Trademark Registration
What is a trademark or servicemark?
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. The terms "trademark" and "mark" are often used interchangeably to refer to both trademarks and servicemarks.
Do Trademarks, Copyrights and Patents protect the same things?
No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention or process.
Click here for copyright information.
Click here for patent information.
Is registration of my trademark required?
No. You can establish rights in a trademark based on legitimate use of the trademark. However, obtaining a federal trademark registration on the Principal Register provides several advantages:
- constructive notice to the public of your claim of ownership of the trademark;
- a legal presumption of your ownership of the trademark and your exclusive right to use the trademark nationwide on or in connection with the goods and/or services listed in the registration;
- the ability to bring an action concerning the trademark 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.
When can I use the trademark symbols TM, SM and ®?
Any time you claim rights in a trademark, you may use the "TM" (trademark) or "SM" (servicemark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO (United States Patent and Trademark Office). However, you may use the federal registration symbol "®" only after the USPTO actually registers a trademark, and not in most cases while an application is pending. Also, you may use the registration symbol with the trademark only on or in connection with the goods and/or services listed in the federal trademark registration.
Why should I obtain Federal Trademark protection, doesn’t state registration do the same thing?
State registration only protects your trademark within the state, federal registration protects your trademark on a national level, and may afford some international protection as well.
How much does it cost to have the attorneys of the firm apply for the federal registration of my trademark?
If you are currently using your trademark in interstate commerce, we will require a deposit of $825 for attorney's fees and a $275-$325 USPTO Filing Fee, per mark, per each international class of goods/services applied for, to be placed in trust and paid towards filing fees, search fees and attorney's fees.
Services include:
- initial consultation with a trademark attorney;
- the basic filing fee with the USPTO;
- legal services of a trademark attorney;
- registered trademark search;
- common law search;
- a second consultation with your trademark attorney regarding the results of the searches and the likelihood of the trademark’s registration being approved by the USPTO;
- application processing;
- correspondence with the USPTO for any Office Actions (usually a letter from the USPTO requiring additional information).
In most cases applications do not require a response to more than one Office Action.
If you choose to file an “intent to use” application, the USPTO charges an additional *$100.00 fee when you file the “allegation of use”, which is just a sworn affidavit that is required to be filed once you actually use the trademark in interstate commerce, and other fees required by the USPTO to maintain your "intent to use" application until you actually use the mark in commerce..
Additional legal services required will be billed at our then current hourly rate. You will reimburse us for any additional fees charged by the USPTO, that we pay on your behalf.
Get Started Today, Call 702.990.3897
I don't live in the same state as your offices, can you still help me?
Yes. Because you will be seeking a federal registration for your trademark, we can help you regardless of where you live.
Why do I need a “Common Law” search in addition to the federally registered trademark search?
The registered trademark search, while very comprehensive, only covers those trademarks that a federal registration has been sought for. Many other trademarks are in use by entities that have not sought a federal registration. Sometimes these trademarks are registered with state governments, but often these trademarks are not registered at all. If these trademarks are in use, are substantially similar to your trademarks, and were used in interstate commerce prior to your trademarks, you could have major problems down the road.
Even if your trademark is approved for federal registration, the person or entity using the “senior” trademark could later challenge your registration and have it cancelled. Should this happen after you have invested a great deal of time and money into your trademark, the consequences could be disastrous.
Our “common law” search may include searching all 50 states for trademark registrations, business information databases, such as Dun & Bradstreet and American Business Information, court decisions, and domain name registrations.
Although the “common law” search is not required for federal registration, we feel that it is an essential part of the application process, and include the search as part of all the applications we complete. Better to invest a small amount now to be able to paint a clear picture of your risks, rather than approach them blindly.
How long does it take?
That really depends on the speed at which the USPTO moves, but typically expect a year or more for the process to be completed.
Once my registration is approved, what then?
You must continue to use your trademark in commerce, or risk losing it. At five years you will be required to "renew" your registration, and show that you are using the trademark in interstate commerce, and then every ten years thereafter.
*rates subject to change should the USPTO modify the amount of fees or filing requirements.
Please call us today to schedule a consultation so that we may help you further your goals.
Get Started Today, Call 702.990.3897
Learn More
-
Photography and Image Rights.
So you went on vacation and took some great photographs with your new digital camera. Some are of famous buildings, some have people in them, some don’t. You post them on your website and get comments from your friends about how great the photos are and that you should sell them to a magazine.
-
Copyright Preregistration.
Copyright preregistration is a service intended for works that have had a history of prerelease infringement. Copyright preregistration focuses on the infringement of movies, recorded music, and other copyrighted materials before copyright owners have had the opportunity to fully complete or market their products.
-
Internet Domain Names as Trademarks.
Registering and using a domain name is easy, just be the first person to register it, or purchase the registration rights from someone else. As long as you pay your registration fee each year you can use the domain name as you wish, provided you are not breaking the law or infringing on another’s rights. However, using a domain name in commerce to the point that it can receive federal trademark registration is not so easy, and in some cases not possible.
-
Obscenity Laws.
With the ever shortening attention span of the public, entertainers and entertainment providers keep pushing the envelope, presenting content that is often more “edgy” and outrageous than ever. Content that was taboo just a decade ago is finding its way not only into satellite/cable broadcasting but also onto the public airwaves as part of popular primetime traditional network programs.
