Did You Know? General Trademark and Service Mark Information
by Eric Hanscom, Law Offices of Eric Hanscom
A trademark is a word, name, drawn symbol, device, or any combination of these which is used to identify the source of goods, and to distinguish those goods from similar goods produced by another company. A service mark is like a trademark, except that it does the same thing for a person or company which provides services instead of goods. A typical trademark could cover something like an internet domain name, the logo of a brand name, an advertising phrase used to identify a company, etc. For example, McDonald’s Hamburgers®, Pizza Hut®, NFL®, and New York Yankees® are all registered trademarks; thus, I cannot open a restaurant and call it "Pizza Hut". While a patent may protect an idea or a design, so that one person can’t "steal" another’s invention, trademark protection is aimed toward preventing consumer confusion over what brand they are buying. Just imagine the confusion if everyone could call their watch brand "Rolex", or if the new car lots had pickup trucks called "Ford" made by 40 different companies, all of differing quality. Many companies spend a sizable fortune promoting their brand name so that consumers will buy that particular brand; trademarks protect that investment and assist the consumer from unknowingly buying a knock-off (copy) of a name brand.
What’s in it for me? There are several reasons for getting a trademark or service mark. First, once you get a trademark or service mark you have "given notice" to the entire world that you own that mark in the United States, and that no one else can use it for the category(ies) of goods you have paid to have it applied. Second, it creates a "presumption" of your right to use the mark. Presumptions become important if someone challenges your right to the mark. Third, and perhaps most important, registering your mark with the USPTO gives you not only the right to sue other people for violating your trademark, but also the ability to use your mark to alert the U.S. Customs Service and request they put a customs hold on foreign goods which violate your mark. In short, a trademark or service mark gives your company name and identity some teeth.
I have a great name for a company but I haven’t formed the company yet, what can I do? Fortunately, trademark law allows you to file for a trademark under an "intent to use" provision, all you have to do is sign a sworn statement that you intend to use that mark in the future. Once your mark is registered with the USPTO, you have to file an "allegation of use" within six months, which says that you are using the mark (you can also get extensions on the six months for a fee). So, go ahead and grab that cool name, but make sure you are ready to start your business, as trademark law does not favor "name squatters". If, on the other hand, you are already using the mark in business, we will file your trademark application under "in actual use", and my job will be easier and you will pay less money.
How does this apply to your company? Well, if you are the exclusive Asian OEM for an American company which has you package your product in their packaging and you are entwined in a long-term contract with this company, probably not much right now — save your money and buy some new flowering plants for your office. If, on the other hand, you are selling directly into the United States, would like to start selling directly into the US, or believe that by protecting your name in the US you can enhance your ability to OEM to more than one US company or get a better price, a trademark may be a useful and inexpensive addition to your intellectual property portfolio.
How much does it cost? Trademarks usually cost a little over $1,000 from the preparation of the trademark application through responding to one or more USPTO actions to the final issuance. There is a filing fee of $335 / class designated (if your invention was software, you would want to designate software but not fruit picking apparatuses or something else completely unrelated to your field). There are a large number of potential categories — the USPTO lists 45 very broad international categories with a specific mention of the fact that these categories are too broad to be used solely for filing — so filing in each possible category and sub-category is cost-prohibitive. Many clients who have thought up a truly unique and catchy name initially want to protect it in many categories, but I urge them to be realistic about how many categories of goods they realistically except to provide in the future years. If you sell women’s bathing suits, select the bathing suit category but don’t waste your money on the computer software categories.
How long does it take? I average about 6 months from application date before USPTO responds. There is sometimes one action I need to respond to, which takes another month or so, after which your mark is published for opposition. If no one objects, you usually end up with the actual mark in about 7–8 months.
Can I get an international trademark? Unlike the evasive "international patent", you can get (sort of) an international trademark through the Madrid Agreement and Madrid Protocol. Countries which are signatories to these two agreements allow a single filing with this office to apply to all countries that belong. The two main disadvantages with international filing are first, the cost, and second, the fact that many businesses only operate in one country, so an international trademark is probably not a good use of your money unless your business is truly international.
Patents only last 20 years, how long will my trademark last? Trademarks, like diamonds, are forever, if you are willing to pay the maintenance fees (between the fifth and sixth year, and then every ten years after that). "007 in Trademarks are Forever"? Maybe not. Not a very catchy title. Unlike a patent, which has a definite, fixed lifespan, your trademark can last indefinitely so long as you continue to use the mark on or in connection with the goods and/or services in the registration and you file additional forms with the USPTO at the appropriate times. In general, to keep your trademark alive you must periodically file Affidavits of Continued Use or Excusable Nonuse under 15U.S.C. §1058 and Applications for Renewal under 15U.S.C. §1059.
How can I lose my trademark or service mark? Easy, just don’t file the correct paperwork and don’t pay the required fees. Your attorney can keep this straight for you. You can also lose a trademark if it becomes generic or through improper licensing.
What is a California Trademark? If your company does substantial business in California, you should consider getting a California Trademark for your business name and/or products. A California Trademark gives you additional protection in addition to what you get with a federal trademark, plus California trademarks are cheaper and quicker to get.
My competitor puts TM and ® next to the names of every product he has, but when I looked him up on the USPTO Trademark site, I noticed he isn’t listed as owning any marks, can I do this and not pay the fees? Not as long as you want me to be your attorney. You can put the TM or SM to notify the public that you have claimed a right in the mark, but you have not yet registered the mark with USPTO. Once that happens, you can put the ® next to your marks.
Eric Hanscom practices Intellectual Property law and offers a number of services related to the protection and production of your invention. Eric’s law office also offers legal services in the area of general business law. Eric will be exhibiting at INPEX as part of the Intellectual Property Pavilion and you can hear Eric speak on Intellectual Property Issues at the INPEX Inventors University on Friday June 10, 2005. You can also visit Eric’s website at www.erichanscom.com.
Mr. Hanscom is contributing to Inventors Community as an industry expert, but is not employed by or otherwise compensated by INPEX, InventHelp or its affiliates. His participation at INPEX does not necessarily represent the views or opinions of InventHelp or its affiliate companies.
