Trademark FAQ

A trademark is a brand that is used to describe the source or origin of goods and services and to define the quality of goods and services.  Trademarks distinguish your goods and services from those of others.

There are two primary types of marks that can be registered with the United States Patent and Trademark Office: (1)trademarks and (2)service marks.  A trademark is a word, name, symbol, or device, which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods 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.  The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks.

Trademark rights can be used to prevent others from using a confusingly similar mark, but cannot be used to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.  Trademarks which are used in interstate or foreign commerce may be registered with the United States Patent and Trademark Office.

A trademark can be anything that is capable of functioning as a mark and, more particularly, anything that is capable of distinguishing your goods and services from those of others.  

You can trademark the following:

• Word
   

• Symbol
   

• Word/symbol combination
   

• Phrase
   

• Phrase/symbol combination
   

• Sound
   

• Smell
   

• Shape of an article of manufacture
   

• Color
   

• Packaging design
   

• Anything that is capable of designating the source or origin of goods and/or services.

In the United States a trademark can be acquired by (1)using a mark in commerce, or (2)filing a federal trademark registration application with the United States Patent and Trademark Office (USPTO).

If you adopt a mark and begin using it in commerce in connection with goods or service, you have what is called a common law trademark.  A common law trademark is a mark that is used in commerce but and is not registered with the USPTO.

If you have chosen a mark but are not using it in commerce, you have the option of filing a federal trademark registration application with the USPTO.  At the moment an application for federal registration of a trademark that is not in use in commerce is filed with the USPTO, rights to the trademark are immediately assigned to the applicant.

Whether you have a common law trademark or are considering filing a federal trademark registration application with the USPTO, it is important to understand that federal registration of a trademark with the USPTO gives an applicant significant benefits.  For instance, a federally registered trademark 1)is presumed valid, 2)is presumed to be owned by the registrant, 3)can eventually become incontestable, 4)invokes the jurisdiction of federal courts, 5)can be used for obtaining trademark registrations in foreign countries, and 6)may be filed with the United States Customs Service to prevent the importation of infringing foreign goods.

At Parsons & Goltry, the minimum cost for applying for registration of a trademark is $760.00 for a single international class filing.  Additional costs are incurred if the application is filed for goods or services that are in more than one international classification, or if processing the trademark through the Trademark Office requires additional work after the application is filed.  After a trademark registration is obtained, it is necessary to 1)file an affidavit of continued use between the 5th and 6th anniversaries of the registration date and 2)file a renewal application and affidavit of continued use every 10th anniversary of the registration date in order to maintain the registration.   A federally registered trademark can last indefinitely as long as the proper maintenance documents are accurately and timely filed and the mark remains in use in commerce.

Determining the availability and registerability of a trademark before using a trademark in commerce and before filing a trademark registration application with the United States Patent and Trademark Office is, in our opinion, a prudent and necessary step in the proper acquisition and eventual enforceability of a trademark.  A good trademark search clears potential marks for use or registration, reveals state and unregistered common law trademarks in addition to pending and registered federal trademarks, supports trademark litigation involving third party usage and provides a meaningful determination of the potential strength of a mark. 

At Parsons & Goltry, our trademark search is a comprehensive computer-assisted search of unregistered, registered, and pending United States trademarks and service marks that is carried out by a professional trademark search agency.  The search covers Federal and State trademark applications and registrations, domain names, and extensive common law sources covering unregistered trademarks and business names.  The trademark search also includes our comprehensive analysis of the relative strength and registerability of the proposed mark compared to similar trademarks found from the search.

At Parsons & Goltry, a comprehensive trademark search costs $740.00.

A trademark must be used properly to identify and distinguish the products of one source from those of other sources, and to remain the exclusive property of the owner.  The rights acquired by federal registration must be maintained through proper and continuous use of the trademark in commerce.  On the other hand, widespread misuse of a trademark can, and normally does, make it difficult to enforce the exclusive rights to use the mark. 

7.    Use the trademark continuously and notoriously, and do not abandon the mark.

8.    Make sure others use the mark as an adjective and only as an adjective.

9.    Prevent others from using and registering confusingly similar trademarks.

For additional useful information about trademarks, please go to the Basic Facts About Trademarks section at the United States Patent and Trademark Office web site.