· Without federal registration, the use of a mark provide only common law rights limited to a geographical area, may lead loss of some trademark rights and may increase the risk of liability for infringement other trademarks.

Q. What is a trademark search ?

A. A search for any registered or unregistered trademarks or services marks that: a) is identical or similar to the proposed mark, b) is being used in the US (or worldwide if mark is being proposed for worldwide use) and c) could cause a likelihood of confusion for consumers.

Depending on the thoroughness of the search, the following could be searched:

· federal USPTO trademark registrations

· federal USPTO trademark pending applications registrations

· the internet

· Yellowpages and business listings

· Sate trademark registrations

· State trade name (business names)

· publications having product and service advertising or marketing

· etc

Note. No search will uncover every possible relevant trademark.

Q. Can I file one trademark application to cover both a word mark (trademark in words only) and a logo?

A. No. You need to file two separate TM applications. You mark, logo, domain, and trade dress require all separate trademark applications.

Q. Can I trademark my domain name?

A. Yes, it is often useful to trademark your domain name.
Note that you should do a trademark search to make sure your domain name does not infringe on another's Trademark. Domain name registers do not conduct trademark searches prior to registering domains.

Q. Can I file one trademark application for more than one class of goods ?

A. Yes. There is additional PTO fees for the additional classes.

See link for fee schedule: http://www.uspto.gov/main/howtofees.htm

Q. What specimens can I file for a service mark ?

A. Since you provide a service, you do not have a product to attach your trademark onto. For service marks, acceptable specimens can include marketing material and advertizing material such as newspaper ads, brochures, a business card or letterhead/stationery showing the mark in connection with the services. A printout of a webpage should be ok showing the mark and describing the services. There must be some reference to the type of services provide on the specimen, not simply a display of the mark itself.

Example: a business card showing the trademark "ABC" and the description text afterwards, " "consulting services for small businesses" is ok.

Examples of unacceptable service mark specimens include: documents showing the service mark used as a trade name (trade name is the name of the company), service mark used as a trademark (source of goods, not services), invoices, and news releases.

Q. Can I register a business name (i.e., trade name) as a trademark ?

A. Sometimes. You can register a business name as a trademark if it identifies the goods and services provided. Example, "Reliable electric appliances " could be a trade name and business name since it describes the good provided.

Q. Can I apply for a trademark for a slogan ?

A. Yes, a slogan can be registered for a trademark.

Q. If I search the PTO registered trademarks data base and find marks similar to mine that are dead, does that mean I can use and apply for the trademark ?

A. The dead status means the owner just abandoned their federal registration. The trademarks listed as dead may still have common law trademark rights. The trademark owner may still be using the trademark. The mark owners could cause problems in the future by initiating an opposition or cancellation proceeding against your registration of the mark.

Q. How does the USPTO determine if my mark is too similar to other registered marks and whether to reject my mark?

A. The USPTO examiner compares the mark being applied for with registered or pending marks in the PTO database. If the applied for mark could create a "likelihood of confusion" with existing marks, then the examiner will reject the applied for mark in an office action. Below is an excerpts from the trademark manual

The examining attorney must conduct a search of Office records to determine whether the applicant’s mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. .... If the examining attorney determines that there is a likelihood of confusion between applicant’s mark and a previously registered mark, the examining attorney refuses registration under §2(d).

In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. In ex parte examination, the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. ....................... In an ex parte case, the following factors are usually the most relevant:

· The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

· The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

· The similarity or dissimilarity of established, likely-to-continue trade channels.

· The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.

· The number and nature of similar marks in use on similar goods.

· A valid consent agreement between the applicant and the owner of the previously registered mark.

See http://tess2.uspto.gov/tmdb/tmep/1200.htm#_T120701

Note the tests are very subjective and unpredictable.

Note: Refusals based on unregistered marks are not issued in ex parte examination. That is the patent office does not reject TM applications based on unregistered marks, only registered marks.

Q. What are Good and/or service descriptions on the Trademark application ?

A. Your TM application will need to describe all the goods and services that you want to protect your mark for. If you plan to offer additional goods or services in the future, make sure your description is broad enough to cover them in the initial application. The PTO rarely lets you amend the application to broaden the goods/services description. You then would need to file another TM application to expand the descriptions.

The USPTO Acceptable Identification of Goods and Services Manual is here http://tess2.uspto.gov/netahtml/tidm.html .

Q. Is there a requirement that a ® symbol be used after a trademark?

A. No. but there are benefits to putting ® symbol after a trademark.

Q. How much time does it take to get a trademark ?

A. You get common law trademark rights as soon as the trademark is used in commerce. You get Federal registration when the mark is officially registered. It takes a minimum about 9 months for registration and most of the time longer depending (about 12 to 18 months) on the back log at the PTO and whether you receive office actions.

Q. Can trade dress be registered as a US trademark ?

A. Yes. Trade dress includes the total image of a product or service, such as colors, shapes, graphics, etc.

For example, Owen's -Corning registered the color pink for their fiberglass insulation.

For more info see http://tess2.uspto.gov/tmdb/tmep/1200.htm#_T120202

After Trademark is registered - other docs must be filed to renew trademark

Q. After my trademark is approved, what renewals and other documents must be filed?

A. Overall, in general, documents must be filed with the PTO on the 5th, 10 and 20th anniversaries of issuance and then renewals thereafter every 10 years.

First, between the 5 and 6th years after allowance, Declaration of use Must be filed and optionally but recommended, a Declaration of incontestability should be filed.

· Section 8 - Declaration of Use: Must be filed on or between the fifth (5th) and sixth (6th) anniversaries of the date of registration.

· Section 15 - Declaration of Incontestability: To claim that a trademark registered on the Principal Register is "incontestable", you must file a Section 15 Declaration of Incontestability once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration. (does NOT apply to marks on the supplemental register).

Second, between 9th and 10th anniversary, a Combined Declaration of Use & Application for Renewal must be filed.

· Section 8 & 9 - Combined Declaration of Use & Application for Renewal: Must be filed on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the date of registration; and then again every ten (10) years thereafter. Filing Fee: $500.00 per Class.

Q. What is a section 15 Declaration ?

A. To claim that a mark registered on the Principal Register is now incontestable, you must file a Section 15 declaration once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration, or date of publication under § 12(c), and the mark is still in use in commerce. (Section 15 does NOT apply to marks on the Supplemental Register). You may file this declaration within one (1) year after the expiration of either any five-year period of continuous use following registration, or any five-year period of continuous use after publication under § 12(c).
NOTE: Because the time for filing a Section 8 declaration coincides with the time for filing a Section 15 declaration of incontestability for many applicants, a combined §§ 8 & 15 form.

Q. What is a Section 8 declaration ?

A. Declaration of Use of a Mark under section 8 (Filed between the 5th & 6th year after registration) - You must file a Section 8 declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee per class, you may file within the six-month grace period following the sixth (6th) anniversary date). Failure to file a section 8 declaration will result in cancellation of the registration.

For more information on how the USPTO examines trademark applications see http://tess2.uspto.gov/tmdb/tmep/1200.htm

For more FAQ see USPTO Basic facts about trademarks

Note: This is not legal advice. This is for informational purposes only. No attorney-client relationship is formed except by written signed client engagement agreement.

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