Trademarks are a form of intellectual property. A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols, or designs, that identifies and distinguishes the source of the goods of one party from those 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. Throughout this article, the terms “trademark” and “mark” refer to both trademarks and service marks.
One major question you may ask is, “Is the registration of my mark required?” The answer is no. Trademark rights are granted based on use. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration provides several advantages, e.g.,
• constructive notice to the public of the registrant’s claim of ownership of the mark;
• a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• the ability to bring an action concerning the mark in federal court;
• the use of the U.S registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the US Patent and Trademark Office or any other Trademark office. However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
Most applicants for trademarks base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future. When applying you must list the specific goods/services for which registration is sought, regardless of the basis for the application. If based on use in commerce, you must already be using the mark in commerce on or in connection with all the goods and/or services listed. If based on intent to use and/or a foreign application or registration, you must have a bona fide intent to use the mark in commerce on or in connection with all the listed goods and/or services. For the purpose of obtaining federal registration, “commerce” means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. “Use in commerce” must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:
For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.
Like any other property, trademark rights in a work may be transferred by the owner to another.
Your intellectual property rights are some of the most valuable assets that you have. If someone uses your trademark or a mark that may cause a likelihood of confusion without authorization, you may be entitled to bring an infringement action against them to protect your rights.
Have a mark you want to register? Fill out this form!