Trademarks Overview

There are several types of trademarks possible: common law, state, federal and foreign.  A federal trademark registration provides priority and protection on a nationwide scope and is excellent for companies that conduct business on the Internet serving consumers in multiple states. A state trademark registration provides state wide priority and protection and is best suited for companies that operate within a single state, such as local companies. Common law trademark rights provide inherent protection when a business is utilizing a trademark in a given area and has developed name recognition within that area.

In sum, a trademark protects the source identification of a good, while a servicemark protects the source identification of a service.

How do I obtain a federal trademark?

  • First, have a trademark search conducted by an attorney to determine if other similar marks exist. A trademark search should not only look for similar marks, but phonetic equivalents, logos, designs, cancelled trademarks, and should give you an analysis of any less similar trademarks which might pose a likelihood of confusion with your trademark. A general computerized search will not be this exhaustive, nor will you have any idea regarding whether a likelihood of confusion exists. ¬†While there is no requirement by the Trademark Office that a trademark search be performed, we often recommend that the client have such a search done before thousands of dollars are spent in marketing and advertising…building up goodwill in a company or product’s name.
  • Second, have a trademark application filed for your trademark by an attorney. A properly filed trademark application will avoid common mistakes which will automatically result in a refusal to register your trademark application and/or (quite possibly) a loss of rights. Your trademark is too important to your business to lose–have it filed by a professional.
  • Third, “prosecution” of the trademark application takes place. This is the process where the trademark examining attorney asks for additional information, asks an applicant to make changes to the application, and issues formal “refusals” to register for grounds such as “likelihood of confusion,” and “merely descriptive.” Once the examining attorney is satisfied that the trademark is registerable, the trademark will be published in the Patent and Trademark Office Official Gazette for opposition. The Official Gazette is routinely reviewed by law firms and corporations to ensure that no marks are being registered which are confusingly similar to other marks of clients of the firm or company. If opposition is filed, it is the applicant’s burden to prove that there is no likelihood of confusion between the proposed mark and the pre-existing mark.
  • For “intent-to-use” trademark applications, after successfully negotiating the opposition phase, a notice of allowance will issue, and the applicant has six (6) months in which to certify actual use in interstate commerce and supply samples of its use.
  • Of course, this is a highly simplified discussion of how to obtain a trademark. Again, if the trademark is worth obtaining, it is worth doing the job right. Find an attorney that you trust to file and prosecute the application for you.