Trademark Basics

What is a Trademark?
  • A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies goods or services.  It's how customers recognize you in the marketplace and distinguish you from your competitors  In other words, a trademark is your brand.

The Registration Process
  • Trademarks are registered on-line with the United States Patent and Trademark Office.  The filing fee can vary, but it is typically $250 for a single application for a single class.

Specimens
  • In the on-line registration application digital images (called" specimens") must be included proving "use in commerce".  Specimens are scanned images, digital photographs or screen captures from a browser that are uploaded into the on-line trademark application.  A specimen is a real-life sample of how the mark is actually being used in the marketplace.  A specimen must show the mark being used as branding.  The specimen should generally be what consumers actually see when they are purchasing the goods or services.  CLICK HERE for a page on the USPTO website providing detailed information on the specimen requirement

    • If "services" are being sold

      • Specimens can include images that show the mark being used in marketing, advertising, business cards, websites, etc.

      • Screen captures from a website are the most common type of specimen when it is services being sold.

    • If "goods" are being sold

      • The specimens can show the mark being used on labels, hang tag or packaging (in a place where and how a consumer would expect to see branding).

      • Specimens for sale of goods can also be a webpage screen capture, BUT, it must show a means for actually ordering and paying for the goods (such as a "shopping cart" button/link, an order form, or a telephone number for placing orders).

      • If the trademark is being used in conjunction with the sale "goods" (as opposed to "services") images of advertising are not acceptable

    • ALTERNATE:  an application can be filed on an "intent to use" basis.  Specimens are not initially required for an Intent to Use application - BUT - a "Statement of Use" (along with the required specimens) must be filed within 6 months after the initial application is approved along with an additional $150 fee

The Proposed Trademark Must be Used as Branding
and not, for example, simply words buried somewhare in an article or on a website
  • So, what is "branding"?  To qualify the mark must "function as a trademark", meaning that the mark must serve to create a unique identity for the business in the minds of consumers and the public

  • The digital specimen must show the mark being displayed in a place where consumers would normally expect to find branding (for example, at the top of a webpage, or on the inside of a shirt collar, or on the label of a bottle)

Trademarks That Can't be Registered
  • Generally, marks that are descriptive of the goods or services being sold
  • Generally, generic words or phrases
  • Generally, surnames
  • Generally, company names
  • Generally, marks that are geographically descriptive
  • Generally, internet domain names
  • Generally, marks that are merely a decorative feature
  • Generally, marks that are too similar to an already registered mark

Graphical Image vs Words alone
  • A trademark can be EITHER of the following:

    • graphical image (which may or may not contain embedded words), or
    • words alone (with no graphical attributes)

  • Registering a graphical image as a trademark will protect the image but it will not necessarily protect any words that might be embedded in that graphic image

  • To protect words independently from those same words embedded in a graphical image, two separate registrations (with two separate filing fees) would be required - one for the words alone and one for the graphic image.

  • TIP TO SAVE MONEY:  If a graphic consists PRIMARILY of embedded words and the applicant wants to hold down the filing fees it might make sense to register just the words alone (with no graphical attributes) rather than registering a graphic image.  Doing that would provide better protection for the words because registering a graphic would protect only the specific graphic that was being registered but not any words that might be embedded in the graphic.  Of course, if money was no object, both the graphic mark and the words-alone mark can both be separately registered.

Classes
  • With each registration, at least one "class" must be designated

  • A "class" is a categorization of the goods/services that the mark would be used with.  The listing of predefined classes is found in the government's Trademark ID Manual

  • The software used in the on-line trademark application determines the class(es) based on the description of the goods or services that are being sold.

  • Multiple classes can be registered in a single application BUT a separate filing fee is required for each class

  • The trademark will enjoy protection only when it is used in conjunction with the goods and services specifically listed in the application.

What Happens After Filing
  • It typically takes a few months for a trademark to be approved after the application has been submitted.  It could take longer if the application was incomplete of if other issues arise during the approval process.  Once the application has been approved the effectiveness of the trademark's protection will date back to the date that the application was first filed.

  • CLICK HERE for an information page describing what happens after a trademark application is filed.

Corporate Name vs Fictitious Name vs Trademark
  • Corporate Name: A company's official legal name as shown on the articles of incorporation. Such names are used to open bank accounts, obtain credit cards, to pursue or defend a claim in courts.

  • Fictitious Name: A name used by a business other than the legal corporate name. It is a misdemeanor in Florida to do business under a fictitious name unless that name has first been registered with the State.

  • Relation to Trademark:

    • Incorporating a company or registering a fictitious name does NOT create trademark rights that would allow you to stop someone who holds a trademark using that name as part of their branding.

    • Likewise, unless your corporate or fictitious name is also a registered trademark it's possible someone holding a trademark could theoretically stop you from using it as part of your branding.  In other words, its your legal name and you can use it as you please but if someone has previously registered it as a trademark they could theoretically stop you from using it as branding in conjunction with the sale of your goods or services.

    • You can obtain a trademark for a corporate or fictitious name but only if it meets all of the requirements (e.g. the mark must be "used in commerce", it cannot be "merely descriptive" or "generic" etc)