Basic Facts About Trademarks

Basic Facts About Trademarks
What are trademarks?
	Trademarks can consist of a word, symbol, device, name, sound, color, or any combination.
	Slogans can also be trademarks.
What are the different types of marks?
	Trademarks identify the source and origin of goods in the marketplace.
	Service Marks identify the source and origin of services in the marketplace. These are the same as trademarks except they distinguish the source of a service, rather than a product
	Collective Marks identify members in a cooperative, association or collective group or organization.
	Certification Marks identify and certify that the good or service originates from a particular location, material of manufacture, labor performed by a union or similar organization, or particular characteristics. Note that the owner of a Certification Mark can not use the mark.
	For convenience, these all be referred to as trademarks, except when it is necessary to differentiate between them.
How are trademarks, copyrights and patents different?
	Trademarks protect the symbols (names) by which goods and services are efficiently sold in the marketplace.
	Copyrights protect the expression of ideas in artistic and literary works. Copyrights do not protect the underlying idea.
	Patents protect new, useful and non-obvious inventions.
Are all trademarks created equal?
	No. Over the years, in the United States and in other countries, they have established a continuum, or sliding scale, in evaluating the relative strength of trademarks. As you go down the list, the mark becomes increasingly stronger.
	Generic - These are the common names used to describe a product or service. For example: Asprin, Escalator, Cellophane, Pilates. Unlike the other four categories listed below, these are not trademarks since it is determined that competitors can not be prevented from aptly describing their goods or services. Descriptive - These are common words that are used to describe products or services, and over time can become trademarks. That is to say that through use and education, the public understands the word (or words) to identify a particular product or service. For example: Weight Watchers. Suggestive - These are common words used in a manner that through thought and observation tell the person something about the nature or quality of the product or service. The vast majority of trademarks fall into this category Arbitrary - These are common words used and applied to goods or services having no relationship to the product or service. For example, Apple for computers. Fanciful - These are made up words or symbols. For example: EXXON for oil.
Do I need to register my trademark?
	No. However, by registering your trademark, additional rights in your mark exist, plus you place people and competitors on notice of your claim of rights. In the United States, trademark rights come into existence by the earliest of: 1) use of the mark; 2) filing an intent to use application; or 3) filing an application on the basis of an earlier foreign (home country) application. In many countries around the world, the first person to file a trademark application has priority of right.
	It is important to remember that a trademark in one country is not a trademark in another. To be protected, your mark must be registered in each country of interest.
What do "™", "SM" and ® mean?
	"™" and "SM" are used next to a mark to indicate that you are claiming trademark rights. It does not mean that an application has been filed, or that the mark is capable of registration.
	® Indicates that the mark is registered. Some foreign countries have similar designations. You can not use the registration symbol until the mark is registered!
What is meant by "goods/services" classification?
	The United States, along with most countries have agreed to WIPO (World Intellectual Property Organization) convention and the Madrid Agreement on classification of goods and services. There are now 45 classes, with the first 34 for goods, and the remaining covering services. The United States Patent and Trademark Office, like most country trademark offices, use the classification system to determine what are the appropriate fees to be paid for an application. The intention of the classification system is to assist people in looking for products and services that are similarly classified.
	Click here to learn more information about the specific goods and service classes
What is an International Trademark?
	The Madrid Agreement Concerning the International Registration of Marks provides for an international registration system for trademarks. It is available to citizens and companies of countries that are members of the Protocol. On November 2, 2002, Congress passed public Law 107-273. Click here for the relevant provisions.There are a number of conditions that must be satisfied for the Trademark Office to implement the legislation. It is anticipated that we will have a clearer idea in the summer of 2003 as to when the United States trademark owners will be able to take advantage of the Madrid Protocol. Companies that have bona fide business establishments in member countries may, under certain circumstances, take advantage of this international treaty at this time. Click here for general information about the Madrid Protocol.
What is a Basis for Filing a Trademark?
	A trademark can be filed in the United States on the basis of: use in interstate commerce; bona fide intention to use a trademark in interstate commerce; a foreign application provided that the US application is filed within six months of the filing date of the foreign application; a foreign registration or any combination. We do not charge extra to file on multiple basis, and the basis of an application can be changed during the prosecution of the application. Please note that if an application is filed on the basis of a foreign application, that application must issue into a registration in the home country of origin in order to be accepted as a basis in the United States for publication.
Life Cycle of a Trademark
	The well known firm in the United States for trademark searching, Thomson-Thomson has artfully explained the Life Cycle of a Trademark in order to provide a basic framework. We recommend Thomson-Thomson for trademark searching.
	STAGE 1 -- CREATION	Here is where you initially brainstrom to come up with possible product or service names.
	STAGE 2 -- SCREENING	This is where you conduct a preliminary search to eliminate those marks that are confusingly similar to marks already taken.
	STAGE 3 -- CLEARANCE	You then conduct an extensive search of the federal register, state registers, common law usages, and the like to see what other marks may be confusingly similar to your proposed mark.
	STAGE 4 -- INVESTIGATION	After you receive a search report, it is then necessary to investigate the marks that may be problematic. Often you will find that the mark is not in use by a third party, or their actual use is in an entirely different industry, and other factors.
	STAGE 5 -- OPINION	You can obtain an opinion of counsel as to the viabilty for both registration and use of your proposed mark.
	STAGE 6 -- FILING AND REGISTRATION	File applications in each of the relevant countries, and process them through to registration.
	STAGE 7 -- PROTECTION	It is important that once you have obtained your trademark, to protect it. You must keep a vigilant eye on potential competitors in order to avoid the possibility of a third party adopting or using a mark that is confusingly similar to yours.
	STAGE 8 -- MAINTENANCE	In all countries it is necessary to maintain your trademark. It is much like having to pay real estate taxes, except here, the government does not tell you when you have to do something. Therefore it is important to keep track of these maintenance dates, or hire counsel to do it for you. We have very sophisticated computer systems to keep track of these dates for our clients, and endeavor to provide this information to our clients on a timely basis.
	STAGE 9 -- COMMERCIAL EXPLOITATION	As your mark becomes better recognized, it is often possible to commercially exploit it in unrelated fields. This can also lead to rewarding revenue opportunities for having invested in your mark.

	For more information specifically about United States or Foreign trademarks, please click the link.
	To start the filing process for either United States or Foreign trademarks, please click the link.

	Additional Information About Trademarks