, trademark attorneys can assist with the process of registering a trademark and help protect a trademarked brand by proactively monitoring to detect infringing uses.
What is the Difference Between Registered & Unregistered?
Use of the TM symbol indicates that the intellectual property has been claimed as a trademark, however, it has not been registered with the U.S. Patent and Trademark Office. The registration symbol ® means that the property has been registered, and it cannot be used by anyone else in the industry for commercial use.
In general, an unregistered trademark may still be effective in a small geographic area, but national companies will need to register their intellectual property to ensure legal protection across the country. Federal registration provides a public record of trademark ownership, and allows trademark owners to sue for trademark infringement. While you can register a trademark at the state level, the protection is not as strong.
When Does a Trademark Expire, and Can it be Renewed?
To maintain a trademark registration, the owner must file required maintenance documents with the U.S. Patent and Trademark Office at regularly scheduled intervals. Just as when applying for trademark registration, the law requires that the trademark remain in commercial use, or meet excusable nonuse requirements. In most countries, the owner will need to contact a trademark attorney to file the registration renewal on his or her behalf.
Five years after the trademark is registered, the owner must file a Declaration of Use and/or Excusable Nonuse under Section 8, proving that the trademark is in commercial use for the goods and services in the registration, or that it is not in use due to special circumstances that excuse nonuse. In addition, every ten years, the owner of the trademark registration must file an Application for Renewal, as well as a Declaration of Use and/or Excusable Nonuse under Sections 8 and 9.
What Happens if Someone Else is Using a Registered Trademark?
Using another brand’s trademark for similar goods or services within the same industry is illegal. While other companies may use a trademark if they sell different goods or services, large companies often file cease and desist orders across all industries because they are considered household names.
The most common type of trademark infringement occurs when there is a likelihood of confusion between two trademarks. The second type of trademark infringement, known as dilution, occurs when a famous trademark’s distinctive quality is blurred or tarnished by a similar mark being placed on an inferior good or service, even if it’s a totally different product.
In most infringement cases, a trademark attorney will draft and send a cease and desist letter on behalf of the trademark owner. If that does not deter the other party, a trademark infringement suit will need to be filed in federal court.
The contents of this webpage are for informational purposes only and not for the purpose of providing legal advice. Please call (800) 451-4041 for a free consultation, or contact our local offices to speak with a trademark attorney in Albany, New York City, Phoenix, Washington DC, or Boston.