About Trademarks

Trademarks

Unlike patents, where you have to ask or apply to the government for protection and you have no protection unless the government grants it, trademarks and copyrights are so-called "common law" rights which belong to you upon use. In other words, if you make a widget and offer it for sale bearing the trademark "WHIZBANG", that trademark belongs to you, subject to anyone else's pre-existing rights, whether or not you register the trademark with the government.

This is similar to owning a house. When you buy a house, you own it, whether or not you record the deed. However, if you go on vacation and come back to find someone else living there and claiming to own the house. You can't get the police to through them out because the police don't have jurisdiction to determine title. Therefore, you have to take them to court and sue for eviction. When you do, if you have recorded your deed, you tell the judge, "I own that house and my deed is recorded at so-and-so" and the judge will turn to the other party and say "What are you doing there?". If you have NOT recorded the deed, you can still win - but you have more work to do.

You have to prove (1) that you bought the house; (2) that the person you bought it from had title to it; (3) that you paid him for it; (4) that you have never sold the house to anyone; etc. So, whether or not you have recorded the deed, you can prove that you own the house. If you have not recorded the deed, you just have more work to prove that you own it - but it IS still yours! The same thing is true with copyrights and trademarks. If you HAVE recorded them, you have an easier time in court. However, WHETHER OR NOT you have recorded them, you can STILL WIN! If anyone copies your trademark or copyright, you have procedural advantages in court, if you have registered it, but you can still win, even if you haven't registered it.

A trademark can be a word, a picture, a combination of word and picture or a slogan. In my opinion, a word marks are the most valuable, since a person seeking to buy your product or to tell someone about it will usually refer to your product by the word mark. If you have registered your trademark, you should place the trademark symbol (R in a circle) adjacent the lower right corner of the mark. You must NOT use the trademark symbol if you mark is NOT registered. This is a federal offense and is grounds for refusing registration. If you have NOT registered your trademark, you should place the letters T.M. adjacent the lower right corner of the mark. this tells the world that you are claiming trademark rights in the mark, but have not registered it. If you look at a package of snack food, such as "CHEETOS", you will find numerous words, designs or slogans, each having the trademark symbol or the letters T.M. next to them. Those having the trademark symbol are registered trademarks. Those having the letters T.M. are unregistered trademarks, but the manufacturer is claiming trademark rights in those terms.

Registration

Trademarks can be registered with the state or with the federal government. However, state registrations are effective only within the state, whereas federal registrations cover the entire country. Consequently, I feel that state registrations are relatively useless, whereas federal registrations can be extremely valuable.

To obtain a federal trademark registration, you must obtain a Trademark Application Form. Click HERE to see The U.S. Patent Office Online Trademark Application forms which includes instructions for filling it out. You do NOT need professional assistance to do this! A professional will merely ask you the questions on the form and charge you several hundred dollars for doing so.

You will also need three specimens of the trademark as applied to the goods, a drawing showing the trademark and a check in the amount of $325 made payable to Hon. Commissioner of Patents and Trademarks. The drawing must show the trademark as it is applied to the goods. However, for a word mark, you can submit a typed sheet of paper having the word mark typed in capital letters in the middle of the page and having a heading in the upper left hand corner stating the Applicant's name and address, the date of first use, the date of first use in interstate commerce and a brief description of the goods. This will protect the word, regardless of the type of lettering you use and with or without a background design and is the broadest trademark protection you can get.

The application will be examined to see if the mark is capable of distinguishing the owner’s goods from those of other people and whether the mark is immoral or conflicts with any previously registered marks. After this, the mark is published for 30 days in the Official Gazette of the Patent Office to allow objection by anyone who feels that they would be damaged by the registration. After this, if you have actual use, the registration is granted. If you have intended use, you will receive a Notice of Allowance and will have six months in which to either claim actual use or to request a six month extension. You can get up to six month extensions. However, it will cost you $100 to convert from intended to actual use each or to request an extension. Therefore, I recommend that you make a token use and file for actual use instead.

It is important to note that a trademark registration only covers the goods in a particular class. The same trademark can be used on goods in a different class without conflict. Thus, the term "CADILLAC" can be used as the name of a local bar, even though it is registered by General Motors Inc. for automobiles. The test is "likelihood of confusion" and no one would think that the operator of a local bar was manufacturing automobiles or that General Motors, Inc. was operating a local bar. I actually represented the bar owner in this case and we won.

If you wish to register your trademark through our web site, we need to know what the mark is and will charge $500 for preparing the application, plus the government filing fee of $325.00. Alternatively, you can print out the form and trademark your idea yourself.

Actual Or Intended Use

It is possible to file a trademark application based upon either actual or intended use. HOWEVER, it costs $100 for each extension or to convert the application to claim actual use. In view of this, I recommend that you file based upon actual use, even if it is only a token use.

The Federal government derives its right to register trademarks from the Interstate Commerce clause of the Constitution. Therefore, in order to obtain a federal trademark registration, you must have some use in interstate commerce. However, this is not a problem. If you make a prototype widget, stick a gummed label on it bearing the trademark "WHIZBANG" and mail it to someone outside your state. For instance, from Los Angeles, California, you could mail it to someone in Las Vegas, Nevada. Make out an invoice, when you mail the item and keep it as evidence of when you mailed the item. This is proof of first use in interstate commerce. If you subsequently proceed diligently to start manufacturing and selling in quantity, this is a valid first use. However, if you do NOT follow up with real production and sales, this is considered as merely a "token" use and someone else could adopt your mark.

Trademark Search

If you would like to do a Trademark Search, click to the United States Patent and Trademark Office uspto.gov to obtain search information.

Frequently Asked Trademark Questions

This area contains FAQ's for you to learn from. Please read this area before you submit a trademark question to us.

QUESTION : Can an individual copyright or patent a phrase? If so, is the same process and costs involved as patenting or an invention?

ANSWER : In response to your question to InventionAid.com, the answer depends upon how you are using the phrase. If you are using it in a trademark sense, you would protect it as a trademark. If you are using it as artistic matter, you might protect it by copyright. If you will tell us what the phrase is and how you are using it, we can give you a more specific answer.

QUESTION : Thanks for your interesting and helpful web site. Another question about trademark registration: The trademark is used with software commercially available for free only on the Internet. What can I use as specimens?

ANSWER : In regard to trademark registration of a mark used only on the Internet, I would expect that you could print pages from the Internet showing your use of the mark and that these could be used as specimens.

QUESTION : Can an individual copyright or patent a phrase? If so, is the same process and costs involved as patenting or an invention?

ANSWER : In response to your question to InventionAid.com, the appropriate protection for a phrase depends upon how you are using the phrase. If you are using it in a trademark sense, you would protect it as a trademark. If you are using it as artistic matter, you might protect it by copyright. If you will tell us what your mark is and how you are using it, we will be happy to give you a more specific answer.

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