|
|
What is a Trademark?
A TRADEMARK is either a word, phrase, symbol or design, or
combination of words, phrases, symbols or designs, which identifies
and distinguishes the source of the goods or services of one party
from those of others. A service mark is the same as a trademark
except that it identifies and distinguishes the source of a service
rather than a product. Throughout this booklet the terms
"trademark" and "mark" are used to refer to both
trademarks and service marks whether they are word marks or other
types of marks. Normally, a mark for goods appears on the product or
on its packaging, while a service mark appears in advertising for
the services. A trademark is different from a copyright or a patent.
A copyright protects an original artistic or literary work; a patent
protects an invention. For copyright information call the Library of
Congress at (202) 707-3000.
Establishing Trademark Rights
Trademark rights arise from either (1) actual use of the mark, or
(2) the filing of a proper application to register a mark in the
Patent and Trademark Office (PTO) stating that the applicant has a
bona fide intention to use the mark in commerce regulated by the
U.S. Congress. (See below, under "Types of Applications,"
for a discussion of what is meant by the terms commerce and use in
commerce.) Federal registration is not required to establish rights
in a mark, nor is it required to begin use of a mark. However,
federal registration can secure benefits beyond the rights acquired
by merely using a mark. For example, the owner of a federal
registration is presumed to be the owner of the mark for the goods
and services specified in the registration, and to be entitled to
use the mark nationwide. There are two related but distinct types of
rights in a mark: the right to register and the right to use.
Generally, the first party who either uses a mark in commerce or
files an application in the PTO has the ultimate right to register
that mark. The PTO's authority is limited to determining the right
to register. The right to use a mark can be more complicated to
determine. This is particularly true when two parties have begun use
of the same or similar marks without knowledge of one another and
neither has a federal registration. Only a court can render a
decision about the right to use, such as issuing an injunction or
awarding damages for infringement. It should be noted that a federal
registration can provide significant advantages to a party involved
in a court proceeding. The PTO cannot provide advice concerning
rights in a mark. Only a private attorney can provide such advice.
Unlike copyrights or patents, trademark rights can last indefinitely
if the owner continues to use the mark to identify its goods or
services. The term of a federal trademark registration is 10 years,
with 10-year renewal terms. However, between the fifth and sixth
year after the date of initial registration, the registrant must
file an affidavit setting forth certain information to keep the
registration alive. If no affidavit is filed, the registration is
canceled.
Types of Applications for Federal Registration
An applicant may apply for federal registration in three principal
ways. (1) An applicant who has already commenced using a mark in
commerce may file based on that use (a "use" application).
(2) An applicant who has not yet used the mark may apply based on a
bona fide intention to use the mark in commerce (an
"intent-to-use" application). For the purpose of obtaining
federal registration, commerce means all commerce which may lawfully
be regulated by the U.S. Congress, for example, interstate commerce
or commerce between the U.S. and another country. The use in
commerce must be a bona fide use in the ordinary course of trade,
and not made merely to reserve a right in a mark. Use of a mark in
promotion or advertising before the product or service i s actually
provided under the mark on a normal commercial scale does not
qualify as use in commerce. Use of a mark in purely local commerce
within a state does not qualify as "use in commerce." If
an applicant files based on a bona fide intention to use in
commerce, the applicant will have to use the mark in commerce and
submit an allegation of use to the PTO before the PTO will register
the mark. (3) Additionally, under certain international agreements,
an applicant from outside the United States may file in the United
States based on an application or registration in another country.
For information regarding applications based on international
agreements please call the information number provided on page 4. A
United States registration provides protection only in the United
States and its territories. If the owner of a mark wishes to protect
a mark in other countries, the owner must seek protection in each
country separately under the relevant laws. The PTO cannot provide
information or advice concerning protection in other countries.
Interested parties may inquire directly in the relevant country or
its U.S. offices or through an attorney.
Who May File an Application?
The application must be filed in the name of the owner of the mark;
usually an individual, corporation or partnership. The owner of a
mark controls the nature and quality of the goods or services
identified by the mark. See below in the line-by-line instructions
for information about who must sign the application and other
papers. The owner may submit and prosecute its own application for
registration, or may be represented by an attorney. The PTO cannot
help select an attorney.
Foreign Applicants
Applicants not living in the United States must designate in writing
the name and address of a domestic representative -- a person
residing in the United States "upon whom notices of process may
be served for proceedings affecting the mark." The applicant
may do so by submitting a statement that the named person at the
address indicated is appointed as the applicant's domestic
representative under §1(e) of the Trademark Act. The applicant must
sign this statement. This person will receive all communications
from the PTO unless the applicant is represented by an attorney in
the United States.
Searches for Conflicting Marks
An applicant is not required to conduct a search for conflicting
marks prior to applying with the PTO. However, some people find it
useful. In evaluating an application, an examining attorney conducts
a search and notifies the applicant if a conflicting mark is found.
The application fee, which covers processing and search costs, will
not be refunded even if a conflict is found and the mark cannot be
registered. To determine whether there is a conflict between two
marks, the PTO determines whether there would be likelihood of
confusion, that is, whether relevant consumers would be likely to
associate the goods or services of one party with those of the other
party as a result of the use of the marks at issue by both parties.
The principal factors to be considered in reaching this decision are
the similarity of the marks and the commercial relationship between
the goods and services identified by the marks. To find a conflict,
the marks need not be identical, and the goods and services do not
have to be the same.
Laws & Rules Governing Federal Registration
The federal registration of trademarks is governed by the Trademark
Act of 1946, as amended, 15 U.S.C. §1051 et seq.; the Trademark
Rules, 37 C.F.R. Part 2; and the Trademark Manual of Examining
Procedure (2d ed. 1993).
Other Types of Applications
In addition to trademarks and service marks, the Trademark Act
provides for federal registration of other types of marks, such as
certification marks, collective trademarks and service marks, and
collective membership marks. These types of marks are relatively
rare. For forms and information regarding the registration of these
marks, please call the appropriate trademark information number
indicated below.
Use of the "TM," "SM" and
"(r)" Symbols
Anyone who claims rights in a mark may use the TM (trademark) or SM
(service mark) designation with the mark to alert the public to the
claim. It is not necessary to have a registration, or even a pending
application, to use these designations. The claim may or may not be
valid. The registration symbol, (r), may only be used when the mark
is registered in the PTO. It is improper to use this symbol at any
point before the registration issues. Please omit all symbols from
the mark in the drawing you submit with your application; the
symbols are not considered part of the mark.
|
|
|