The word "trademark" can refer to both trademarks and service marks. A trademark is used for goods while a service mark is used for services. Your business can develop a trademark as soon as a design, word or phrase is used in commerce with your goods or services; however, protection is limited in scope and geography. Federal registration of the trademark is required for nationwide rights and nationwide protection.
A federally registered trademark helps prevent competitors from using a mark associated with your business. Even a federally registered trademark does not provide the registered owner with the exclusive use of the mark across all goods and services. Trademark protection is limited to the same or similar mark being used in related goods or services because. The intent of trademark protection is to prevent confusion in the marketplace between your mark and another brand offering related goods or services.
Good marks should be fanciful, arbitrary or suggestive. The mark must be inherently distinctive to obtain any trademark protection. A descriptive or generic mark cannot be registered.
Trademarks are registered by submitting an online application with the United States Patent and Trademark Office. Typically, you need to show that the mark has been used in commerce when registering a trademark. The registration must be filled for the mark to be used in connection with the correct goods or services where the mark is used. There is a filing fee for each designation, referred to as a class, of goods or services.
An examiner is assigned to review each trademark registration. The examiner reviews the distinctiveness of the mark and performs a full search to determine if any similar marks are already registered for a related good or service. Concerns are initially addressed through a nonfinal office action. A trademark registration will be denied through a final office action if there are concerns with the registration that are not cured by the registrant.
The Lanham Act (15 U.S.C. § 1051 et seq.) prohibits any person from using a mark in connection with any “goods or services” that is likely to cause confusion, mistake, or deception “as to the affiliation, connection, or association of such person with another person.” 15 U.S.C. § 1125(a)(1)(A). A trademark owner has the right to restrict, prevent, or limit use of the mark when another's use of the mark is likely to cause confusion.
Interested in registering a trademark? John Allen or Derek will consult with you to discuss the types of marks that can be federally registered and will perform an initial investigation to determine if a desired mark is likely to be registered. Next steps include counseling on risks, suggesting changes that may need to occur to your mark in order to obtain federal trademark protection, or registering your existing mark with the USPTO.
We would love the opportunity to help protect your intellectual property. Send us email today and we will schedule a consultation asap.