Trademark 101: The Complete Guide

What is a trademark?

A trademark protects certain words, phrases, symbols, sounds and colors that distinguishes the products and services of one person or company from the ones manufactured and sold by others.

Not only that, it boosts your brand reputation by indicating the source of your products and services.

What is a service mark?

A service mark protects certain words, phrases, symbols, sounds and colors that distinguishes the services provided by one person or company from the ones provided by others.

A service mark, as the name implies, aims only at protecting services while a trademark protects both; products and services. Due to their subtle differences, a service mark is simply referred to as a trademark by many.

What can be registered as a trademark?

You are able to register anything that distinguishes your business, products or services from others, such as;

• Business name

• Business logo

• Business slogan

• Product or service name

• Business theme colors

• Symbols and designs used by the business

• Sounds

What can’t be registered as a trademark?

You are not able to trademark the following;

• Your personal name. They may re-consider if you are able to prove that your products and services are well-known under your personal name.

• Words that clearly describe the features of your products and services.

• Misleading words about your business, products or services.

• A geographical location that’s considered to be the place of origin for the type of products and services you offer.

• Name translations of the products and services you offer. For example, you can’t register the word “gelato” since it refers to ice-cream in Italian.

• Words or designs that are too similar to an existing or pending trademark.

• Words or designs that are obscene, scandalous or immoral.

• Portraits and signatures of living people or those who died within the last 30 years.

• Official marks such as country flags, badges and crests of armed forces and etc.

Types of trademarks

There are three types of trademark; common law, state and federal.

A federal registration is not always required. Common law rights allow you to claim a mark as your own if you are able to prove that you used the mark first. The only downside is that your rights are limited to the geographical areas where you conduct business in.

Filing a trademark with the state you conduct business in will protect the business within that specific state but won’t give nationwide protection.

When it comes to federal trademarks, there are many benefits such as;

• Nationwide trademark protection.

• Establishes a legal public record of your claim.

• Allows you to file lawsuits.

• And helps in obtaining trademark in foreign countries.

Trademark symbols

There are three symbols you can use to indicate that a certain mark is trademarked; TM, SM and R;

If your mark is not registered or in the pending stage of a federal registration, use TM and SM.

Use TM for marks that represent products and SM for ones that represent services. If a mark represents both products and services, use TM there as well.

Finally, use the encircled R for marks that are federally registered with the USPTO. You are not allowed to use it for marks with pending or expired registration, or for products and services that were not listed in the registration.

The use of symbols are not required by certain countries such as Canada and etc.

What is USPTO?

USPTO or United States Patent and Trademark Office is a federal agency that issues patents and trademarks. This is where you submit your federal trademark application.

Is a federal registration valid outside of the United States?

It’s not valid, however, it will help you in obtaining the same trademark in foreign countries if you are conducting business in more than one country.

Must you be a U.S. citizen to obtain a federal registration?

You don’t have to be a U.S. citizen to obtain federal registration but you will be required to submit your birth citizenship details.

If you have dual citizenship you will be asked to decide which one of them should be printed on the certificate of registration.

Can you trademark a name already in use but not registered?

Technically, yes. However, once the original user of the mark becomes aware of this, he or she will most likely challenge your claim to the mark. If the opposition finds a way to prove they used the mark first, your claim would become invalid.

Then you will have no other choice but to let go of your claim and re-brand the business entirely. This will put your business at a financial loss and may even result in loosing your entire customer-base. This is not a risk worth taking.

Can you use a name that’s already trademarked?

Yes, you can. But only if your business is in a totally unrelated industry to your opposition’s.

Let’s say you want to trademark the name “SunshineFloss” but it has already been taken by a company in the fashion industry.

If your business is operating in a non-competing industry to theirs such as hotel or tourism industry, you may still be able to trademark the same name for your business.

Not only the industry, the products and services have to be unrelated as well.

Who can apply for a trademark?

A mark can be claimed by an individual, sole-proprietor, partnership, private limited company, LLP, trust or society for immediate or future use.

Do you need an attorney to file the trademark application?

You are not required to hire an attorney for assistance in registering your trademark. But if you do hire one, make sure he or she is familiar with the trademark laws.

You could easily find an attorney with such knowledge by going through the telephone yellow pages of your country or by contacting the local law association.

How long will a trademark last?

It depends from country to country but in general, a common law trademark will last for as long as you submit the post-registration maintenance documents on time.

These documents include, the “Declaration of Use under Section 8”, which you have to submit between the fifth and sixth year after registration and “Declaration of Use and Application for Renewal under Sections 8 and 9”, which you have to submit between the ninth and tenth year after registration.

Both documents must be filed every 10 years as such. If you don’t submit them on time, your trademark will become invalid and you won’t be able to reinstate it ever again.

A federal trademark however, lasts for only 10 years after registration. At the end of the tenth year, you would have to pay a renewal fee to activate your trademark for another 10 year period.

Trademark public search

Run a trademark search to check whether any similar marks are already registered or in the pending registration stage.

Skipping this step will put you in a lot of trouble if a similar trademark is found while processing, and may result in a few years in jail.

Searching for trademarks is relatively simple. If you are in the U.S., head over to the USPTO website to use their Trademark Electronic Search System (TESS). It lets you search for registered and pending trademarks that are similar to yours free of charge.

You may also conduct a search by visiting the Trademark Public Search Library between 8:00 a.m. and 8:00 p.m. It’s open to the public.

What information are required when registering a trademark?

The information you are required to submit may differ from country to country or state to state.

However, the first section of the USPTO trademark form requires the name, address, telephone number and email of the copyright owner. This can be an individual, business, organization and etc.

The next section requires you to enter the details of the mark you wish to register. The third section requires you to list the products and services that are to be associated with the trademark.

Finally, you should provide basic contact details of the entity the USPTO office should contact if any issues are found with the application.

What are the costs associated with trademark registration?

The exact amount will differ from country to country.

Typically, you only pay the filing fee and registration fee but if you are using a trademark agent to represent you and get the job done faster, they may require a certain fee on their end.

The filing fee is much lower when you file your application online. You can expect to save at least $80 this way.

If you do decide to submit the application online, you can pay using your credit card. Paper submissions, however, require you to pay via checks or money orders.

How do you check the status of a application?

You can check the status of your application by accessing the Trademark Applications and Registrations Retrieval database and entering the registration number. If you don’t have access to internet, just call their help center using 1-800-786-9199 or 1-571-272-9250.

Conclusion

Trademarking your business is the best and easiest way to build trust and reputation around your brand. People are hard-wired to trust companies that use the encircled R, TM or SM symbols.

It also helps to establish business authority by preventing other individuals or businesses from registering the same name, logo and slogan as yours.

Even though you are automatically given certain rights over the marks you use, the full potential of trademarks are unlocked when registered. Just be sure to perform a trademark search before continuing with the registration process.

You will receive the trademark certificate after your application is processed and if no issues were found. If you want extra copies of it, you may have to contact USPTO and pay a small fee to get them shipped to your address.

Keep in mind that when registering a trademark, you are creating a public record that’s accessible and visible by anyone through the USPTO website, even after the application expires.

This means that all the personal information you provide such as the telephone number and email address are publicly available.

Finally, don’t worry if it takes a long time for your mark to be registered. It can take anywhere from 8 months to several years for an application to be processed.

What issues have you faced regarding trademarks? Let me know in the comments section below.