Trademark FAQs for Every Small Business Owner

by
Richard Fonfrias, J.D.
Chicago's Financial Rescue & Bankruptcy Lawyer
Fonfrias Law Group, LLC



QUESTION #1: What is the difference between a trademark, patent and copyright?

Trademark: A trademark is a word, phrase, symbol or other design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol and/or design that identifies and distinguishes the source of a service rather than goods. The term "trademark" is often used to refer to both trademarks and service marks.

Although the federal registration of a mark is not mandatory, it brings you several advantages: (1) It gives the public notice that you claim ownership of the mark. (2) It gives other sellers that you own the mark nationwide. And (3) It gives you the exclusive right to use the mark on or in connection with the goods or services listed in the trademark registration.

Patent: A patent is a property right of limited duration that relates to an invention, granted by the United States Patent & Trademark Office (USPTO) in exchange for public disclosure of the invention.

Copyright: A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.

QUESTION #2: Should you hire a Trademark Attorney - or Get Other Help?

While hiring a lawyer is not required, most applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration.

A trademark attorney in private practice - not associated with the USPTO - may help you avoid many potential pitfalls. These include future costly legal problems by conducting a comprehensive search of federal registrations, state registration, and "common law" unregistered trademarks before you file your trademark application. Conducting comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. As such, those trademarks will not appear in the USPTO's Trademark Electronic Search System (TESS) database. But they could still ultimately prevent you from using your mark.

In addition, trademark lawyers can help you during the application process with several things that could seriously impact your trademark rights. These include determining the best way to describe your goods and services, and preparing responses if the USPTO refuses to register your mark.

And last, a private lawyer can also assist in the policing and enforcement of your trademark rights. The USPTO only registers trademarks. As the trademark owner, you are responsible for enforcing your legal rights.

QUESTION #3: What other things should you consider?

Before starting the application process, it is important to have clearly in mind (1) the mark you want to register; (2) the goods and/or services that relate to the mark you want to register; and (3) whether you will be filing the application based on actual existing use of the mark - or a bona fide intention to use the mark in the future.

This will make your search of the USTPO database more useful and may simplify the application process.

QUESTION #4: How should you identify your mark?

One important consideration is the depiction of your mark. Every application must include a clear representation of the mark you want to register. You use this representation to file the mark in the USPTO search records and to print the mark in the Official Gazette (OG) and on the registration certificate. The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration.

QUESTION #5: How should you identify your goods and/or services?

Once you have chosen your mark, you must also be able to identify the goods and/or services to which the mark will apply, clearly and precisely. The identification of goods and/or services must be specific enough to identify the nature of the goods and/or services. How specific you are depends on the type of goods and/or services.

Under U.S. Trademark law, class headings from the International Schedule of Classes of Goods and Services, by themselves, are not acceptable for registration purposes. The specific items of goods and/or services must be listed.

QUESTION #6: How should you search for marks that may already be registered?

You should search the USPTO database before filing your application, to determine whether anyone already claims trademark rights in a particular mark through a federal registration. Failure to conduct a proper search may result in your not making a proper assessment as to whether an application should even be filed.

QUESTION #7: How should you identify the proper "basis" for filing a trademark application?

A trademark application must specify the proper "basis" for filing, usually either a current use of the mark in commerce - or the intent to use the mark in commerce in the future. Understanding the distinction between these filing bases, and the implications of selecting one, are important considerations before you start the application process.

QUESTION #8: How should you file a trademark application?

You may file your trademark application online, using the Trademark Electronic Application System (TEAS). Or your lawyer will complete the form and file it for you.

QUESTION #9: What fees are you required to pay?

The proper filing fee for your application will be based on the following:

(1) Number of Marks: Only one mark may be filed per application. If you have more than one mark, you must file separate applications, each with its own filing fee;
(2) Number of Classes: You must pay for each class of goods and/or services in the application. For example, if the application is for one mark but the mark is used on goods in two different classes, such as computer software in Class 9 and t-shirts in Class 25, then you must pay a filing fee for two classes before your application could be approved; and
(3) The Version of the Form Being Used: The application filing fee for the TEAS Plus version of the form is different from the fee for the regular TEAS form. Check with your attorney to determine which fee applies to your situation.

No Refunds: Registration is not automatic and requires legal review by an examining attorney. This is why it's important that you take all necessary steps to ensure that your mark is entitled to receive a trademark registration before filing an application.

QUESTION #10: How can you monitor the status of your application?

You or your lawyer can monitor the progress of your application through the Trademark Status and Document Retrieval (TSDR) system. You should check the status of your application every 3 or 4 months after the initial filing of the application, because otherwise you may miss a filing deadline.

QUESTION #11: How should you protect your rights?

You are responsible for enforcing your rights if you receive a registration, because the USPTO does not "police" the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods or services, you, as the owner of a registration, are responsible for bringing any legal action to stop a party from using an infringing mark.