Milwaukee Trademark Attorney .us

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Frequently Asked Questions About Trademarks

  1. What is a trademark?
  2. What is a service mark?
  3. Can a design be a trademark?
  4. What is a certification mark?
  5. How do I get a trademark?
  6. Why should I register my trademark?
  7. How do I register my trademark?
  8. What happens after an application is filed?
  9. What about a state registration?
  10. What do the symbols 'TM', '®', and 'sm' after the mark mean?
  11. How long does the process for the application and prosecution take?
  12. How long does a trademark last?
  13. Is there anything I should do before adopting a trademark?
  14. What does a standard search cover?
  15. Can I conduct my own search?
  16. Do I need to hire a lawyer?
  17. Does a U.S. Trademark Registration protect my mark in other countries?
  18. Can an Internet domain name be used as a trademark?


Frequently Asked Questions about Trademarks

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1. What is a trademark?

A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs that identifies and distinguishes the source of goods.
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2. What is a service mark?

A service mark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs that identifies the source of services. Services are defined as activities that are performed by a person or business for the benefit of a person or persons other than himself, either for pay or otherwise. Often the term "trademark" is used to describe a service mark.
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3. Can a design be a trademark?

Yes, if it is used to identify and distinguish the source of goods and/or services.
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4. What is a certification mark?

A certification mark is a mark that its owner permits others to use in commerce to certify, for example, a mode of manufacture or quality. For example, Underwriters Laboratories (UL) is a certification mark that may be used by manufacturers of electrical and other safety equipment that comply with quality criteria set by UL.
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5. How do I get a trademark?

Trademark rights arise from either actual use of the mark, or filing for registration of a mark in the United States Patent and Trademark Office (USPTO) and stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress and subsequent use of the mark in commerce. While federal registration is not required to establish rights in a mark, nor to begin use of a mark, it can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the trademark for the goods and services specified in the registration, and to be entitled to use the trademark nationwide. There are two related but distinct types of rights in a trademark: the right to register and the right to use. While the right to register is granted by the USPTO to the first party who either uses a mark in commerce or files an application, the right to use a mark can be more complicated to determine, and can only be decided by federal courts. This is particularly true when two parties began use of the same or similar marks without knowledge of one another, and when neither has federal registration. If the issue is litigated, a federal court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in trademark litigation.
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6. Why should I register my trademark?

Federal registration can provide substantial benefits, including the following: (1) Prima facie evidence of the validity of the registered mark, of your ownership of the mark, and of your exclusive right to use the mark throughout the United States; (2) Constructive notice of your claim of ownership of the mark throughout the U.S., meaning that as of the date of registration, no one can claim to have begun to use the mark in ignorance of your use; (3) The pending application and registration are readily searchable by others, which may prevent a problem before it occurs; (4) Access to the federal court system, which can be important; (5) It may entitle you to recover attorney's fees from the opposing party; (6) It may entitle you to undertake a seizure action against counterfeit goods using the U.S. Marshall; (7) It can be used to block the importation of infringing goods by U.S. Customs authorities; and (8) It can be used as collateral if needed and is easily transferable.
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7. How do I register my trademark?

The registration process is started by submitting an application to the USPTO; however, registration is not guaranteed.
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8. What happens after an application is filed?

Four to eight weeks after the application is received, the USPTO sends a Filing Receipt confirming receipt of the application and assigning a filing date and an application serial number. The application is then examined by a Trademark Examiner. The time frame for this procedure can vary widely, and it may be as long as twelve months before you hear anything further from the PTO. An applicant is entitled to submit additional evidence and arguments in an effort to overcome a rejection if it occurs. This process will continue until the application is either abandoned or allowed. Prior to final allowance of a trademark registration application, the U.S. Patent and Trademark Office publishes the mark in its Official Trademark Gazette to allow others to object to the registration of the mark. Once the mark is published, parties who may be affected by the registration will then have thirty days to file an opposition to registration of the mark or seek an extension of time within which to file an opposition. If the application was based upon use and no opposition is filed, the registration will be issued shortly thereafter. If no opposition is filed and the application was filed based on an intent to use, the next step is to file a Statement of Use proving when the mark is first used by the applicant. Once the Statement of Use is filed, the registration will issue.
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9. What about a state registration?

A state registration can be beneficial if you do not intend to use your trademark outside of the state, as it will not give you rights to keep others from using the mark outside the state. It is best to consult with a trademark attorney to determine whether your needs will best be met by a state or federal registration.
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10. What do the symbols 'TM', '', and 'sm' after the mark mean?

Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, , may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the mark is registered. A state registration does not give one the right to use the symbol.
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11. How long does the process for the application and prosecution take?

Generally, the process takes between six months and eighteen months.
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12. How long does a trademark last?

Registration is for a period of 10 years and can be renewed indefinitely for periods of 10 years, provided that an affidavit proving continued use of the mark is filed during the 6th year of registration to prevent cancellation of the mark. An unregistered mark can last for as long as the mark is being used to indicate origin.
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13. Is there anything I should do before adopting a trademark?

A trademark can be adopted and used with reasonable assurance if the mark is not confusingly similar to a mark previously used or registered in this country by another. Thus, it is advisable to obtain a trademark clearance search and opinion of counsel to determine whether there is a conflicting mark prior to using a mark. A search may identify potential conflicts before large expenses are incurred and minimize the risk of infringing someone else's mark.
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14. What does a standard search cover?

The trademark search is based on a computer accessed search of several databases, including trademark registrations and trademark registration applications on file in the United States Patent and Trademark Office, marks registered in the 50 states, and databases of company and trade names. Where appropriate, the search is expanded to include standard variations of the mark, both in appearance and sound, and focused in product and service areas related to that indicated by you.
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15. Can I conduct my own search?

Yes. However, the PTO database only includes federal registrations and applications, and does not include state registrations or any databases that might reveal uses of unregistered trademarks.
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16. Do I need to hire a lawyer?

The United States Patent and Trademark Office advises that "if you are ready to apply to register your trademark, we strongly advise that you contact an attorney who is experienced in trademark prosecution. The PTO does not maintain a roster of trademark attorneys. An attorney who is a member in good standing of a state bar association may prosecute your application for trademark registration. The PTO cannot aid in the selection of an attorney and does not provide specific endorsements or recommendations of private attorneys."
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17. Does a U.S. Trademark Registration protect my mark in other countries?

No. You must register you mark in each country in which you wish to protect it. A U.S. trademark attorney can help you protect your mark in almost any country in the world.
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18. Can an Internet domain name be used as a trademark?

Yes, if it is used to identify and distinguish the source of goods and/or services. In this case, however, the beginning of the URL e.g., http://www, and the top-level domain name, e.g., the term "com" or "net," may not be used to identify or distinguish the source of goods and/or services because all Internet domain names must include these terms.
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DISCLAIMER: The information on this website is for general information purposes only. Nothing on this or associated pages, documents, comments, answers, emails, or other communications should be taken as legal advice for any individual case or situation. This information on this website is not intended to create, and receipt or viewing of this information does not constitute, an attorney-client relationship.

Milwaukee Trademark Attorney .us
An informational page provided as a service of Maier & Maier, PLLC
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