Corvallis, Oregon Businesses Use Cohn Legal for Trademark Services
Serving clients in Corvallis, Oregon, Cohn Legal Group provides outstanding legal counsel and guidance on trademark and intellectual property rights and protections. Our trademark attorneys absolutely love helping startups, entrepreneurs, and small business owners protect their brand names and logos. We handle trademark prosecutions, corporate transactional work, and everything in between.
Top Questions Corvallis Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Corvallis, Oregon, Can I Still Obtain a Federal Trademark?
This is an excellent question. Ultimately, to obtain a federal trademark, it must be used in “interstate-commerce” meaning that your services must be provided in at least two States. If you are presently only providing your services in Corvallis, Oregon, we can simply file an Intent to Use application; The intent-to-use application allows the applicant to reserve the right to use the trademark once it is ready to be used in inter-state-commerce.
What is a trademark?
A trademark is a form of intellectual property that is used to distinguish and identify the source of goods or services in the marketplace. It can be a word, phrase, symbol, design, or a combination of these elements that serves as a unique identifier for a particular business, product, or service. When consumers see a trademark, they associate it with a specific company or brand, which helps build trust and brand recognition.
Trademarks play a crucial role in branding and marketing strategies, as they allow businesses to establish their identity and reputation. By registering a trademark, a company gains exclusive rights to use that mark in connection with the goods or services it represents. This helps prevent others from using similar marks that could lead to confusion among consumers.
To be eligible for trademark protection, a mark must be distinctive, meaning it should be capable of identifying the source of the goods or services and not be too generic or descriptive. For instance, a highly creative and unique name like “XyloFizz” for a soft drink would likely be eligible for trademark protection, whereas a descriptive name like “Refreshing Soda” would not enjoy the same level of protection.
Obtaining a registered trademark provides the owner with various legal benefits and protections, including the ability to sue for trademark infringement if someone else uses a confusingly similar mark in the same class of goods or services.
It’s important to note that trademark laws and regulations may vary from country to country, so businesses seeking to protect their marks internationally should consider filing separate applications in each relevant jurisdiction or exploring options like international treaties and agreements that facilitate the protection of trademarks across multiple countries.
Is there a difference between a trademark and service mark?
Yes, there is a difference between a trademark and a service mark, although both serve the same purpose of distinguishing the source of goods or services. The distinction lies in the type of offerings they identify.
A trademark is used to protect and identify goods, which are tangible products or merchandise. It covers items like electronics, clothing, food products, and other physical commodities. For instance, the Nike “swoosh” logo is a trademark that represents various sports apparel and equipment.
On the other hand, a service mark is specifically used to identify and protect services rather than physical products. Services encompass a wide range of intangible offerings, such as legal services, accounting, consulting, entertainment, or healthcare. For example, the distinctive NBC chimes represent their broadcasting services.
The legal principles and requirements for obtaining protection for trademarks and service marks are quite similar. Both must be distinctive and capable of identifying the source of the goods or services. The process of registration and enforcement for both types of marks is also comparable.
In the United States, the term “trademark” is often used to refer to both trademarks and service marks collectively. When filing an application with the USPTO, the term used is “trademark” for both goods and services. However, the distinction remains significant when it comes to the nature of the offerings being protected.
Businesses providing both goods and services can apply for both trademark and service mark protection, depending on their specific needs. This allows them to protect their brand identity comprehensively and ensure that they have exclusive rights to use the mark in connection with both the products and services they offer.
In conclusion, the main difference between a trademark and a service mark lies in the type of goods or services they represent. Trademarks are used to protect tangible products, while service marks protect intangible services. Businesses should be mindful of this distinction when seeking legal protection for their intellectual property assets.
What’s the difference between the ® and TM symbols?
The ® symbol and the TM symbol are used to indicate the status of a trademark, but they have different legal implications.
TM Symbol: The TM symbol stands for “trademark” and is used to indicate that a word, phrase, logo, or design is being used as a trademark to identify goods or services. It can be used without having the mark officially registered with a government trademark office. Using the TM symbol does not grant any legal rights to the mark, but it serves as a notice to the public that the owner considers the mark to be a trademark. This can discourage others from using a similar mark and helps establish the mark’s association with a particular business.
® Symbol: The ® symbol, on the other hand, indicates that the trademark has been officially registered with the appropriate government agency, such as the United States Patent and Trademark Office (USPTO) in the United States. This symbol can only be used once the mark has successfully gone through the registration process and has been granted registration. Registering a trademark provides the owner with significant legal benefits, including a presumption of ownership, nationwide protection, and the ability to bring a lawsuit for infringement in federal court.
Using the ® symbol without actually having a registered trademark can lead to legal consequences and should be avoided. It is essential to wait until the mark is officially registered before using the ® symbol.
In summary, the TM symbol is used to indicate that a mark is being used as a trademark, whether or not it is registered. It provides notice to others and helps establish the mark’s identity. On the other hand, the ® symbol is reserved exclusively for registered trademarks and denotes that the mark has undergone the formal registration process, granting the owner additional legal protections and rights.
How can I determine if a trademark is available?
Determining the availability of a trademark is a crucial step before using or registering it. Conducting a thorough search helps ensure that the desired mark is not already in use by another party, reducing the risk of potential conflicts and legal issues. Here’s how you can determine if a trademark is available:
- Preliminary Search: Start with a basic search using search engines and online databases. Look for identical or similar marks used in connection with similar goods or services. This initial search will give you an idea of potential conflicts.
- USPTO Trademark Database: If you’re in the United States, conduct a comprehensive search on the United States Patent and Trademark Office (USPTO) database. This database contains both registered and pending trademarks. Ensure that your mark does not conflict with existing registrations or applications.
- State Trademark Databases: Check state-level trademark databases, as some marks may be registered only at the state level, not federally.
- Common Law Search: Look for unregistered marks that may have established rights based on prior use in commerce. Common law rights can be significant and may restrict your ability to use a similar mark.
- Domain Name Search: Verify the availability of domain names related to your desired trademark. Domain names can indicate potential conflicts, especially for online businesses.
- Social Media Search: Search social media platforms to see if the mark is being used as a username, handle, or hashtag.
- International Search: If you plan to use the mark internationally, consider searching trademark databases in other countries where you intend to do business.
- Professional Help: For a comprehensive search, consider seeking assistance from a trademark attorney or a specialized search company. They have access to advanced databases and can identify potential conflicts that may not be apparent in general searches.
- Freedom to Operate Opinion: A trademark attorney can provide a “freedom to operate” opinion, assessing whether using the mark may infringe on existing trademarks.
Once you’ve conducted a diligent search and are confident that the trademark is available, you can proceed with adopting and using the mark. It’s essential to document your use of the mark and, if possible, affix the TM symbol to provide public notice of your claim to the mark. To strengthen your protection and obtain exclusive rights, consider registering your trademark with the relevant government agency, such as the USPTO. Seeking legal counsel during the registration process will ensure that your application is properly prepared and submitted, increasing the chances of a successful registration.
Is it necessary that I conduct a trademark search before submitting my application?
There is no law or regulation that says that you must conduct a trademark search before submitting your trademark application. However, it is highly recommended that you do.
The purpose of a trademark search is to find out if your trademark is too similar to any existing trademarks. That way, you can update or change your mark to ensure it is unique before submitting your application.
Do I need to sell a product or service to obtain a registered trademark?
No, you do not necessarily need to sell a product or service to obtain a registered trademark. Trademark protection is available for both goods and services, but the key requirement is that the mark must be used in commerce in connection with the goods or services for which you seek protection.
- Intent to Use Application: In the United States, you can file an “Intent to Use” (ITU) application with the United States Patent and Trademark Office (USPTO) if you have a bona fide intent to use the mark in commerce. This means you have a genuine intention to use the mark on goods or services in the near future. Filing an ITU application allows you to secure a priority filing date while you work on developing your product or service. Once you begin using the mark in commerce, you can submit evidence of use to the USPTO to complete the registration process.
- Actual Use Application: Alternatively, if you are already using the mark in commerce, you can file an “Actual Use” application. This application requires you to provide evidence of current use of the mark in connection with the specified goods or services at the time of filing.
It’s essential to understand that obtaining a registered trademark based on an ITU application requires you to demonstrate actual use of the mark before the registration is granted. If you fail to use the mark in commerce within a specified time frame after registration, your trademark could be deemed abandoned.
Moreover, it’s important to select a mark that is distinctive and capable of identifying the source of your goods or services. Generic or merely descriptive terms typically cannot be registered as trademarks. If your mark is found to be merely descriptive, you may need to demonstrate acquired distinctiveness through extensive use in commerce to qualify for registration.
Registering a trademark provides several benefits, including nationwide protection, the ability to use the ® symbol, and the legal right to enforce your trademark against infringers. It’s advisable to consult with a trademark attorney to determine the best course of action and to ensure your application complies with all legal requirements. Remember that trademark protection can be a valuable asset for your business, even if you have not yet started selling your products or services.
If I only provide my services locally, can I still obtain a federal trademark?
Yes, you can obtain a federal trademark in the United States, even if your services are offered only locally or within a specific geographic area. The key requirement for federal trademark registration is the actual use of the mark in commerce, not the extent of the geographical reach of your services.
When applying for a federal trademark, you need to demonstrate that the mark is used in connection with the services you offer, and the services must be rendered in interstate commerce, which means they involve some form of commerce between different states or countries. This does not necessarily mean that you have to provide services nationwide or internationally; rather, it means that your services must have a commercial connection beyond the borders of your state or territory.
For instance, if you run a law firm that offers legal services exclusively within your city, you may still qualify for federal trademark registration if you have clients or potential clients from outside your city who seek your services. If you provide legal advice to clients residing in different states or conduct online consultations across state lines, your services are considered to be in interstate commerce, and you would be eligible for federal trademark registration.
Keep in mind that using a mark solely within one state may not qualify for federal protection. In such cases, you may still have common law rights within the state based on your use, but you won’t enjoy the broader benefits of federal registration.
Federal trademark registration provides several advantages, including nationwide protection, a legal presumption of ownership, the ability to use the ® symbol, and the ability to enforce your rights in federal court. It’s advisable to consult with a trademark attorney to assess your specific situation, determine if your services meet the interstate commerce requirement, and guide you through the registration process. Properly protecting your mark at the federal level can safeguard your brand and enhance your legal rights, even if your services are primarily focused on a local level.
What should I register first: the name of my business or my brand logo?
Deciding whether to register the name of your business or your brand logo first depends on your business priorities and marketing strategy. Both trademarks are valuable assets, and ideally, you should consider protecting both to safeguard your brand comprehensively. However, if you must prioritize one over the other, here are some factors to consider:
- Brand Identity: If your business is still in its early stages and you have not yet developed a distinct logo, it may be more practical to start by registering the name of your business as a trademark. Your business name serves as a primary identifier and is likely to be used across various marketing channels, documents, and communications.
- Logo Development: If your brand logo is already well-defined and plays a significant role in distinguishing your products or services, you might consider prioritizing its registration. A unique and eye-catching logo can become the visual representation of your brand, making it recognizable to consumers.
- Budget Constraints: Trademark registration involves costs, including application fees and legal assistance if needed. If your budget is limited, you may need to prioritize one mark over the other initially. However, bear in mind that delaying the protection of one mark could leave it vulnerable to potential infringement.
- Comprehensive Protection: Ideally, you should aim for comprehensive protection by eventually registering both your business name and logo. This provides broader protection for your brand and helps prevent others from using similar names or logos that may cause confusion among consumers.
- Trademark Availability: Before proceeding with registration, conduct a thorough search to ensure that both your business name and logo are available and do not infringe on existing trademarks. This search will help you identify potential conflicts and make an informed decision on which mark to prioritize.
- Use in Commerce: Remember that to obtain federal trademark registration in the United States, you must demonstrate actual use of the mark in commerce. This means that you should be using the business name or logo in connection with the products or services you offer before filing the application.
In conclusion, both your business name and brand logo are essential elements of your brand identity. If possible, prioritize the registration of both to gain comprehensive protection. However, if you must choose one over the other, consider factors such as brand identity, logo development, budget constraints, and trademark availability to make an informed decision. Ultimately, consulting with a trademark attorney can provide valuable guidance and help ensure that your brand is adequately protected.
How do I go about registering a trademark with the USPTO?
In order to register a trademark, you need to submit a trademark application to the United States Patent and Trademark Office, or USPTO. You are required to submit your application through the USPTO’s Trademark Electronic Application System (also known as TEAS).
An examining attorney at the USPTO will thoroughly evaluate the application once it’s received to ensure there are no errors. The examining attorney will also search the USPTO database to ensure that your desired mark is not too similar to any mark that has already been registered.
If any issues are found, you will receive an office action, which will outline what needs to be resolved before your trademark application can move forward. You generally have 6 months to respond to the USPTO.
After resolving those issues, the examining attorney at the USPTO will submit your trademark to be published in the Trademark Official Gazette for a 30-day Opposition Period. During those 30 days, anyone who has any objections to your trademark being published may come forward.
If no one comes forward, your trademark will move forward to the final approval stages.
What is a fanciful trademark?
A fanciful trademark is a type of trademark that is highly distinctive and considered one of the strongest forms of protection. It is a mark that has been invented or created solely for the purpose of serving as a trademark and has no other meaning or significance before its adoption. Fanciful trademarks are entirely arbitrary and have no association with the products or services they represent.
Examples of fanciful trademarks include coined words or completely made-up terms that have no existing dictionary definition or prior meaning. These marks are unique and have no inherent connection to the goods or services they identify, making them easier to protect and enforce.
The distinctiveness of fanciful trademarks arises from the fact that consumers do not associate these marks with anything other than the specific brand or source of goods/services. Since the terms have no prior meaning, they do not describe the product’s attributes or qualities. This uniqueness helps prevent consumer confusion and enables businesses to establish a strong brand identity.
Fanciful trademarks are placed at the highest level of the trademark hierarchy in terms of protection. Below are the common categories of trademarks in descending order of strength:
- Fanciful Trademarks (e.g., “Kodak” for cameras)
- Arbitrary Trademarks (e.g., “Apple” for computers)
- Suggestive Trademarks (e.g., “Netflix” for online streaming)
- Descriptive Trademarks (e.g., “Vision Center” for an eye care clinic)
- Generic Terms (e.g., using “Computer” to sell computers)
Registering a fanciful trademark provides significant legal advantages, including nationwide protection and a presumption of ownership. It is easier to enforce fanciful trademarks against potential infringers because their uniqueness minimizes the chances of legitimate coincidental use.
When creating a fanciful trademark, businesses must ensure that the mark is not confusingly similar to any existing trademarks. A comprehensive trademark search is essential to avoid potential conflicts. Consulting with a trademark attorney is advisable to navigate the registration process and protect the exclusivity of the fanciful mark.
Overall, a fanciful trademark is a powerful tool for brand recognition and protection, allowing businesses to establish a strong and memorable identity in the market.
What does it mean if a trademark is rejected for being too “generic”?
Generic terms will never be given trademark protection. For example, someone wouldn’t be allowed to trademark the word “motorcycles” as the name of their motorcycle company. If someone were allowed to do that, it would mean that no other company would have the right to use the word motorcycles, which is unreasonable and unfair.
What does it mean if my trademark is refused as a “commonly used phrase”?
Your trademark may be refused if an examining attorney at the USPTO makes the determination that your desired trademark is a commonly used phrase. An example of a commonly used phrase is “be careful.” That phrase would not be acceptable as a trademark for a car manufacturer because it does not indicate who the source of the product is. It simply conveys a very widely known sentiment.
What is TEAS?
TEAS stands for the Trademark Electronic Application System. It is an online platform provided by the United States Patent and Trademark Office (USPTO) that allows applicants to electronically file and manage trademark applications and related documents.
TEAS offers several different application forms to cater to various types of trademark filings. The most common forms include:
- TEAS Plus: This form is the most cost-effective option for filing a trademark application. It requires applicants to meet specific requirements, such as providing goods and services descriptions from the USPTO’s pre-approved list and agreeing to use only electronic communications throughout the application process. In exchange for meeting these requirements, the filing fee is lower than other TEAS forms.
- TEAS Standard: This form allows applicants more flexibility in terms of goods and services descriptions, but the filing fee is slightly higher than TEAS Plus.
- TEAS Reduced Fee (TEAS RF): This form is available for certain limited categories of goods and services and offers a reduced filing fee. However, it is not as commonly used as TEAS Plus or TEAS Standard.
The TEAS system streamlines the application process, making it more efficient and cost-effective compared to traditional paper-based filings. It also provides real-time status updates on applications, making it easier for applicants to track the progress of their filings.
Using TEAS is generally recommended for its convenience, cost-effectiveness, and faster processing times. However, applicants should ensure they meet the specific requirements for the chosen TEAS form to avoid potential delays or refusals. If an application encounters issues or requires additional clarification, the USPTO will issue an office action, and applicants can respond electronically through TEAS.
Overall, TEAS has been instrumental in modernizing and simplifying the trademark application process, making it accessible to applicants from anywhere in the world and promoting the efficient management of trademark registrations.
How long does the trademark application process take?
The duration of the trademark application process can vary significantly depending on various factors, including the type of application, the accuracy and completeness of the submission, and the workload of the trademark examining attorney. On average, the process can take anywhere from several months to over a year. Here’s a breakdown of the different stages and their typical durations:
- Initial Review: After submitting the trademark application through the Trademark Electronic Application System (TEAS), the USPTO conducts an initial review to ensure the application is complete and meets all formal requirements. This review usually takes a few weeks.
- Examination Phase: The trademark application then enters the examination phase, during which a trademark examining attorney reviews the application to determine if the mark meets the legal requirements for registration. This phase can take several months, especially if there is a high volume of applications.
- Office Actions: If the examining attorney identifies any issues or concerns with the application, they issue an office action, requesting additional information or amendments. The applicant has six months to respond to the office action. If a response is filed, the process will be delayed until the USPTO reviews it, which can take a few months.
- Publication: If the examining attorney approves the application, it is published in the Official Gazette, a weekly publication of the USPTO. The mark is published for opposition, allowing third parties 30 days to oppose the registration if they believe it may cause confusion with their own marks. If no opposition is filed, the application moves to the next stage.
- Registration: Assuming no opposition is filed or any opposition is resolved in favor of the applicant, the USPTO will issue a registration certificate. The duration from publication to registration can be around two to three months.
It is important to note that these timeframes are approximate and can vary depending on the workload of the USPTO and the complexity of the application. Additionally, if any issues arise during the process, such as office actions or oppositions, the timeline may be extended.
To expedite the application process, applicants can consider filing a TEAS Plus application, which usually receives faster processing times if all requirements are met. Engaging a trademark attorney can also help ensure the application is correctly prepared, reducing the likelihood of delays due to errors or omissions. Overall, while the trademark registration process may take time, securing federal registration provides valuable legal protection for your brand.
How long does a trademark last?
Unlike patents or copyrights, trademarks can potentially last indefinitely if they continue to be used and renewed properly. The duration of trademark protection depends on the type of registration and the jurisdiction in which it is registered.
- United States: In the United States, trademark registration is initially valid for ten years from the date of registration. After the initial ten-year period, the registration can be renewed indefinitely every ten years as long as the mark is still in use in commerce and the required renewal fees are paid. As long as the mark remains in use and the renewal requirements are met, the trademark can be protected indefinitely.
- International Registration: For international registrations obtained through the Madrid System, the term of protection also lasts ten years from the date of registration. Like in the U.S., the registration can be renewed indefinitely every ten years, as long as the mark continues to be used and the renewal fees are paid in each designated country.
- Common Law Trademarks: Unregistered or common law trademarks, which arise from actual use of the mark in commerce, can also potentially last indefinitely as long as the mark continues to be used in connection with the goods or services.
However, it’s essential to note that maintaining a trademark’s validity requires continuous use of the mark in commerce and the timely filing of renewal applications and fees. Failure to use the mark for an extended period or neglecting to renew the registration can result in the mark becoming abandoned, and its protection will be lost.
Additionally, trademarks can be subject to challenges and disputes. If a mark becomes generic (loses its distinctiveness), it may no longer be protected as a trademark. Furthermore, if a third party successfully challenges the mark’s validity or proves that the mark has been abandoned, its protection may be revoked.
To maintain and maximize the protection of your trademark, it is advisable to regularly monitor and enforce your rights against potential infringers. Consulting with a trademark attorney can be beneficial in navigating the complexities of trademark law, ensuring proper use, and securing continuous protection for your valuable brand assets.
Can I use a trademark without registering it?
Yes, you can use a trademark without registering it. Trademark rights in the United States (and many other countries) are primarily based on actual use of the mark in commerce rather than registration. When you use a mark to identify your goods or services, you automatically acquire common law trademark rights, which offer some level of protection.
Common law trademark rights arise from the “first to use” principle, meaning that the first party to use the mark in commerce to identify specific goods or services becomes the senior user with rights in that geographic area. However, common law protection is limited to the geographic regions where the mark is used, and it may not be as strong or easily enforced as federal registration.
There are a few key points to consider regarding the use of an unregistered trademark:
- Limited Protection: Common law trademark rights are limited to the specific geographic area where the mark is used in commerce. If your business expands into new territories or markets, you may encounter conflicts with others who have used similar marks in those areas.
- Priority of Use: Unregistered trademark rights are based on the priority of use, meaning that the first user of the mark in a particular area has the primary right to use the mark in that location.
- Challenges and Enforcement: Enforcing common law trademark rights can be more challenging and costly compared to registered trademarks. Proving the existence and scope of common law rights in court may require significant evidence and legal resources.
- Benefits of Registration: Federal trademark registration provides numerous advantages, including nationwide protection, a legal presumption of ownership and validity, and the ability to use the ® symbol. Registered trademarks also have a higher level of protection against potential infringers and are easier to enforce.
While using a mark without registration is legally permissible, obtaining federal registration is strongly recommended for businesses looking to expand their brand nationally or internationally. Registering a trademark provides more robust and enforceable rights, greater protection, and additional legal benefits, making it an essential step in protecting valuable brand assets. Consulting with a trademark attorney can help you understand the benefits and drawbacks of registration and guide you through the application process.
What are the reasons I should hire a trademark attorney?
If you are a U.S.-domiciled business owner, then you aren’t required to hire a trademark attorney. However, hiring a trademark attorney has several benefits. A trademark attorney will:
- Conduct a clearance search to ensure that your desired mark is available for use.
- Prepare and submit a trademark application.
- Respond to office actions you may receive from the USPTO.
- File trademark maintenance documents by the required deadlines.
- Ensure no one infringes on your trademark.
- Represent you in court.
- Provide ongoing advice and counsel regarding your trademark and intellectual property rights.
When should I hire a trademark lawyer?
Hiring a trademark lawyer is highly recommended when you are considering using, registering, or protecting a trademark. A trademark lawyer can provide invaluable expertise and guidance throughout the trademark process, ensuring that your brand is adequately protected and that potential legal issues are addressed effectively. Here are some specific scenarios when you should consider hiring a trademark lawyer:
- Trademark Search and Clearance: Before adopting a new trademark, conducting a comprehensive search is essential to avoid potential conflicts with existing marks. A trademark attorney can conduct a thorough search and analyze the results, helping you assess the risk of infringement and potential obstacles.
- Trademark Registration: If you decide to pursue federal trademark registration, a trademark lawyer can assist you in preparing and filing the application. They will ensure that the application is correctly drafted and complies with all legal requirements, increasing the likelihood of a successful registration.
- Office Actions and Oppositions: If you receive an office action from the United States Patent and Trademark Office (USPTO) or face a trademark opposition, a lawyer can help you understand the issues raised and guide you in responding appropriately. Responding to legal challenges effectively can significantly impact the success of your application.
- Trademark Monitoring and Enforcement: A trademark lawyer can help you monitor and enforce your trademark rights, ensuring that potential infringements are identified and addressed promptly. They can guide you through cease and desist letters, negotiations, and potential litigation if necessary.
- International Trademark Protection: If you plan to expand your business internationally, a trademark lawyer can assist you in navigating the complexities of international trademark protection, including filing applications in foreign jurisdictions and complying with international treaties.
- Trademark Portfolio Management: For businesses with multiple trademarks, a lawyer can help manage your trademark portfolio, ensuring that registrations are properly maintained, and renewals are filed on time.
- Trademark Licensing and Assignments: If you intend to license or assign your trademark rights to others, a lawyer can draft and negotiate licensing agreements and assignment documents to protect your interests.
- Trademark Disputes: If you are involved in a trademark dispute, such as a trademark infringement lawsuit, a lawyer can represent you in court and advocate for your rights.
Overall, a trademark lawyer’s expertise can help you navigate the complexities of trademark law, mitigate potential risks, and protect the value of your brand. They can provide personalized advice tailored to your specific business needs, ensuring that your trademarks are adequately protected and enforced. Consulting with a trademark lawyer early in the process can save you time, money, and headaches in the long run.
What is a trademark’s specimen?
In the context of trademark registration, a specimen refers to a sample or representation of how the trademark is actually used in commerce on the goods or in connection with the services it identifies. The United States Patent and Trademark Office (USPTO) requires applicants to submit a specimen as part of the trademark application process to demonstrate proper use of the mark.
The purpose of submitting a specimen is to show that the trademark is not merely an idea or concept but is actively being used as a source identifier for specific goods or services. This requirement helps the USPTO ensure that only legitimate trademarks that are genuinely used in commerce receive federal registration.
The type of specimen required depends on whether the mark is used in connection with goods or services:
- Specimen for Goods: For trademarks used with tangible goods, acceptable specimens include labels, tags, packaging, product containers, displays, or photographs showing the mark directly affixed to the goods or their packaging. The specimen should show the mark as it appears to consumers when they encounter the product in the marketplace.
- Specimen for Services: For trademarks used with services, acceptable specimens include brochures, advertisements, flyers, business cards, letterheads, or photographs showing the mark as it is used in advertising or promoting the services to consumers.
The specimen submitted must show the mark used in the ordinary course of trade, and it should be associated with the specific goods or services listed in the trademark application. It is crucial to ensure that the specimen accurately reflects how the mark is being used in commerce to avoid potential issues during the examination process.
If the submitted specimen is inadequate or does not demonstrate proper use of the mark, the USPTO may issue an office action requesting a proper specimen or additional evidence of use. A trademark attorney can assist in selecting the appropriate specimen and ensuring that it meets the USPTO’s requirements, increasing the likelihood of a smooth and successful trademark registration process.
Can I request an expedited approval of my trademark registration?
Yes, it is possible to request an expedited approval of your trademark registration under certain circumstances. In the United States, the United States Patent and Trademark Office (USPTO) offers an expedited examination process known as the “TEAS Reduced Fee” (TEAS RF) option for certain types of trademark applications.
The TEAS RF option is available for applications based on “intent to use” (ITU) and “use in commerce” (actual use) for the following filing bases:
- ITU Basis: Applicants who have a bona fide intent to use the mark in commerce but have not yet used the mark in commerce can use the TEAS RF option. This option is suitable for businesses that are in the process of developing their products or services and want to secure a filing date before actual use.
- Use in Commerce Basis: Applicants who have already used the mark in commerce and can demonstrate such use are also eligible for the TEAS RF option.
The TEAS RF option allows applicants to expedite the examination process by paying a reduced filing fee at the time of application. While the standard examination process can take several months, the expedited TEAS RF option typically results in a faster response from the USPTO, which can accelerate the overall registration process.
However, it is essential to meet all the requirements and accurately complete the application when choosing the TEAS RF option. Failure to meet the criteria or provide the necessary information may result in rejection or delays in the examination process.
It’s worth noting that the TEAS RF option is not available for all types of trademark applications. For example, it is not available for applications based on foreign registrations or international registrations obtained through the Madrid System.
If your application does not qualify for the TEAS RF option, and you need expedited processing due to extenuating circumstances, you can reach out to the USPTO to inquire about other potential expedited examination options, such as the Trademark Acceleration Program (TAP) or the Priority Expedited Examination Program.
In any case, it’s advisable to consult with a trademark attorney to determine the best strategy for your trademark application and ensure that all requirements are met to expedite the approval process successfully.
Can I trademark a phrase?
Yes, you can trademark a phrase if it meets the legal requirements for trademark protection. Trademarks are used to identify the source of goods or services, and a phrase that is distinctive and used to distinguish your products or services from others in the marketplace can be eligible for trademark registration.
To successfully register a phrase as a trademark, it must meet the following criteria:
- Distinctiveness: The phrase must be distinctive and not generic or descriptive. Distinctive phrases are more likely to be granted trademark protection because they are capable of identifying the source of the goods or services uniquely. Descriptive phrases, on the other hand, describe the product or service itself and are usually not eligible for trademark registration unless they have acquired distinctiveness through extensive use.
- Use in Commerce: To qualify for federal trademark registration in the United States, you must be using the phrase in commerce. This means the phrase must be associated with the goods or services you are offering in the marketplace. If you have not yet used the phrase in commerce but have a bona fide intent to do so, you may be able to file an “Intent to Use” (ITU) application with the United States Patent and Trademark Office (USPTO) to secure a priority filing date.
- Non-Infringement: The phrase must not infringe on any existing trademarks. Before filing your application, it’s essential to conduct a thorough trademark search to ensure that the phrase is not already registered or being used by someone else in connection with similar goods or services.
- Distinctive Design: In some cases, the visual presentation of the phrase may enhance its distinctiveness and trademarkability. A unique design or stylization of the phrase can strengthen its capacity to identify the source of the goods or services.
Once you have met these criteria and secured federal trademark registration, you can use the ® symbol next to your phrase, indicating that it is a registered trademark and enjoys additional legal protection.
It’s crucial to consult with a trademark attorney to navigate the application process, conduct a comprehensive trademark search, and ensure that your phrase meets the necessary legal requirements for successful registration. By doing so, you can protect your phrase as a valuable brand asset and prevent others from using it in a way that could create confusion among consumers.
Can I trademark a logo?
Yes, you can trademark a logo to protect its unique design and use as a source identifier for your goods or services. Trademark registration for logos follows the same legal principles as other types of trademarks, but it focuses on the distinctive visual representation of your brand.
To successfully register a logo as a trademark, you must meet the following requirements:
- Distinctiveness: Like any trademark, the logo must be distinctive and capable of identifying the source of your goods or services. A logo that is generic, descriptive, or too similar to existing trademarks is unlikely to be eligible for registration. Distinctive logos that stand out in the marketplace have a higher chance of successful registration.
- Use in Commerce: To qualify for federal trademark registration in the United States, you must be using the logo in commerce in connection with the goods or services you provide. If you haven’t used the logo yet but have a bona fide intent to do so, you can file an “Intent to Use” (ITU) application to secure a priority filing date.
- Non-Infringement: Your logo must not infringe on any existing trademarks. A comprehensive trademark search is crucial to ensure that your logo does not resemble or create confusion with other registered trademarks.
- Distinctive Design: The design of your logo should be unique and not a common or standard representation. Creative and original logos that set your brand apart are more likely to be granted trademark protection.
During the trademark application process, you will need to submit a clear and accurate representation of your logo as a specimen. This representation helps the United States Patent and Trademark Office (USPTO) understand the visual elements of your logo and how it functions as a source identifier.
Once your logo is successfully registered as a trademark, you can use the ® symbol next to it, indicating that it is a registered trademark and enjoys additional legal protection.
It’s important to consult with a trademark attorney to navigate the application process, ensure your logo meets the necessary legal requirements, and protect your brand effectively. A well-protected logo can enhance brand recognition, prevent others from imitating your brand identity, and safeguard your business’s reputation in the marketplace.
Can I trademark a color?
Yes, it is possible to trademark a color under certain circumstances. However, obtaining a color trademark is more challenging compared to traditional word or design marks. To qualify for a color trademark, the color must have acquired distinctiveness in the marketplace, meaning that consumers have come to associate the color specifically with your brand and its goods or services.
Here are some essential considerations for trademarking a color:
- Inherently Distinctive Color: Inherently distinctive colors are colors that are so unique and unusual in the context of the industry that they immediately indicate the source of the goods or services. These colors are more likely to be eligible for trademark protection without requiring extensive evidence of distinctiveness.
- Secondary Meaning: If a color is not inherently distinctive, you must show that the color has acquired “secondary meaning” in the minds of consumers. This means that consumers have come to associate the color exclusively with your brand, even though the color itself may not be inherently distinctive.
- Specific Application: A color trademark is limited to the specific context in which it is used. For example, a color used on product packaging may be trademarked for that specific packaging but not for the product itself.
- Competitor’s Rights: When seeking to trademark a color, you must also consider whether using that color might infringe on the rights of competitors who are already using a similar color in the same industry.
Notable examples of color trademarks include the distinctive “Tiffany Blue” color used by Tiffany & Co. for its jewelry boxes and the distinct shade of brown used by UPS for its delivery trucks.
It’s important to remember that obtaining a color trademark can be challenging, and the process may require substantial evidence of distinctiveness and consumer association. Consulting with a trademark attorney is highly recommended to assess the viability of trademarking a specific color and to navigate the application process effectively.
Overall, while color trademarks can provide powerful brand recognition and differentiation in the market, they are not easily obtainable, and the uniqueness and distinctiveness of the color in the context of the industry are critical factors in determining whether such a trademark can be registered successfully.
Can I transfer my trademark to someone else?
Yes, you can transfer your trademark to someone else through a process known as trademark assignment. Trademark assignment involves the transfer of ownership of a registered trademark or a pending trademark application from one party (the assignor) to another party (the assignee). The assignment must be done in writing and is typically accomplished through a formal agreement called a “Trademark Assignment Agreement.”
Here are the key points to consider when transferring a trademark:
- Written Agreement: The assignment of a trademark must be documented in writing to be legally effective. The agreement should clearly state the details of the transfer, including the parties involved, the specific trademark(s) being transferred, and any conditions or limitations of the assignment.
- USPTO Recordal: If the trademark being transferred is already registered with the United States Patent and Trademark Office (USPTO), the assignment should be recorded with the USPTO. Although recordal is not mandatory, it provides legal notice to the public of the change in ownership and helps establish the assignee’s rights as the new owner.
- Goodwill and Associated Assets: In many cases, trademark assignment also involves the transfer of goodwill associated with the mark. Goodwill refers to the reputation and value the mark has acquired through use. The assignment agreement may include provisions related to the transfer of other associated assets, such as domain names, logos, or customer databases.
- Licenses and Existing Agreements: If there are existing licenses or agreements related to the trademark, the assignment agreement should address how those agreements will be affected by the transfer of ownership.
- Avoiding Confusion: Care must be taken to ensure that the assignment does not create confusion in the marketplace. If the trademark being transferred is similar to other existing trademarks, the parties should consider how this could affect consumers’ perception of the mark.
- Legal Assistance: Given the complexities and potential legal implications of trademark assignment, it is advisable to seek the assistance of a trademark attorney to draft the assignment agreement and guide you through the process. This ensures that the transfer is conducted in compliance with trademark laws and that all necessary steps are taken to protect the interests of both parties.
By properly executing a trademark assignment, the new owner (assignee) assumes all the rights and responsibilities associated with the trademark, including the right to use, enforce, and protect the mark. The original owner (assignor) relinquishes all ownership rights to the mark.
Can I license my trademark to others?
Yes, you can license your trademark to others through a trademark licensing agreement. Trademark licensing allows the trademark owner (licensor) to grant permission to another party (licensee) to use the trademark in connection with specific goods or services, while still retaining ownership and control over the mark.
Here are the key points to consider when licensing your trademark:
- Licensing Agreement: The trademark licensing agreement is a legally binding contract between the licensor and the licensee that outlines the terms and conditions of the licensing arrangement. It should include details such as the scope of the license, the specific goods or services the licensee is authorized to use the trademark for, the duration of the license, and any quality control requirements.
- Quality Control: Trademark owners must exercise quality control over the goods or services associated with the licensed mark. This ensures that the mark’s reputation and distinctiveness are maintained and protected. The licensing agreement should address how the licensor will monitor and enforce quality control standards.
- Use Guidelines: The licensing agreement should specify the guidelines for the proper use of the trademark by the licensee. This may include rules on logo usage, color specifications, and other elements that ensure consistency and compliance with the licensor’s brand standards.
- Compensation and Royalties: The licensing agreement should define the compensation the licensee will pay to the licensor in exchange for using the trademark. This may be in the form of royalties based on sales or a flat licensing fee.
- Territory and Duration: The agreement should specify the geographic territory in which the licensee is authorized to use the mark and the duration of the license. It may also include provisions for renewal or termination of the agreement.
- Recordal with the USPTO: While not mandatory, recording the licensing agreement with the United States Patent and Trademark Office (USPTO) can provide additional legal protection and establish the licensor’s control over the mark.
Licensing your trademark can be a strategic way to expand your brand’s reach, generate additional revenue, and strengthen brand recognition. However, it is essential to carefully select licensees and ensure that they adhere to the terms of the licensing agreement.
Seeking the assistance of a trademark attorney when drafting the licensing agreement is highly advisable. An experienced attorney can help protect your rights, draft a comprehensive and enforceable agreement, and guide you through the licensing process to maximize the benefits of licensing your trademark.
If my trademark is registered in the United States, is it protected in other countries as well?
No, a trademark registered in the United States is only protected within the territorial boundaries of the United States. Trademark protection is territorial, meaning that registration in one country does not automatically grant protection in other countries.
If you wish to protect your trademark in other countries, you must seek trademark registration in each individual country or through regional trademark systems, such as the European Union Trademark (EUTM) for protection in the European Union.
There are several ways to pursue international trademark protection:
- National Applications: You can file individual trademark applications in each country where you want protection. This can be time-consuming and expensive, especially if you are seeking protection in multiple countries.
- Madrid System: The Madrid System for the International Registration of Marks allows applicants to seek trademark protection in multiple countries through a single application. The system is administered by the World Intellectual Property Organization (WIPO). By using the Madrid System, you can designate multiple member countries and potentially simplify the international registration process.
- Regional Systems: Some regions, like the European Union and African Intellectual Property Organization (OAPI), offer regional trademark systems. Registering through these systems can provide protection in multiple countries within the respective region.
It’s important to consider your business’s international expansion plans and the countries where you want to use your trademark before seeking international protection. A carefully planned international trademark strategy can help you protect your brand’s reputation and prevent others from using similar marks in different markets.
Registering your trademark in other countries provides you with additional legal rights and enforcement mechanisms in each jurisdiction. It’s advisable to work with an experienced trademark attorney or a specialized IP firm with expertise in international trademark law to navigate the complexities of international registration and ensure your brand’s protection across different territories.
Is there such a thing as an “International Trademark”?
While there is no single “International Trademark” that provides worldwide protection, there are international mechanisms and agreements that facilitate the process of obtaining trademark protection in multiple countries. These mechanisms aim to simplify and streamline the international registration of trademarks, making it more efficient for businesses seeking protection in several jurisdictions.
The two primary international systems for trademark registration are:
- Madrid System: The Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO), allows trademark owners to seek protection in multiple member countries through a single international application. By designating one or more member countries, applicants can extend their trademark rights to those countries without filing separate applications in each jurisdiction. This system significantly reduces administrative and procedural burdens, making it a popular choice for international trademark registration.
- European Union Trademark (EUTM): The European Union Trademark (formerly known as the Community Trademark) allows applicants to register their trademarks in all current member countries of the European Union (EU) through a single application. With the Brexit transition period, the United Kingdom has now left the EU, and new EU applications no longer cover the UK. However, existing EU trademarks have been automatically converted into comparable UK trademarks.
It’s important to note that while the Madrid System and the EUTM provide efficient ways to seek protection in multiple countries, they are not comprehensive global systems. They are limited to the member countries of the respective systems. Additionally, the Madrid System and the EUTM are subject to the trademark laws and regulations of each individual country or region where protection is sought.
Obtaining international trademark protection often requires a thoughtful and strategic approach. Before pursuing international registration, it’s crucial to conduct a comprehensive trademark search to ensure that your mark is available for use and registration in the targeted countries. Consulting with a trademark attorney or an intellectual property specialist can help you devise a well-informed and effective international trademark strategy tailored to your business’s needs and objectives.
What is a trademark office action?
A trademark office action is an official communication issued by the United States Patent and Trademark Office (USPTO) in response to a trademark application. When you submit a trademark application, a trademark examining attorney at the USPTO reviews it to determine if the mark meets the legal requirements for registration.
If the examining attorney identifies any issues or deficiencies in the application, they will issue an office action detailing the specific concerns that need to be addressed before the application can proceed to registration. Office actions can be issued for various reasons, including:
- Substantive Issues: The examining attorney may find that the mark is likely to cause confusion with an existing registered mark or that it is merely descriptive and lacks distinctiveness. In such cases, the applicant may be required to provide arguments or evidence to overcome the refusal.
- Procedural Issues: Office actions may also be issued for procedural reasons, such as incomplete or inaccurate information in the application. The applicant will be asked to correct the deficiencies and provide the necessary information.
- Specimen or Use Issues: If the mark is being used in commerce, the USPTO may request a proper specimen that demonstrates the mark’s use in connection with the goods or services listed in the application.
- Classification Issues: The USPTO may question the classification of goods or services in the application and ask for clarification or changes.
- Ownership or Entity Issues: If there are discrepancies regarding the ownership or entity listed in the application, the USPTO may issue an office action seeking clarification.
Applicants typically have six months to respond to an office action, although extensions of time may be available in some cases. If the applicant fails to respond to the office action or is unable to overcome the refusal, the USPTO will ultimately refuse registration for the trademark.
Responding to a trademark office action requires careful attention to detail and a thorough understanding of trademark law. Engaging a trademark attorney to help address the issues raised in the office action can improve the chances of successfully advancing the application and ultimately obtaining federal trademark registration. A knowledgeable attorney can navigate the complexities of the process and provide the necessary arguments and evidence to support the registration of your mark.
What should I do if I receive an office action on my trademark application?
Receiving an office action on your trademark application can be a crucial moment in the registration process. It’s essential to carefully review the office action and take the necessary steps to respond appropriately. Here’s what you should do if you receive an office action:
- Read and Understand the Office Action: Carefully read and review the office action to understand the specific issues raised by the examining attorney. Pay close attention to the reasons for refusal and any requirements or deficiencies identified in the application.
- Seek Legal Advice: Consider seeking advice from a trademark attorney who can assess the office action’s implications, explain the options available to you, and guide you through the response process. An attorney can help you develop a well-crafted response that addresses the USPTO’s concerns effectively.
- Prepare a Comprehensive Response: Responding to an office action requires more than just a simple reply. You may need to provide arguments, evidence, or amendments to overcome the refusal or deficiencies noted. Your response should be clear, concise, and supported by relevant legal and factual arguments.
- Meet the Deadline: Pay close attention to the deadline for responding to the office action. Typically, you have six months to submit a response, but it’s essential to act promptly to avoid unnecessary delays.
- Address All Issues: Ensure that your response addresses all the issues raised in the office action. If there are multiple grounds for refusal, each one must be adequately tackled.
- Amend the Application if Necessary: If there are minor errors or deficiencies in the application that can be corrected, make the necessary amendments. This may involve clarifying descriptions, correcting goods or services classifications, or providing additional information.
- Provide Evidence of Use: If the office action requests a proper specimen or evidence of use, make sure to submit the required documentation to demonstrate how the mark is used in commerce.
- Demonstrate Distinctiveness: If the refusal is based on a lack of distinctiveness, provide evidence or arguments showing that the mark has acquired distinctiveness through use in commerce.
- Be Respectful and Professional: Maintain a respectful and professional tone in your response to the examining attorney. Clear and courteous communication can positively impact the review process.
- Consult with your Attorney: Before submitting your response, have your trademark attorney review and approve the final document. Their expertise can ensure that your response is strong and persuasive.
Responding to an office action can be complex, and a well-prepared and thorough response is crucial to overcoming any issues and moving the registration process forward. An experienced trademark attorney can provide valuable guidance, increase the chances of success, and navigate any challenges that may arise during the response process.
How do I enforce my trademark rights?
Enforcing your trademark rights is essential to protect your brand’s reputation and prevent others from using your mark without authorization. If you believe someone is infringing on your trademark or using a similar mark in a way that may cause confusion among consumers, you can take several steps to enforce your rights:
- Cease and Desist Letter: Begin by sending a cease and desist letter to the infringing party. The letter should clearly state your trademark rights, the specific infringing activities, and a demand to stop using the mark. The letter should also express your willingness to take further legal action if necessary.
- Gather Evidence: Collect evidence of the infringing activities, such as photographs, advertisements, or any other documentation that demonstrates the unauthorized use of your mark.
- Monitor the Market: Continuously monitor the market and online platforms to identify potential infringements. Trademark watch services can help you stay vigilant for any unauthorized use of your mark.
- Record the Trademark with Customs: If your trademark is registered with the United States Customs and Border Protection (CBP), they can help prevent the importation of counterfeit goods bearing your mark.
- File a Trademark Infringement Lawsuit: If the infringing party does not comply with your cease and desist letter, or if the infringement continues, you may need to file a trademark infringement lawsuit in federal court. This legal action seeks to enforce your rights and may result in injunctive relief, damages, or other remedies.
- Utilize Online Platforms: Many online platforms, such as social media platforms and e-commerce sites, have mechanisms in place to report trademark infringement. Use these tools to report unauthorized use of your mark on these platforms.
- Work with Customs Authorities: If you suspect counterfeit goods are being imported, you can work with customs authorities to seize the infringing products at the border.
- Licensing Agreements: If you wish to allow others to use your trademark, you can enter into licensing agreements that define the terms and conditions under which others may use your mark while maintaining quality control and protecting your brand.
Enforcing trademark rights requires vigilance, timely action, and legal expertise. Working with a trademark attorney experienced in trademark enforcement can help you navigate the enforcement process effectively and protect the integrity of your brand. Remember that prompt action is essential to prevent further damage and strengthen your position when enforcing your trademark rights.
Why Trademark Registration Matters for Corvallis Businesses
Home to the beloved Oregon State University, Corvallis has charming neighborhoods, an exciting downtown, a vibrant arts scene, and is close to a wide variety of outdoor recreational activities. This city is getting noticed by entrepreneurs and startups as the ideal location to start a new venture.
While many business owners in Oregon are apt to be “do-it-yourselfers” they should remember to ask the experts when it comes to trademark registration.
Imagine the following: Theresa is in her final year as a computer science major at Oregon State University. She’s come up with a great idea for a new app that will connect students at local high schools and middle schools with students from OSU who are available to tutor them. College students can log on when they’re available and log off when they’re not. The students can opt for in-face, video chat, or phone sessions. Even payment is handled through the app.
Theresa calls her new app UniTutor and she’s excited to launch it. She searches for the name of the app on her phone and nothing comes up so she thinks she’s free to use it. She moves forward with her plans.
It’s just 6 months later and UniTutor has been downloaded 15,000 times. Students are easily connecting with tutors. Friends of Theresa who’ve used the app tell her it’s easy to use and a great way to make extra money.
Unfortunately, Theresa is about to get some bad news. It turns out that there’s another small software company in California that is developing an app with a similar name and does pretty much the same thing as Theresa’s app.
Even though the California developer hasn’t launched their app yet, they did apply for trademark registration a year ago. So, they have every right to send Theresa a cease-and-desist letter and ask her to disable her app. Theresa is devastated when she receives the letter.
If Theresa had hired a trademark attorney to conduct a full clearance search of her trademark, the attorney would have found that the other company had a pending trademark application on file with the USPTO. Theresa could have then chosen a new name for her app, and avoided this entire ordeal.
If you have questions about trademark registration, then contact the attorneys at Cohn Legal for a no-cost trademark consultation.
**Cohn Legal, PLLC is not located in Corvallis and yet it can assist businesses from Oregon in registering a federal Trademark because trademarks are governed under federal law.