A trademark is a word, expression, logo, design, device, sound, or any combination thereof, which indicates to consumers the source of certain goods or services.
The symbol ® indicates to the public that a mark is formally registered with the U.S. Patent and Trademark Office (“USPTO”). Thus, the symbol ® should be used only in connection with a federally registered trademark.
The TM symbol indicates to the public that you are claiming rights to a certain mark. You may use the TM symbol in connection with any mark, registered or unregistered. However, the TM symbol is typically used with an unregistered trademark.
Use of a trademark symbol (® or TM) with a trademark in not mandatory in the United States, but such use is beneficial. For example, if you are using ® with your trademark and somebody infringers upon that mark, then the fact that you have been using ® with your mark may help you rebut the infringer’s possible defense that his/her infringement was unintentional.
For all practical purposes, a service mark is the same as a trademark with the obvious exception that it is used in connection with services rather than goods. Service marks enjoy the same level of legal protection as trademarks.
The symbol SM is used to claim ownership of a service mark, but the TM symbol can be used for that purpose as well.
Unlike many other countries, a formal registration is not required in order to use a trademark within the United States. As soon as you start using your trademark in commerce in connection with your product or service, your mark acquires protection in its geographic area of use. Such an unregistered trademark is referred to as a “common law” trademark.
That being said, obtaining a federal trademark registration provides the mark’s owner with a significantly enhanced level of legal protection, compared to a common law mark. Nationwide protection, the ability to file priority applications in foreign countries, access to federal courts, and the ability to record registered trademarks with the U.S. Customs and Border Protection Agency are just a few examples of a federal registration’s benefits.
Before you start using a new trademark in connection with your goods or services, it is very important to ensure that the mark is legally available, meaning no one else has prior rights to the same (or confusingly similar) trademark. The process of ensuring that a trademark is legally available for use and registration is called “trademark clearance”.
Using a trademark that was not properly cleared is dangerous and may result in serious legal ramifications, significant financial loses and other problems.
Trademark clearance can be a laborious task sometimes, and the strategy of clearance may vary significantly from case to case. In general, however, the clearance is typically done in two stages:
1. Preliminary (Knock-Out) Search
Typically, this is a fairly quick search designed to identify identical (or nearly identical) marks that present an obvious obstacle or problem to adopting and using a proposed mark. A preliminary search is usually performed in the federal trademark databases only, but depending on specific needs, it may be supplemented by searches in trademark databases of individual states. Certain online searches can be performed as well at this stage.
The main goal of a preliminary search is to identify any obvious obstacles and problems fast and without incurring significant expenses. The results are summarized with a short report, which includes an attorney's preliminary opinion as to whether the proposed mark is available.
Our firm's method of conducting a preliminary search includes wide use of automated algorithms and search engines, which allows us to get a deep data pool for an attorney's review at a low cost.
2. Comprehensive Trademark Search
This is a very thorough search. It is much broader in scope than a preliminary search and usually provides a trademark attorney with a good volume of data to determine a certain trademark's availability. Upon analyzing a comprehensive search report, the attorney will typically prepare a detailed opinion.
Middle ground: "enhanced" knock-out search.
If there are budget restrictions or other considerations that make an owner decide against a full (comprehensive) trademark search, we can provide what we call an "enhanced" knock-out search option. Our search process incorporates use of proprietary algorithms and web crawler-type systems which typically allow us to reach deep into the web's corners and get an extended pool of data very cheaply. Although not legally sufficient to clear a trademark, this option can be a viable alternative for a cost sensitive client or in other situations where the owner decides against a full search.
You may think of the preliminary trademark search as a filter that can be used to eliminate obviously non-viable candidates quickly. Because of the limited scope of the preliminary search, however, it is not sufficient in order to fully clear a trademark. Thus, we always advise clients to conduct a full (comprehensive) trademark search before using or applying to register a trademark.
A comprehensive trademark search is more expensive as it covers searches in numerous databases, industry directories and other sources, but it can provide a good detailed picture as to any risks related to adopting and using a trademark in commerce.
Trademark clearance is both an art and a science, and it should be conducted by experienced trademark professionals. Just because you conduced a Google search (or even your own search in the USPTO records) and found nothing relevant, does not necessarily mean your mark is safe to adopt. There are many examples of entrepreneurs who suffered significant financial losses simply because they did not perform a proper trademark clearance.
In the perfect world, each trademark should be properly cleared (which means going through both clearance stages referenced above). In real life, however, some companies occasionally may decide to proceed straight to using their trademark in commerce. Or they may file a trademark application based on the preliminary search results alone, or without any searching at all. We always warn our clients about the risks associated with this approach. But ultimately, this is your responsibility to make that business decision, based on your business considerations, your current budget and other factors specific to you.
The time to register a trademark with the U.S. Patent and Trademark Office (“USPTO”) depends on many factors and may vary significantly. In the best case scenario, it may take you around 6-8 months to receive a certificate of registration. However, it is routine for the USPTO to issue Office Actions, which require response and cause delays. There may be other delays during the process, such as oppositions filed by third parties.
The good thing is that you do not have to wait until the registration issues, you may start using the mark while the application is pending. In fact, assuming you cleared your mark properly, it is usually a good idea to start using the mark as soon as possible.
First, an application is filed with the U.S. Patent and Trademark Office (“USPTO”). The USPTO then assigns the application to an examiner, who will review the application for compliance with certain requirements. The examiner will also search in the USPTO’s records to make sure the trademark is available for registration. If the examiner finds any irregularities or problems with the application, an Office Action will issue.
If the event an Office Action issues, the mark’s owner will have six months to submit a proper response. If no response is filed, the application will be abandoned. If a response is filed, but the examiner is not satisfied, a refusal to register the mark will ultimately issue. That refusal can be appealed.
If the response is filed timely, and the examiner is satisfied with that response, the application will proceed further and will be published for opposition.
Each mark is published for publication in the USPTO’s publication called Official Gazette, giving any interested parties 30 days to file an opposition against the mark. If an opposition is filed, the case will go to the Trademark Trial and Appeal Board (“TTAB”) for adjudication. The TTAB is a neutral court-like body which handles trademark matters at the USPTO.
If a trademark passes the opposition stage successfully, there are two main scenarios of further development:
1. If the mark was filed based on the owner’s actual use of the mark in commerce (1A application), the mark will proceed straight to registration at this point;
2. If the mark was filed based on the owner’s intent to use the mark in commerce (1B application), then the USPTO will issue a Notice of Allowance, giving the owner six months to file a Statement of Use, proving that the mark is already being used in commerce. That 6-month deadline can be significantly extended, if necessary.
Once a satisfactory Statement of Use has been filed with the USPTO, the mark will be registered.