Trademark Basics
What are the different types of marks that can be registered with the federal government?
There's many kinds of marks that you can register with the government. There's the general trademark, then there's subsets of the trademarks. There's things called composite marks, which may be in a word or a design, there's the design mark itself, there's service marks, and there's certification marks. Indeed there's a whole host of marks that you can file within the government.
What is a 'general trademark'?
A general trademark protects the identification of the source of origin of goods and services. That's the actual definition and what that means is that it's a name of a company, or the goods and services associated with it that can be protected under the general trademark. So Nike has a general trademark on Nike, in connection with their goods and services.
What is a 'composite trademark'?
A composite trademark is a trademark in which you have the word and a design together in one. So the scope of protection of the composite trademark, will be the totality of the mark.
What is a 'design trademark'?
A design trademark is simply the design.
What is a 'service trademark'?
A service trademark is pretty much a trademark, except instead of goods, it's services are what's being protected by the trademark.
How can I adopt a name for use as a trademark?
Trademark rights occur through use in commerce. You have to actually be using the trademark, whether it is the word trademark or design trademark or logo or whatever it is in commerce. There's different kinds of uses, whether it's common law or for federal purposes, but you have to use the trademark in connection with certain goods and services for your rights to occur.
What is a 'common law trademark'?
There's different levels of trademark protection and trademark rights. You don't necessarily have to file for a federal trademark in order to obtain trademark rights. There's something called common law trademarks and common law trademarks are derived from simply using the mark in commerce in a particular geographical region. However, your protection will be limited to that geographical region that you can prove. If you want nationwide protection, the strongest possible form of nationwide protection is by filing a federal trademark.
What is a 'federal trademark'?
A federal trademark is when you see the R with the circle around it. That means it is an issued federal trademark as opposed to the TM which means that they're claiming that they simply have a common law trademark. You obtain a federal trademark by filing it with the United States Patent and Trademark Office.
What is an 'availability search'?
I always recommend that clients should do a trademark availability search prior to adopting a trademark in which they want. The way to do that is by hiring someone to do the trademark availability search for you, so you specifically want to hire a trademark attorney.
Is it necessary to conduct an 'availability search'?
An availability search is not required, but it is highly recommended because if you proceed with a trademark without doing a search, you then begin to do well, you market your products, you're selling it and it's on Google, and then a year later you get a cease and desist letter, what do you do? If you conduct a trademark search now, prior to adopting any mark, you save a lot of time, a lot of money and a lot of headache.
What happens when I apply for a trademark registration?
The general process for applying for a trademark registration that you'll find, is that when you file for an application not a lot will happen for a few months. At around 4-6 months you may hear back from the US Patent and Trademark Office (PTO) and they may issue a rejection or they may send you a notice of allowance. If you get a notice of allowance that is a good sign and hopefully your application for a trademark will eventually mature and issue into a registered trademark.
What are 'trademark markings'?
Trademark markings are the TM that you normally see next to a name, or the ‘R' with a circle around it. The TM indicates that someone is claiming the trademark rights, but they do not have an issued Federal Registration yet. The R with the circle around it a registered trademark, a Federal registered trademark.
What is a registered trademark's 'scope of protection'?
A registered trademark, which means it's been registered with the United States Patent and Trademark Office, means that you have nationwide protection of that trademark, as opposed to a common law trademark which is limited to a geographical region.