Frequently Asked Questions About Trademarks

What are the advantages of registering a trademark?
Federal registration of a mark on the principal register provides, inter alia, the following benefits:

• Nationwide constructive notice of a claim to trademark ownership.
• Evidence of ownership of a trademark.
• Jurisdiction of federal courts may be invoked.
• Registration can be used as a basis for obtaining registration in foreign countries.
• Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

How should a trademark be displayed?
A trademark owner should endeavor to display the mark with an appropriate proprietary notice. For example, a trademark owner should display the registered trademark symbol ® with the mark when used in connection with its associate goods/services. Such a symbol will notify the public that federal registration has been obtained and that the user claims ownership of the mark.

How often do I have to renew my trademark?
A trademark owner must file a § 8 Affidavit of Continued Use at the end of six years following the registration date. Also, a § 9 Application for Renewal at the end of each successive ten-year period must be filed. Failure to file such items may result in cancellation of the registration and a waiver of rights associated therewith.

How do I begin the initial filing process?
To begin the process of preparing and filing a trademark application for a mark, it is recommended to conduct a trademark search for each mark. Normally, there are two types of trademark searches. First, a full trademark search can be conducted through the records of the U.S. Patent and Trademark Office (PTO), the trademark registers of all 50 states and certain common-law sources (to identify unregistered trademark). This search is performed by an independent firm and usually takes about three weeks to complete.

Alternately, an applicant might choose to forego a full trademark search if the mark has been used for a long time, or if the applicant has spent a large amount of money on promoting the goods or services with the mark. In this case, a preliminary federal trademark search can be conducted through the PTO database.

How am I supposed to use the symbols ®, TM and SM?
An applicant should endeavor to display the mark with an appropriate proprietary notice. For example, an applicant should display the unregistered trademark symbol ^TM or ^SM with the mark when used in connection with its goods (TV ads, brochures, product packaging, on a website). The symbol ® should not be used in connection with the mark until it achieves federal registration.

What do I need to file with my initial application?
Each trademark application must include a specimen of the respective mark. Each mark may consist of words in uppercase letters or a stylized black and white rendition of the mark with lining to signify colors. Unstylized words in uppercase letters generally provide broader protection, covering all variations of those words. If the mark includes a distinctive design, the applicant may wish to pursue separate registrations for both the unstylized words and the stylized words-and-design combination.

To obtain federal registration, we need an applicant to provide the following information for the mark:

1. A description of the goods/services provided in connection with the mark.
2. The date that the mark was first used in connection with the goods/services in interstate commerce. Interstate commerce is defined as commerce between two or more states (e.g., displayed on your website, brochures, advertisements in trade journals, etc.). If an applicant has not begun using the mark, the applicant may file an "Intent-to-Use" application and declare the use after the application is filed.
3. The date the mark was first used in connection with the goods/services in intrastate commerce. Intrastate commerce is defined as commerce within one state. Typically, this date is the same as the first use date in interstate commerce. Again, if the applicant has not begun using the mark, the applicant may file an "Intent-to-Use" application and declare the use after the application is filed.
4. A specimen of actual use of the mark in connection with the goods/services. For example, suitable specimens may include sample website pages and pamphlets provided such materials display the mark.