Frequently Asked Questions about
TRADEMARKS

What is a trademark?Hallmark logo

A trademark is something used by a manufacturer or merchant to identify the source of goods or services in commerce. Trademarks originally derived from the "hallmarks" which the Guild Halls of early metalsmiths stamped into their work to indicate who had made them, and attest to the purity of the metal. Today, nearly anything that can distinguish your goods or services from your competitors' can be considered a trademark. ("Hallmark" itself is a trademark for greeting cards made by Hallmark Cards, although in that mark  "Hall" had nothing to do with Guild Halls - "Hall" was the name of the founder of the company).

Strictly speaking, a trademark used in connection with services is called a "Service Mark", and there are also special-purpose marks called "Collective Marks" (such as "IGA" for members of the Independent Grocers Alliance) and "Certification Marks" (the "Good Housekeeping Seal of Approval" or the Underwriters Labs mark). They all work in more or less the same way, so for the purposes of this discussion, we'll just call all such marks "trademarks". You can find more detailed discussions of these special marks below. 

Hallmark logo is a registered trademark of Hallmark Cards, Incorporated - IGA logo is a registered trademark of IGA, Inc.

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What kinds of things can be a trademark?

Pretty much anything which can serve to distinguish your product or service from another's:

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How do I choose a trademark?

There are lots of factors involved in choosing a trademark. Most important, pick a distinctive trademark which will set a tone for your product or service, set it apart from others, and make customers want to buy it. The mark needn't be descriptive - in fact, it's better if it isn't. Trademark professionals call this the "strength" of a mark - you want a mark which is as strong as you can make it.

There is a spectrum of types of marks, ranging from very strong to very weak:

Very Strong

Coined

Xerox

Strong

Arbitrary

Apple

Less Strong

Suggestive

Rent-a-Wreck

Weak

Descriptive

Very Best

Not a mark

Generic

escalator

You will want to review our "Trademark Do's and Don'ts" page for more details.

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How can I tell if I can use a mark?

Before you begin to use a mark, choose it carefully and be sure you're not infringing on someone else's mark. With today's computerized databases, a trademark search is relatively inexpensive and fast, and cheap insurance against having to change your mark or defend a lawsuit later. We recommend that you start by doing a preliminary search yourself, and then, when you've settled on a mark you think is OK, have us do a professional search. See our Trademark Budget Estimator for details.

The test of a mark is "likelihood of confusion" - that is, "is the proposed mark so close to an existing mark that it is likely to confuse the intended consumer as to the source of the goods?" If there is any question, play it safe and try another mark (or consider contacting the prior user and getting his OK, if you really want to use a mark which might be a problem).

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I've formed my corporation, and the state corporation bureau approved the name. 
Does this mean I can use the name as a trademark? 

No. You may have registered your corporation (or LLC, LLP, etc.) with your state's corporation bureau (Secretary of State, in NY), but that does not mean that you are clear to use the name as a trademark. The state has only reviewed your proposed company name to make sure that it is not identical with any other company name in the state. They just want to be sure there is some small difference which would allow them to distinguish your name from others for purposes of billing you for your corporate tax, or allowing someone who wants to sue you to serve papers on the proper company. For example, New York has a "Premier Alliance Corp." in Great Neck, Long Island, and also "Premier Alliance Consultants, LLC" in Brooklyn. From the trademark point of view, there is clearly a likelihood of confusion between these names, but for corporation purposes, they're just fine. 

Also, most states will search corporate names only within their own state and won't search Federal trademark registrations at all, so there could well be a "Premier Alliance Corp." in each of the other 49 states, and a company in Nampa, Idaho has a Federal registration for the mark "Premier Alliance" for financial planning services.  

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Now that I've chosen a mark, how do I trademark my product name?

You don't - the word "trademark" is a noun, not a verb. That is, it's something you have, not something you do. You create your trademark rights as soon as you begin using the mark in commerce, as long as you are using it correctly, and they continue for as long as you continue to use the mark in commerce. The longer you use your mark, and the more widely you use it, the stronger your trademark rights become.

Your trademark will give you the ability to stop others from using similar marks in the same market and on similar goods or services, if they adopted the mark after you did and with notice of your use.

In order to keep your rights, though, you must protect them. If you allow others to adopt the same marks and use them themselves, your mark will be made weaker ("diluted").

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How do I protect my trademark?

Brown & Michaels LogoLet the world know your mark is your mark - if someone does not realize that you are claiming trademark rights in a mark, they may be able to adopt it innocently and keep on using it even after you discover their use.

By the way, our owl logo and tag line "Our knowledge protects yours" 
are registered trademarks of Brown & Michaels, PC

One way to ensure that everyone knows about your mark is to register it. That's called "constructive notice", and means that once you're registered no one can claim that they didn't know you were using the mark if they began using it after your registration. You may apply to register the mark with the Patent and Trademark office as soon as you have begun to use the mark in interstate commerce or foreign, or if you have the intention to do so. (See "Why should I register my mark?", below, for the benefits of registration.)

Whether or not the mark is registered, you should be sure to give proper notice that you intend to reserve your trademark rights. You do this by placing a "tm" or "®" (the r-in-a-circle mark) next to the trademark when you use it in connection with the goods. Don't use r-in-a-circle "®" unless the trademark is registered with the U.S. Patent and Trademark Office.

Once you've established your rights to use your trademark, you must be sure to enforce it. That is, if you become aware that someone else is using your mark you must inform them of your rights and demand that they stop. Otherwise, they may wind up acquiring rights to the mark, too, which might in time come to supersede yours. Coca-cola has "truth squads" who travel around the country ordering "coke" at restaurants, and serving warnings on those who serve them Pepsi!

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Why should I register my mark?

Registration gives you these advantages:

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If I register my mark in color or in a specific type font, 
can someone else register or use the mark in a different color or font? 

The standard for both infringement and registration is "likelihood of confusion". So, if you register the logo in black and white, without claim to color, no one can register or use a confusingly similar logo in any color (or no color) without infringing (and the PTO will not register such a mark).

Mobil LogoIt's not quite so clear if you DO claim color, since such a claim means that you consider the colors to be an essential part of the mark. For an example of where color matters, think of the Mobil sign, where the "o" is red and the "M-bil" is blue. They registered both as a word mark and in color, because they want to preclude others from using "Mebil" (word mark) and also "Force" with the "o" in red and the "F-rce" in blue.

For logos (design marks), the answer would depend on the logo, really - if your logo was a simple cross, and you register it in sky blue with a claim to the color, you wouldn't have much of a claim against other crosses in other colors (like, for instance, the Red Cross). There are just too many similar logos for you to claim any exclusivity. On the other hand, if your logo were really unique (Mobil's Pegasus flying horse, say) and you register it with a claim to a color, the protection would probably extend to the same unique logo (and maybe other flying horses) in other colors.

Bottom line - unless the color is essential, don't claim it. 

As to type fonts ("stylized marks"), the same standard applies.  Think of the striped "IBM" logo for example - IBM wants to protect the look of the mark (i.e. NEC should not use NEC in a similar striped fashion, even if the word NEC is not confusingly similar to the word IBM). On the other hand, they also want to protect "IBM" as a word. Many companies which have stylized marks also register as word marks ("standard characters"), to cover both situations.

IBM logo is a trademark of International Business Machines Corporation. 

"Mobil" and the flying horse logo are trademarks of Exxon-Mobil Corporation. For an interesting history of these marks (and the Exxon tiger, too) see the Exxon-Mobil website 

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If I register my mark in one class, can someone else register the mark in another class? 

The class is really just for the convenience of the USPTO. "Likelihood of Confusion" depends on the goods/services covered by the mark more than the class number. If you register for fan belts for farm machines in class 007, that probably would be confused with the same mark for fan belts for land vehicles in class 012 (but probably not with belts for blue jeans in class 025). On the other hand, all scientific and technical goods are in class 009, so you could easily have the same mark registered to different people for floppy disks and x-ray machines, which both fall in that class.

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How long is my trademark valid?

Your rights in a trademark continue as long as you use the mark.

Federal registrations are valid for ten years, but they may be renewed over and over, so long as you are still using the mark in interstate commerce. The oldest continuously registered mark dates back to the 1870's. While your attorney may be able to remind you to file renewals, you should be sure to keep track of the renewal dates yourself, too, so that you will not have your registration lapse for failure to file the appropriate forms.

Note that during the first ten-year term (only) you'll need to file a "section 8 affidavit" during the fifth year of registration, indicating that you're still using the mark, to keep the registration alive. You'll also need to file a "section 8 affidavit" with each renewal application over the life of the registration. As with renewals, be sure to keep track of the dates these forms are due, and be sure they are filed on time, or your registration will lapse.

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What does registration cost?

The cost of registration depends on the type(s) of goods or services on which you are using the mark, and whether or not the Patent and Trademark Office has any problems with the application. You should expect to spend $1000 or more to register a single mark in a single class of goods or services.

For each additional class of goods or services, there's an additional fee to the Trademark Office. For example, if you're using the mark on t-shirts (class 25) and mugs (class 21), or perhaps for custom printing services for t-shirts (class 42), each class of goods requires a separate filing fee. The same is true when you renew the registration, etc.

We have a detailed trademark costs estimator on this website.

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What information do I need to provide for an application to register a trademark?

For us to prepare an application for you, you will need to provide the following:

Information on the Mark

Information on the Mark Owner

Information on the Use of the Mark

  • The USPTO requires a very detailed list of goods in applications - not just "clothing", but "t-shirts, skirts, socks, men's jackets and dirndls". If you're filing an "intent to use" application, you can list any item on which you intend to use the mark - but if you are filing based on actual use in commerce, you must make sure that you have used the mark on every item on the list. Many applications and registrations have been declared invalid for fraud because the owner was not selling some of the items on a long list of goods.
  • You can find a searchable list of acceptable descriptions on the USPTO website. Any description you find on that list will be accepted by the Trademark Examiner - but remember that the most important thing is to describe your goods or services accurately, not to find wording the Examiner will automatically accept. If what you're selling or doing does not appear to be listed, come up with your own accurate description rather than pick something close, but wrong. 
  • Also, if you provide services, you need to describe them as services. That is, suppose your business is embroidering custom t-shirts for others, who then sell the t-shirts under their own brands or in their own stores. In such a case, the consumer of your services is the company who hires you to do the embroidery, not the person who wears the shirt, and your description should be "embroidery of t-shirts" in services class 040, not "t-shirts" in goods class 025 (clothing).  Of course, if you sell the t-shirts directly to consumers through a catalog or on-line, then a two-class registration in both classes might be appropriate. 
  • Services must be provided for others - if you do your own advertising for your own business, that does not constitute providing advertising services. Similarly, if you make up mugs with the name and logo of your car dealership to use in the waiting room, that's just incidental to your business of selling cars - it does not mean you can register your mark for mugs in class 021.  

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What are some trademarks you've registered?

We have a web page showing a sample of some of the trademarks and service marks we've registered for clients. 

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What about those special types of trademarks you mentioned?

FTD Logo

ARRL Logo

Woolmark Logo

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Does my US registration protect my trademark internationally?

 A US trademark registration does not have any direct effect in other countries. However, under the provisions of various treaties a US registration (or even an application to register) may be used as the basis for filing applications to register your mark in other countries. The variations from country to country are too complex to detail here. If you are interested in pursuing trademark registrations in other countries, contact Brown and Michaels for details.  

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What is the "Madrid Protocol"?

The "Madrid Protocol" is a system coordinated by the World Intellectual Property Organization (WIPO) whereby a trademark owner can protect a mark in many different countries by filing one application, based on a national application to register the mark in the owner's country. The application is filed in one receiving office in one language, without the need to separately file in each country. The application fees depend on which countries are selected and, since they are stated in Swiss Francs, will change with the exchange rate.  

The Madrid Protocol was established in 1996, but initially  this system was not available to US nationals. The US signed the Protocol in 2002, and effective November 2, 2003, it became possible to file Madrid Protocol applications through the USPTO. 

More information on the Madrid Protocol is available on another page on this website. 

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I just received a mailing from the US Trademark Registry asking for money... what do I have to do?

Absolutely nothing.

There has been a plague of companies lately sending out what look like "notices" or "invoices" regarding pending trademark applications. These companies all have names which sound like government agencies - "US Trademark Registry" or "United States Trademark Registration Office" or "Register of International Patents and Trademarks" or "something like that, and they usually have official-looking graphics (sometimes actual copies of government agency seals). They usually offer to list your trademark in some registry or catalog or database, or to file it with Customs and Border Protection, or to set up a monitoring service with a fee marked "NOW DUE". They are supposed to warn that the "notice" is really an invoice offering you a service you don't need, but if they do that at all it's usually buried deep in low-contrast small-type boilerplate. These services are skirting the edge of fraud - and sometimes are well over the line. The latest is a "USTM" (ustm.us.com) which sends notices saying (incorrectly) that the registration was canceled, and someone else has tried to register it (untrue).

There is only one US government agency which deals with trademarks - The United States Patent and Trademark Office (USPTO). If you used an attorney to file an application to register a trademark, the USPTO will never communicate directly with you. If you filed your own application, you will receive communications from the USPTO, but only by e-mail from an address at the uspto.gov domain or by postal mail if you did not file with an e-mail address for correspondence. Under no circumstances will they request any fees for listing your trademark in any database or catalog. 

Here's what the USPTO has to say about these services:

WARNING: Non-USPTO Solicitations That May Resemble Official USPTO Communications

Be aware that private companies not associated with the United States Patent and Trademark Office (USPTO) often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations.  Trademark applicants and registrants continue to submit a significant number of inquiries and complaints to the USPTO about such solicitations, which may include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry. 

These companies may use names that resemble the USPTO name, including, for example, the terms "United States" or “U.S.”  Increasingly, some of the more unscrupulous companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records.  Many refer to other government agencies and sections of the U.S. Code.  Most require “fees” to be paid.  

Some applicants and registrants have reported paying fees to these private companies, mistakenly thinking that they were paying required fees to the USPTO.  So, be sure to read trademark-related communications carefully before making a decision about whether to respond.  All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.”

If you receive a trademark-related solicitation that you believe is deceptive, you may file an on-line consumer complaint with the Federal Trade Commission (“FTC”), at www.FTC.gov.  Although the FTC does not resolve individual consumer complaints, it may institute, as the nation’s consumer protection agency, investigations and prosecutions based on widespread complaints about particular companies or business practices.  If you wish to contact the USPTO regarding such solicitations, please e-mail TMFeedback@uspto.gov.  When notifying us about or forwarding a misleading communication, please also specify whether the recipient thought it was an official USPTO communication and whether fees were mistakenly paid. 

The following are examples of just some of the non-USPTO solicitations about which we have received complaints within the past several months.  None of these are official U.S. government or international governmental notices.  Please click on the name below if you wish to see an image of that entity’s solicitation.

https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices

You can add "Register of Protected Trademarks" to that list. 

If you get any mailing you do not understand from any official-sounding "agency" other than the USPTO, do not send any money to them! If it's offering a listing in a catalog or database or "registry" for a fee, discard it. Contact the attorney who is handling the trademark for you and ask about the notice, if you are unsure what it is.  

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How can I take advantage of "TEAS Plus" filing fees? 

The standard USPTO electronic filing fee for applications filed through the Trademark Electronic Application System (TEAS), presently $350 per class of goods/services, is discounted $100 per class (TEAS PlusReduced Fee) if the application meets certain requirements.  

To qualify for the TEAS Plus Discount

The following kinds of applications cannot use the TEAS Plus system:

We receive many requests to file applications to register marks for many different kinds of goods. TEAS Plus is most suitable for applications with only a few items on the list of goods, chosen from the USPTO's list of goods/services. If your application has more than four or five items in the list of goods, it takes much longer to search and select the goods from the USPTO's list than it does to simply type the descriptions. In that case, the small savings in USPTO fee becomes outweighed by the increase in cost for our time to use TEAS Plus.

It is also very important to realize that the most accurate description of goods/services available on the "acceptable descriptions" list is often not truly accurate, and accordingly should not necessarily be selected in order to save $100. That initial savings could cost a whole lot more money in the long term. The trademark examiner will accept the description entered, but the specimen of use must show the actual goods or services sold, and if those goods or services are something other than what the goods/services description coveres, the Examining Attorney will reject your application. Because you are not permitted to change the goods or services to change the scope of the application, you would find yourself without the ability to overcome the rejection. Your only recourse would be to file a completely new application. 

Also, remember that it is easy to check off items from the list of goods, and they will be accepted - BUT if you choose something from the list of acceptable descriptions because it is so very easy to check, you must actually be selling those goods or services under the mark. If you are not actually selling those goods or services (or don't have a bona fide intent to sell them, in the case of an Intent-to-Use application), any registration resulting from the application could be invalidated by an infringer on the grounds of "fraud on the trademark office". Top

You're not done yet! You should also look at our Trademark Do's and Don'ts web page.

Back to Trademarks Page

IP Overview

Last updated: Wed, 30 Oct 2024