What is a Trademark?
A TRADEMARK is either a word, phrase, symbol
or design, or combination of words, phrases,
symbols or designs, which identifies and distinguishes
the source of the goods or services 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 booklet the
terms "trademark" and "mark"
are used to refer to both trademarks and service
marks whether they are word marks or other types
of marks. Normally, a mark for goods appears
on the product or on its packaging, while a
service mark appears in advertising for the
services. A trademark is different from a copyright
or a patent. A copyright protects an original
artistic or literary work; a patent protects
an invention. For copyright information call
the Library of Congress at (202) 707-3000.
Establishing Trademark Rights
Trademark rights arise from either (1) actual
use of the mark, or (2) the filing of a proper
application to register a mark in the Patent
and Trademark Office (PTO) stating that the
applicant has a bona fide intention to use the
mark in commerce regulated by the U.S. Congress.
(See below, under "Types of Applications,"
for a discussion of what is meant by the terms
commerce and use in commerce.) Federal registration
is not required to establish rights in a mark,
nor is it required to begin use of a mark. However,
federal registration 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 mark for
the goods and services specified in the registration,
and to be entitled to use the mark nationwide.
There are two related but distinct types of
rights in a mark: the right to register and
the right to use. Generally, the first party
who either uses a mark in commerce or files
an application in the PTO has the ultimate right
to register that mark. The PTO's authority is
limited to determining the right to register.
The right to use a mark can be more complicated
to determine. This is particularly true when
two parties have begun use of the same or similar
marks without knowledge of one another and neither
has a federal registration. Only a 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 a court proceeding.
The PTO cannot provide advice concerning rights
in a mark. Only a private attorney can provide
such advice. Unlike copyrights or patents, trademark
rights can last indefinitely if the owner continues
to use the mark to identify its goods or services.
The term of a federal trademark registration
is 10 years, with 10-year renewal terms. However,
between the fifth and sixth year after the date
of initial registration, the registrant must
file an affidavit setting forth certain information
to keep the registration alive. If no affidavit
is filed, the registration is canceled.
Types of Applications for Federal Registration
An applicant may apply for federal registration
in three principal ways. (1) An applicant who
has already commenced using a mark in commerce
may file based on that use (a "use"
application). (2) An applicant who has not yet
used the mark may apply based on a bona fide
intention to use the mark in commerce (an "intent-to-use"
application). For the purpose of obtaining federal
registration, commerce means all commerce which
may lawfully be regulated by the U.S. Congress,
for example, interstate commerce or commerce
between the U.S. and another country. The use
in commerce must be a bona fide use in the ordinary
course of trade, and not made merely to reserve
a right in a mark. Use of a mark in promotion
or advertising before the product or service
i s actually provided under the mark on a normal
commercial scale does not qualify as use in
commerce. Use of a mark in purely local commerce
within a state does not qualify as "use
in commerce." If an applicant files based
on a bona fide intention to use in commerce,
the applicant will have to use the mark in commerce
and submit an allegation of use to the PTO before
the PTO will register the mark. (3) Additionally,
under certain international agreements, an applicant
from outside the United States may file in the
United States based on an application or registration
in another country. For information regarding
applications based on international agreements
please call the information number provided
on page 4. A United States registration provides
protection only in the United States and its
territories. If the owner of a mark wishes to
protect a mark in other countries, the owner
must seek protection in each country separately
under the relevant laws. The PTO cannot provide
information or advice concerning protection
in other countries. Interested parties may inquire
directly in the relevant country or its U.S.
offices or through an attorney.
Who May File an Application?
The application must be filed in the name of
the owner of the mark; usually an individual,
corporation or partnership. The owner of a mark
controls the nature and quality of the goods
or services identified by the mark. See below
in the line-by-line instructions for information
about who must sign the application and other
papers. The owner may submit and prosecute its
own application for registration, or may be
represented by an attorney. The PTO cannot help
select an attorney.
Applicants not living in the United States
must designate in writing the name and address
of a domestic representative -- a person residing
in the United States "upon whom notices
of process may be served for proceedings affecting
the mark." The applicant may do so by submitting
a statement that the named person at the address
indicated is appointed as the applicant's domestic
representative under §1(e) of the Trademark
Act. The applicant must sign this statement.
This person will receive all communications
from the PTO unless the applicant is represented
by an attorney in the United States.
Searches for Conflicting Marks
An applicant is not required to conduct a search
for conflicting marks prior to applying with
the PTO. However, some people find it useful.
In evaluating an application, an examining attorney
conducts a search and notifies the applicant
if a conflicting mark is found. The application
fee, which covers processing and search costs,
will not be refunded even if a conflict is found
and the mark cannot be registered. To determine
whether there is a conflict between two marks,
the PTO determines whether there would be likelihood
of confusion, that is, whether relevant consumers
would be likely to associate the goods or services
of one party with those of the other party as
a result of the use of the marks at issue by
both parties. The principal factors to be considered
in reaching this decision are the similarity
of the marks and the commercial relationship
between the goods and services identified by
the marks. To find a conflict, the marks need
not be identical, and the goods and services
do not have to be the same.
Laws & Rules Governing Federal Registration
The federal registration of trademarks is governed
by the Trademark Act of 1946, as amended, 15
U.S.C. §1051 et seq.; the Trademark Rules,
37 C.F.R. Part 2; and the Trademark Manual of
Examining Procedure (2d ed. 1993).
Other Types of Applications
In addition to trademarks and service marks,
the Trademark Act provides for federal registration
of other types of marks, such as certification
marks, collective trademarks and service marks,
and collective membership marks. These types
of marks are relatively rare. For forms and
information regarding the registration of these
marks, please call the appropriate trademark
information number indicated below.
Use of the "TM," "SM"
and "(r)" Symbols
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, (r), may only be used
when the mark is registered in the PTO. It is
improper to use this symbol at any point before
the registration issues. Please omit all symbols
from the mark in the drawing you submit with
your application; the symbols are not considered
part of the mark.