By: Michael P. Sawicki, Esq.
A trademark or service mark is legal protection for a word, phrase, symbol or design that identifies a specific product or service and makes it distinguishable from other products or services to help consumers to distinguish it from your competitors. Trademarks are used for the protection of goods and service marks are used for the protection of services. Both types of marks are intellectual property along with patents and copyrights. Trademarks and service marks provide legal protection against counterfeiting and fraud. They prevent others from using similar marks for similar goods or services that would likely be confusing to consumers.
Trademarks and service marks are registered with the United States Patent and Trademark Office (USPTO). The official registration of a trademark or service mark with the USPTO provides constructive notice that the use of the trademark is protected and shows the evidence of ownership. A trademark or service mark can also be registered in other countries or with a global registration.
A trademark application can be filed with the USPTO once a good or service is used in interstate commerce. The date of first use sets the protection date once the application is approved by a USPTO trademark examiner. Specimens of use need to be filed as part of the application process. Specimens must be evidence of the use of the trademark in commerce and can be shown, for example, on a website, label, or packaging material. Applicants can also file an intent to use application to protect a trademark that is not yet used in interstate commerce, but where there is an intent to use the trademark in the future. Once the trademark is actually used in interstate commerce, the application must be amended to show actual use in commerce. The benefit of filing an intent to use application is that once the trademark is actually used, the protection date reverts to the date of the original intent to use application.
Before filing any form of application for a trademark or service mark, it is important to have a trademark search conducted to make sure a registered trademark has not already been approved or is pending before the USPTO. Trademarks and service marks are filed based on pre-determined classifications which are categories of goods and services categorized into broad groups. A trademark or service mark can be filed in multiple classifications to broaden the scope of protection.
The USPTO examiners review of an application for a trademark can take from twelve to eighteen months. The examiner may issue an office action seeking clarification or additional information which may extent the application process. Once an application has been filed with the USPTO, the use of the trademark should be designated with a “TM” symbol, and a service mark with the “SM” symbol to give consumers and competitors notice that a trademark is pending. Once an official trademark or service mark has been officially approved by the USPTO, the official trademark symbol of “®” should be used to designate a registered trademark or service mark. This provides consumers with notice that a registered trademark exists for the specific good or service.
A trademark can last indefinitely as long as the owner continues to use it and actively reviews the registration every ten years with the USPTO.
If you need experienced counsel to help you conduct a trademark search or navigate the application process, call the trademark attorneys of Batoff Associates, P.A. at 410-864-6211.
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