FAQs
Trademarks
Although it is common to use the term “trademark” interchangeably, there is a difference. Trademarks are products. Service Marks are services.
The trademark symbol is TM for pending USPTO applications and registered State marks. Similarly, the service mark symbol is SM for pending USPTO applications and registered State marks.
When a mark actually becomes registered by the USPTO, after 10-12 months of filing, then the ® circle-R symbol is used for both trademarks and Service Marks.
The TM and SM symbols may be used for products and services intending to pursue registration at the State or Federal level. Use of the TM and SM symbols shows others that you claim protection to your name.
Without actual or pending registration, Common Law first use rights are the same as if the TM or SM symbols are not used. Trade name rights do not change if symbols are mixed up. If a mark is Federally registered ®, it is registered ®.
All goods or services are categorized within International classes. Goods run from classes IC 1-34, while Services are in IC 35-45. Please see chart below. There is also a handy tool at the United States Patent and Trademark Office to help identify classes.
Trade name research is routinely broad in defining exact and related goods and services classes. Conflicts will come from the same class, but similarities may differ quite a bit, extending goods into service classes and services into goods classes.
For example, a beauty salon not only has other beauty salons to be concerned with, but also cosmetic products, shampoos and perfumes as well as personal services related to beauty salons. Additionally, famous names extend into all classes.
Our experienced trademark services team will encompass all variations and classes into their search to find similarities. Similar names in sound, appearance and meaning are much more likely to affect your legal usage of a name than exact conflicts within the same class.
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.
Industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminates candles, wicks.
Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants,preparations for destroying vermin,fungicides, herbicides.
Common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal not included in other classes, ores.
Machines and machine tools, motors and engines (except for land vehicles), machine coupling and transmission components (except for land vehicles), agricultural implements, incubators for eggs.
Hand tools and implements (hand operated), cutlery, side arms, razors.
Scientific, nautical, surveying, electric, photographic, cinematographer, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus.
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopedic articles, suture materials.
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Vehicles, apparatus for locomotion by land, air or water.
Firearms, ammunition and projectiles; explosives; fireworks.
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, jewelry, precious stones, horological and chronometric instruments.
Musical instruments.
Paper, cardboard and goods made from these materials, not included in other classes, printed matter, book binding material, photographs, stationery, adhesives for stationery or household purposes, artists materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic material for packaging (not included in other classes), playing cards, printers type, printing blocks.
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metal.
Leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and traveling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery.
Building materials (non-metallic), non-metallic rigid pipes for building, asphalt, pitch and bitumen, non-metallic transportable buildings, monuments, not of metal.
Furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Household or kitchen utensils and containers (not of precious metal or coated therewith), combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass (except glass used in building), glass-ware, porcelain and earthenware not included in other classes.
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes), padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials.
Yarns and threads, for textile use.
Textiles and textile goods, not included in other classes, bed and table covers.
Clothing, footwear, headgear.
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile).
Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables, jellies, jams, fruit sauces, eggs, milk and milk products; edible oils and fats.
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice.
Agricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt.
Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups, and other preparations for making beverages.
Alcoholic beverages (except beers).
Tobacco, smokers’ articles; matches.
Advertising, business management, business administration, office functions.
Insurance, financial affairs, monetary affairs, real estate affairs.
Building construction, repair, installation services.
Telecommunications.
Transport, packaging, and storage of goods, travel arrangement.
Treatment of materials.
Education, providing of training, entertainment, sporting and cultural activities.
Scientific and technological services and research and design relating thereto industrial analysis and research services, design and development of computer hardware and software legal services.
Services for providing food and drink, temporary accommodation.
Medical services, veterinary services, hygienic and beauty care for human beings or animals, agriculture, horticulture and forestry services.
Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
The United States Patent and Trademark Office, abbreviated USPTO, is taking a stand against the fraudulent activity of trademark scams. USPTO is taking on scammers misleading business owners and others to believe they offer trademark services, costing those wishing to get a trademark hundreds and even thousands of dollars for totally bogus services.
Learn more about what the USPTO is doing and how to avoid these scammers here.
Research
Preliminary
Are low priced preliminary trade name searches worth the savings?
No, we think preliminary searches are a waste of time and money for these reasons :
- Comprehensive IP searches always cost more than preliminary searches because of the depth and breadth of the over 400 databases that must be searched, at a cost of $1 to $5 per minute wholesale.
- Preliminary searches are just that – a cursory look as to whether a trade name is used or not. This type of search is never offered with analysis, because of the low price.
- So, if you order a comprehensive IP search you should have a trademark attorney analyze it. If clear, you still need a comprehensive IP search because most names are affected by similarities in sound, appearance and meaning which do not appear until you conduct a comprehensive IP search. TradeMark Express® offers its comprehensive IP research and trademark services in a step-by-step approach, with free analysis and free attorneys — to save its clients the most time and money while offering an extremely high level of service.
The Internet is a good place to start but it is not close to being comprehensive. Some research may be done on existing Federal trademarks and common law use. There are no State trademark databases to search upon. We recommend a free TradeMark Express® consultation after you do your own research. We want to make sure that you do not over react to a trade name that does not affect you, or under react to a trade name that does.
Company Names
Corporate research in only one State will unlikely find any legal trade name problems. In this way, it is like a county fictitious name search – extremely limited in that it will cover only other corporations and not any sole proprietorships or partnerships, plus it misses all the other trade name uses from outside the State you are incorporating in, maybe even from your own State!
Not by any means. Incorporating is simply the type of entity a business can be; there are also sole proprietorships, partnerships, trusts and limited liability filings.
Being incorporated offers you no more – or no less rights to your name than any other entity type. There is still the question of any other entity having first use common law or State or Federal trademark rights – prior to your incorporation.
Using a name in intrastate or interstate commerce does gain an entity common law rights within their specific geographic trade area (only if there is no prior ownership and/or usage) but does not gain nationwide common law or trademark protection.
ALWAYS do your trademark and common law searches BEFORE incorporation! It is a waste of time, effort, and money to have to redo your corporation papers under a new legally clear name.
A fictitious name, also known as a “doing business as” or “dba” name, allows you to conduct business under a name of your choice, which doesn’t include your surname or implies that you own the business. The state requires that you file a fictitious business name to publicly establish who owns the business and is, as a result, conducting business under that name. Filing a fictitious business name doesn’t mean that you own the rights to the name and doesn’t prevent anyone else from using the name. Filing for a fictitious name allows you to:
- Easily register your business to open a bank account
- Can help protect your business legally even if it does not have your legal name
- Can allow you as a corporation or limited liability company to operate multiple businesses under different names without having to form a separate business for each
Fictitious name research is typically conducted only in your local county. Only LEXIS-NEXIS offers a compiled searchable database of over 3300 counties in the United States to search on. This accounts for 3300 of the total 6500 databases TradeMark Express® uses to search its clients’ trade names. Searching your own single county is fruitless because goods and services are not listed, thus you can’t compare trade names. Also, having your application accepted by your County means absolutely nothing because it is always subject to legal availability, that you are expected, but not required, to search before applying.
Domain Names
Searching for trademark availability is NOT the same as searching to register a domain name address. A dot com address search, for example, will focus on exact spellings, with no consideration given to similar names or use with related products and services.
Mistakenly, many times a new company will assume its trade name is legally clear merely because it was able to purchase a dot com or other domain extended name.
If a domain is later discovered to be taken after you have obtained a trademark, then you may open an arbitration hearing with ICANN to seize the new domain name. Trademark law is based upon conflicts and similarities, thus any infringing domain name may be acquired.
Should dot com, dot net or dot edu, or any other domain name extension be included with the name for Federal trademark registration?
The extension adds nothing to your name. The USPTO will only register the trade name; if the extension is submitted, the applicant will have to disclaim exclusive rights to it. TradeMark Express® recommends registering just the name minus the extension, because you gain flexibility in using it with or without the extension.
No, prior trademarks and common law usage, even close similarities have substantive rights over a new domain name. Network Solutions is the organization responsible for registering Internet domain names and do have a domain name dispute policy.
- Network Solutions is shifting the burden of researching possible trademark infringement to the domain name registrant.
- ICANN will arbiter or resolve disputes. They will take steps toward resolution, and have outlined a procedure complainants must follow.
- Prove the complainant owned the trademark prior to creation of domain name.
- Prove the complainant notified the registrant of possible infringement.
- The trademark must match exactly or be very close to the domain name, (not counting the extensions like dot com or dot edu).
- If the domain registrant cannot prove prior trademark registration to that of the complainants, he/she must relinquish the name, choose a new name or file a lawsuit.
- If the domain registrant does not file a lawsuit, the name will be suspended and no one can use it until proof of resolution has been submitted to ICANN.
- If the complainant files a lawsuit without going through the procedures above, the status of the domain name will not change. So if it is active, it remains active. If it’s on hold, it stays on hold (an incentive to use the procedures outlined above).
All registrars in the dot com, dot net, and dot org top-level domains follow the Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”). Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name.
Disputes alleged to arise from abusive registrations of domain names (for example, cyber squatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.
To invoke the policy, a trademark owner should either:
- file a complaint in a court of proper jurisdiction against the domain-name holder (or where appropriate an in-rem action concerning the domain name) or
in cases of abusive registration submit a complaint to an approved dispute-resolution service provider.
USPTO
Research
We recommend researching the name with the USPTO because you may find another mark that affects you.
However, nothing is worse than giving up on a trade name that is actually clear, except going ahead on a trade name that is actually blocked, because you didn’t do a deep enough search! We offer free consultations. Please call us to discuss any apparent hits you may find!
However, under no circumstance, whatsoever should you assume a basic 2 minute USPTO TESS search be considered legally comprehensive. It is merely an indicator; the research is not cross-referenced for similarities in sound, appearance and meaning. You have a LOT more research to do to KNOW you are LEGALLY CLEAR. A TESS search is really just a 1% search of all you need. You need an in depth search of the rest of the 2 million Federal trademarks, 1 million State trademarks and 13 million Common Law, (non-trademarks, but first use right holders), uses too!
THE USPTO SAYS TO DO A COMPREHENSIVE IP SEARCH!
THIS COPY IS DIRECTLY FROM THE USPTO – learn more here:
“A private trademark attorney can help you before, during, and after the trademark application process, including policing and enforcing any trademark registration that may issue. While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive IP search of federal registrations, state registrations, and “common law” unregistered trademarks before you file your application. Comprehensive IP searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. Therefore, those trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database but could still ultimately prevent your use of your mark. In addition, trademark lawyers can help you during the application process with several things that could seriously impact your trademark rights, such as determining the best way to describe your goods and services and preparing responses to refusals to register that an examining attorney may issue. Finally, a private attorney can also assist in the policing and enforcement of your trademark rights. The USPTO only registers trademarks. You as the trademark owner are responsible for any enforcement.”
The USPTO only encompasses 2 million of the possible 16 million trade names that exist.
The USPTO website does not contain any State trademark records or common law records, which are essential to comprehensive IP research. Checking only the USPTO means that you have missed 88% of information that may affect your legal use of your name!
Comprehensive IP research checks billions of records for similarities in sound, appearance, and meaning. There is no way all this information can be found on the Internet, at law libraries, etc. Some time spent researching a proposed trade name by yourself is wise, but nothing supplants a comprehensive IP search. In the end, you will still need to conclude your research with a comprehensive IP search!
TradeMark Express® research specialists are trained to search hundreds of trademark, business, and periodic databases, including literally 10’s of billions of records to find a possible conflict or similarity. Similarities may cause infringement as well as conflicts. Any research short of a comprehensive IP search is a waste of your time and money.
Yes, after 3.5 months, the USPTO will search your trade name or logo design, on its own federal trademark database.
The USPTO does not conduct a State trademark or common law search for you. So, if you don’t do your legal research before filing, and ideally before actual use, then you may be blocked when the USPTO does its own search – or, worse yet, you may achieve a federal trademark but be unable to use it when the blocking entity finds you.
Your trademark will be worthless if someone has prior first use common law rights or State trademark rights.
Refusals
The USPTO may refuse to register your mark on numerous grounds.
Please call us to discuss your situation. The most common grounds for refusal are:
The USPTO conducts a search for conflicting marks as part of the official examination of an application after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict or similarity between the mark in the application and a mark that is either registered or pending in the USPTO.
The principal factors considered in reaching a decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, marks do not have to be identical or the goods and services the same. It is sufficient if the marks are similar and the goods and or services are related. The similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.
When a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict.
The applicant’s mark will be refused on the ground of likelihood of confusion if the earlier-filed application becomes registered.
The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. A mark will be refused as deceptively misdescriptive if:
- the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services; and
- the misrepresentation conveyed by the mark is plausible.
The examining attorney will refuse registration of a mark as primarily geographically descriptive if:
- the primary significance of the mark is geographic;
- purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and
- the mark identifies the geographic origin of the goods or services.
A mark will be refused as primarily geographically deceptively misdescriptive if:
- the primary significance of the mark is geographic;
- purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and
- the goods or services do not originate in the place identified in the mark.
The examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a surname.
In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the “dress” of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant’s goods from those of others.
Specimens of Use
A Specimen of Use is a sample of how the mark is used in commerce. In-Use Trademark applications require a Specimen of Use to be included with the trademark application.
- Tags or labels used on your product
- A picture of your product displaying the mark prominently
- An advertisement displaying the mark and describing your product
- Container for your product displaying the mark
- Displays associated with your product that display the mark
- The actual product (if not too large or bulky)
- A copy of a web site page that displays the mark prominently
Not including: stationery, business cards, invoices, letterhead, brochures, order forms, bills, receipts, catalogs, or press releases.
- Signs displaying the mark
- Brochures or advertisements displaying the mark and describing the services
- Menus displaying the mark
- Photographs showing the mark as it is used in the rendering or advertising of the services (i.e., the side of a delivery truck or a storefront)
- Business cards or stationery showing the mark in connection with the services
- A copy of a web site page that displays the mark prominently
Not including: blank letterhead or business cards that do not show the mark in connection with the rendering of the services.
- Send one specimen for each International Class you apply for
- If you are registering a logo and a name together, the mark in the specimen must match the mark displayed on the drawing page.
- In general, the specimen should be flat and not larger than 8.5 inches by 11 inches
- A small specimen such as a label or a tag may be attached to a sheet of paper labeled “specimen” (use a separate sheet for each international class)
Specimens of Use are not filed with Intent-to-Use (ITU) trademark applications. Only marks that are In-Use require a specimen of use. If you file an ITU, it will be necessary to file the Specimen of Use when filing the Allegation of Use.
Copyrights & Patents
Copyrights
Copyright protection is extended to “original works of authorship” that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable works include the following categories:
- literary works
- Musical works, including any accompanying words
- Dramatic works, including any accompanying music
- Pantomimes and choreographic works
- Pictorial, graphic, and sculptural works
- Motion pictures and other audiovisual works
- Sound recordings
- Architectural works
These categories should be viewed broadly. For example, computer programs and most “compilations” may be registered as “literary works,” maps and architectural plans may be registered as “pictorial, graphic, and sculptural works.”
Several categories of material are generally not eligible for federal copyright protection. These include among others :
- Works that have not been fixed in a tangible form of expression. For example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded.
- Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents.
- Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration.
- Works consisting entirely of information that is common property and containing no original authorship. For example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources.
For more information about copyrights, Go here.
- Mere ownership of a book, manuscript, painting, or any other copy or photo record does not give the possessor the copyright. The law provides that transfer of ownership of any material object that embodies a protected work does not of itself convey any rights in the copyright.
- Minors may claim copyright, but state laws may regulate the business dealings involving copyrights owned by minors. For information on relevant state laws, consult an attorney.
Copyright protection subsists from the time the work is created in fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright.
In the case of works made for hire, the employer and not the employee is considered to be the author. Section 101 of the copyright law defines a “work made for hire” as a work prepared by an employee within the scope of his or her employment.
A work specially ordered or commissioned for use as a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, and an atlas.
If the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. The authors of a joint work are co-owners of the copyright in the work unless there is an agreement to the contrary.
Copyright in each separate contribution to a periodical or other collective work is distinct from copyright in the collective work as a whole and vests initially with the author of the contribution.
Yes, only if they are part of a series. A single book title and its contents must be copyrighted. A trademark search still needs to be done, because the name may be trademarked.
No. Trade names, slogans, logo designs, etc that are used to identify a business can only be trademarked.
Patents
Again, the USPTO is a good place to start but cannot be relied upon as comprehensive.
TradeMark Express® recommends contacting an intellectual property attorney. Please contact one of our offices for the nearest referral.
Yes. In your own or neighboring communities you may inquire about organizations as chambers of commerce, and banks. Many communities have locally financed industrial development organizations which can help you locate manufacturers and individuals who might be interested in promoting your idea.
Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state.
If you do not know the names or addresses of your state organizations, you can obtain this information by writing to the governor of your state.
In addition, the Office of Independent Inventor Programs (OIIP) was established in March 1999 in order to meet the special needs of independent inventors.
OIIP establishes new mechanisms to better disseminate information about the patent and trademark processes and to foster regular communication between the USPTO and independent inventors.
No. The Office cannot act or advise anyone concerning the business transactions or arrangements that are involved in the development and marketing of an invention.
The USPTO, however, will publish, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. The fee for this is $25.
