1. What is the Difference Between a Copyright, Trademark & Patent?
Copyright protects original artistic, literary, dramatic, musical
and other intellectual property works, including compilations such as
multimedia works and computer programs and websites. You cannot copyright
an idea! What you can claim copyright in is your original expression
of an idea that is "fixed" in a tangible form of expression
(e.g. written down). You also cannot copyright names, titles or short
phrases. In some cases, names may be protected by Trademark law. Copyrights
are filed with the U.S. Copyright Office. Filing a copyright is automated
and streamlined through the Official Copyright™
Software and online filing products.
Trademark protects titles, words, names, symbols, logos and
designs that are used to identify a business's goods (trademarks) or
services (service marks) that are used in commerce. Trademarks are filed
with the U.S. Patent & Trademark Office. Trademark applications
can be completed with an easy step-by-step automated process using the
Official Trademark™
Software product.
Patents are used to protect inventions. A patent is applied
for and includes a search for conflicting patents or inventions and
consists of claims that are typically drafted by an intellectual property
or patent attorney. For more information about filing a patent, call
the U.S. Patent & Trademark Office (800) 786-9199 or visit the USPTO
website: http://www.uspto.gov/main/patents.htm
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2. What is the Difference Between a Trademark, Service Mark or Other Mark?
A trademark includes any word, name, symbol, or device, or any
combination, used, or intended to be used, in commerce to identify and
distinguish the goods of one manufacturer or seller from goods manufactured
or sold by others, and to indicate the source of the goods. In short,
a trademark is a brand name.
A service mark is any word, name, symbol, device, or any combination,
used, or intended to be used, in commerce, to identify and distinguish
the services of one provider from services provided by others, and to
indicate the source of the services.
A certification mark is any word, name, symbol, device, or any
combination, used, or intended to be used, in commerce with the owner's
permission by someone other than its owner, to certify regional or other
geographic origin, material, mode of manufacture, quality, accuracy,
or other characteristics of someone's goods or services, or that the
work or labor on the goods or services was performed by members of a
union or other organization.
A collective mark is a trademark or service mark used, or intended
to be used, in commerce, by the members of a cooperative, an association,
or other collective group or organization, including a mark which indicates
membership in a union, an association, or other organization.
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3. Is the Name of a Band a Trademark or Servicemark?
Yes, as long as the band is participating in the "trade"
you are claiming right to, for example, your band is selling goods (CD's)
or services (paid performances) in commerce (which is defined as sales
between one state and another or between the U.S. and a foreign country).
Under the law, if there is no use of the trademark in commerce, then
you can apply for an Intent-to-Use application, paying the application
fee, but you have to file another application when you actually begin
to use the mark in commerce. There are advantages to filing an Intent-to-Use
application - the all-important filing date.
If you are wondering if your band name is a trademark (for selling
goods) or a service mark (for selling services) it depends on how it
is used. A band name may function as a "trademark" for a series
of musical recordings. A band name may also function as a "service
mark" for entertainment services in the nature of performances
by a musical group - if it is used to identify and distinguish the service
of providing live performances. Whether the band name is being used
as trademark (TM) (use of a mark in commerce for the sale of goods or
services between states or internationally), or as a service mark (SM),
the Trademark application for a band name can be filed using Official
Trademark™ Software.
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4. How do I protect the name of a website?
Some types of website domain names may be registered as Trademark,
if, as with other trademarks, the mark functions as a source identifier
for the goods or services being sold or provided in commerce. The mark
as depicted on the specimens of the mark (i.e. an example of the mark
used in commerce that you submit with your application to the U.S. Patent
& Trademark Office) must be presented in a manner that will be perceived
by potential purchasers as indicating source and not as merely an informational
indication of the domain name address used to access a web site.
Example: Website domain name that is registrable:
A mark composed of a domain name is registrable as a trademark or
service mark only if it functions as a source identifier. For example,
if applicant's law firm name were, say, EILBERG.COM and were presented
prominently on applicant's letterheads and business cards as the name
under which applicant was rendering its legal services, then that mark
may well be registrable.
Example: Website domain name that is not registrable:
If the proposed mark is used in a way that would be perceived as
nothing more than an address at which the applicant can be contacted,
registration must be refused. For example, Example The mark is WWW.XYZ.COM
for on-line ordering services in the field of clothing. Specimens of
use consisting of an advertisement that states "visit us on the
web at www.xyz.com" do not show service mark use of the proposed
mark.
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5. Can I protect a character as a trademark?
Yes, you can apply for a federal registration for the name or visual
representation of a character. If the character appears in more than
one typical image, it's advisable to register those variations. For
example, Arthur, the children's book aardvark, is registered in different
trademark classes for different products, in more than one image. Mickey
Mouse no doubt is registered in many visual variations.
What about exclusive trademark rights for a character?
A character that is not merely descriptive (and very few if any
characters are) can become the subject of exclusive trademark rights
when it's first used for certain products or services. Moreover, you
can even apply on an intent-to-use basis before one uses the character.
For example, if someone is developing a series of children's books,
they can apply to register several characters on an intent-to-use basis.
Even if the books most likely won't be published for another year or
so, as soon as the author or publisher does use them, and files a Statements
of Use, the registrations should issue and they will have the prima
facie exclusive right to use those characters for those goods as soon
as she gets those registrations.
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6. Do I Need to Register my Trademark?
No. However, federal registration has several advantages including
notice to the public of the registrant's claim of ownership of the mark,
a legal presumption of ownership nationwide, and the exclusive right
to use the mark on or in connection with the goods or services set forth
in the registration.
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7. What are the Benefits of Federal Trademark Registration?
- Constructive notice nationwide of the trademark owner's claim.
- Evidence of ownership of the trademark.
- Jurisdiction of federal courts may be invoked.
- Registration can be used as a basis for obtaining registration in foreign countries.
- Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
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8. When do I Use the "TM" or "SM" Trademark Symbols?
Anyone who claims the exclusive right to use a mark may use the ™ (trademark) or (sm) (service mark) designation symbols 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 the TM & SM designations. Use of the symbols "TM" or "SM" (for trademark and service mark, respectively) may be governed by local, state, or foreign laws and the laws of the pertinent jurisdiction must be consulted.
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9. When Can I Use the Federal Registration Symbol (the letter R enclosed in a circle ® )?
The federal registration symbol (r in the circle) is separate from the "mark" itself. The "r in the circle"symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. [Note: Several foreign countries use the letter R enclosed within a circle to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.]
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10. Can the USPTO Refuse to Register a Mark?
Yes. The U.S. Patent and Trademark Office (USPTO) will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.
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11. How Long Does it Take for a Mark to be Registered?
It is difficult to predict how long it will take for an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately six months after filing. The filing receipt will include the serial number of the application. All future correspondence with the PTO must include this serial number. You should receive a response from the Office within six to seven months from filing the application. However, the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application. Applicants should check on the status of their pending applications every six months.
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12. How Long Does a Trademark Registration Last?
For a trademark registration to remain valid, an Affidavit of Use must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee.
The registrant must also file a renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee. Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.
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13. How do I Contest Someone Else using a Trademark Similar to Mine?
There are several ways to dispute use of your trademark by a third party. Depending on the factual situation, the Trademark Office may or may not be the proper forum. You should consider contacting an attorney, preferably one specializing in trademark law. Local bar associations and the yellow pages usually have attorney listings broken down by specialties. Time can be of the essence. For information about proceedings before the Trademark Trial and Appeal Board.
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14. Do I Need an Attorney to File a Trademark Application?
No, although it may be desirable to employ an attorney who is familiar with trademark matters. A trademark application can easily be filed using Official Trademark™ Software.
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15. How do I Find Out Whether a Mark is Already Registered?
In order to determine whether any person or company is using a particular trademark, a trademark search can be conducted. Searches can be performed at the USPTO at 2900 Crystal Drive, 2nd Floor, Arlington, Virginia. Also, word marks may be searched at over 70 Patent and Trademark Depository Libraries located throughout the country.
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16. Is a Federal Registration Valid Outside the United States?
No. Certain countries, however, do recognize a United States registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. The laws of each country regarding registration must be consulted.
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17. How do I Search for Conflicting Marks Before Filing an Application?
Yes. You may easily complete an application and conduct a free search for conflicting marks using the Official Trademark™ Software product.
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18. Why is it Important to File with the U.S. Patent & Trademark Office?
Federal law covers Trademark
Federal Trademark law can protect your right to use a tradename or service mark identifying your business, products or goods and services for your lifetime with the needed application and renewals, and is recognized in countries worldwide?
Don't Wait to Protect Your Rights in an Identifying Name or Slogan
Filing a trademark (TM) or service mark (sm) with the U.S. Patent and Trademark Office is essential to establish your rights in a mark and to prevent others from illegally using your mark. Protect the value in your business name, identity, website domain or brand under the full protection of the law.
Who can use the ® Symbol?
Did you know that you can only use the ® symbol when your trademark is issued by the US Patent and Trademark Office?!
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19. How do I contact the USPTO?
U.S. Patent & Trademark Office (800) 786-9199
or visit the USPTO website: http://www.uspto.gov/main/patents.htm
