General information about trademarks

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When may I use TM and when may I use R-in-a-circle (®)?

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Under U.S. trademark law, the R-in-a-circle symbol (®) may only be used in connection with a mark if that mark is a federally registered trademark. By "federally registered" we mean that the trademark owner has not only filed a trademark registration application with the US Patent & Trademark Office, but has been granted a registration. In contrast, the TM and SM symbols may be used freely without respect to whether or not there is a federal trademark registration. If you are offering goods or services, you may freely use the TM or SM symbol to denote trademarks or service marks that you use to indicate the origin of your goods or services.

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How may I do trademark research on the Internet?

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An increasing number of government trademark offices are making it possible to search trademark applications and trademark registrations. These include:

Commercial online computer databases include those of recognized trademark search firms such as Thomson & Thomson. Online databases available through Dialog include trademark applications and registrations in the United States, Canada, and many countries of Europe. Other trademark databases are also available through Questel/Orbit, and STN.

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When must I file a trademark application?

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Unlike patent applications, which in many cases must be filed in advance of a particular date, there is no specific date by which a trademark application must be filed. Instead, the time constraint is in a different direction. In the United States an ordinary so-called "use" trademark application can only be filed after the goods or services have been in interstate commerce.

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Last revised June 28, 1995.


What is ITU (intent to use)?

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Some years ago the U.S. Patent and Trademark Office established a kind of application called an "intent-to-use" or ITU trademark application. To be able to file this application, the applicant need not have used the mark in interstate commerce (as would be required for a use-type trademark application) but need merely have a good-faith intention to use the mark in interstate commerce. The intent-to-use law does not, however, permit "reserving" trademarks for indefinite periods of time. In particular, an intent-to-use trademark application goes abandoned if the applicant does not perform actual use within a specified time interval after the filing date of the application.

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Can I register a trademark myself?

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Just as with copyrights and patents, it is possible to apply for a trademark pro se, that is, without the assistance of counsel. Although the rules for prosecution of a trademark application are somewhat complicated, many trademark registrations have been obtained by applicants who represent themselves before the Trademark Office. Nonetheless, many applicants choose to pay an attorney to represent them before the Trademark Office in obtaining a trademark registration.

If you wish to explore the possibility of filing your own trademark registration application, a good starting point is Trademark: Legal Care for Your Business and Product Name, from Nolo Press, which you can purchase through Amazon books. According to the publisher, this book "shows how to choose a name or logo that others can't copy, conduct a trademark search, register a trademark with the U.S. Patent and Trademark Office and protect and maintain the trademark."

The US Patent and Trademark Office provides a web-based service which permits you to prepare and file a trademark application online.

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What is a good publication from the U.S. Patent and Trademark Office?

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The U.S. Patent and Trademark Office publishes Basic Facts About Trademarks, a 20-page brochure containing all necessary forms, information, and fees.

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What does it cost to file a trademark registration application?

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The cost to file a trademark registration application, if you do it yourself, is largely the cost of the U.S. Patent & Trademark Office filing fee. The filing fee increases with the number of trademark classes in which the application is made. If you hire a trademark lawyer to do the work the cost will probably be the lawyer's professional fee, the filing fee (again based on the number of classes), and incidental expenses. Our experience at Oppedahl Patent Law Firm LLC is that the cost to the client (fees and expenses) for the trademark filing, assuming a single trademark class is involved, averages around $1000.

The cost does not always end with the filing of the application, however. If the application is opposed by some member of the public, or if the Examiner raises objections, then the response to the opposition or objection takes time and money.

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What is the governing law for trademarks in the US?

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See http://uscode.house.gov/title_15.htm.

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How may I find out about trademark laws around the world?

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For information about trademark laws around the world, the trademark search firm of Thomson & Thomson offers a very helpful International Guide to Trademarks. You may also wish to consult intellectual property counsel in your country of interest. See Web sites of intellectual property law firms and patent agents in countries outside of the United States.

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How may I file once and obtain protection throughout Europe?

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You file with the Office for Harmonization in the Internal Market, applying for a Community Trademark, which provides uniform protection of trade marks for goods and services throughout the European Union. This is discussed in some detail in our page about the cost of non-US trademark filings.

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The name of my company was approved when I incorporated - Doesn't that mean I am free to use that name as a trademark?

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A most common misconception is that if one has a corporate name approved by the Secretary of State (the state agency that regulates corporations) then this means one may freely use the name in commerce. It is simply not so.

The reason that state approval of a corporate name is insufficient, is that the state authorities are only concerned that there not be two identical corporate names. They are not at all interested in making "likelihood of confusion" comparisons. Thus, they will happily allow ABC Distributing Co. and ABC Distributions Co. to exist at the same time, simply because they are not identical. Furthermore, a state agency only cares about one state. This means that there is probably a Mike's Pizza Inc. in most (if not all) of the states.

Another reason why getting approval from a state agency is insufficient is the fact that such agencies only concern themselves with business names, not trademarks. If you wanted to go into business as "Tide Soap Co." you probably would be permitted to do so by the state agency, but the big company that has TIDE as a trademark on its products would take a very different view.

Intellectual property lawyers find themselves explaining this from time to time, typically after a client has received a "cease and desist" letter from a company that has been around longer. In many cases the prudent business decision is to give up and use some other name. This has the clear drawbacks that any accumulated goodwill with customers relating to the previous name is often lost, and one must throw away stationery, business cards, and promotional materials and pay to have new materials printed.

In some businesses these costs may be minor enough that there is no good reason to spend money on searching to see if a name is free to use. But for many businesses, it is good planning to conduct a "freedom-to-use" inquiry before making substantial investment in a proposed new name. While the inquiry cannot guarantee the absence of trademark disputes, it can drastically reduce the risks. The client may create a list of proposed names, and experienced trademark counsel can then perform an initial screening of the names using relatively inexpensive online databases. This screening can be done in a matter of minutes by experienced counsel; many clients also have in-house searching capability on Dialog, Compuserve, Questel/Orbit, or STN to perform such screening.

Assuming that one or two proposed names survive the screening, a usual next step is to have a "full freedom-to-use search" done by a well-known trademark search company such as Thomson & Thomson. The results of this search are studied by counsel who can then advise the client of the relative level of risk for the proposed names. Depending on how extensive a search is ordered, freedom-to-use searches may review US federal and state trademark filings, foreign trademark filings, corporate name filings, and databases reflecting usage in trade for which no formal registrations have been made. The results of these searches are studied to evaluate both similarities in the words being used and similarities in the goods or services being offered.

Summary: it is unwise to attach any freedom-to-use significance to approval of a corporate name by a state agency. In cases where it would be a hardship to have to change the name later, it is wise to consult experienced trademark counsel.

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What about domain names and trademarks?

© Copyright 1995 to the present, Oppedahl Patent Law Firm LLC.
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See, generally, the Weblaw section of this web site. Carl Oppedahl's February 14, 1995 article in the New York Law Journal discusses domain names and trademarks. The rules for registration of Internet domain names changed in July of 1995, and the new rules may be found at the Internic FTP site. The new rules are discussed in an article by Carl Oppedahl in the New York Law Journal.

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What is the Madrid Protocol?

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The Madrid Protocol is part of the Madrid System for the International Registration of Marks. Thanks to this international procedural mechanism, the Madrid system offers a trademark owner the possibility to have his or her trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. For some filers this may be more economical than filing directly in the various countries. Madrid Protocol is discussed in some detail in our page about the cost of non-US trademark filings.

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