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1. What is a trademark?
A trademark is a brand name which may be in the form of word, symbol, slogan, device, or a combination of these. This can also be in the form of smell, colour or design but has to be registrable and legally protectable. It is equally important for big businesses, entrepreneurs and start-ups.
2. What is a service mark?
A mark, word, phrase, symbol, design or a combination thereof may be used to distinguish the services of one person from that of another, is often referred to as a service-mark.
3. What all can be included in a trademark?
A mark must be properly depicted when the application for registration is made to the USPTO. It is uploaded in the form of a drawing which can be any of these:
§ Standard character drawing: It is the most-simple form of a trademark consisting of words, letters, or numbers only. The drawing in standard character form does not depict any particular font, color, design style, Roman or Arabic numerals etc.
§ Special form: A special form drawing is required to be uploaded in the application for registration when the trademark contains some design element or a design specification such as a particular color, font etc.
So, a trademark may include only letters, words or may even include images, characters, design and style elements. But whatever is included must be clearly depicted in the application for registration.
4. Can I trademark my name?
Yes, you can. But your name must be widely recognized in commerce and must not be in conflict with any other trademark. Authors, actors and other widely known personalities sometimes get their personal names trademarked so that no one else can use their name for marketing products or for earning any kind of profits.
5. Is it compulsory to register a trademark?
No, it is not mandatory. But it is advisable to obtain registration in order to protect your business interest and get priority in using that specific mark. Registration is an effective tool which empowers an owner to protect her mark and equips her with the capability to bring an action in the court of law in case of any infringement of the mark.
6. Which trademark symbol can I use, ®, TM, or SM?
· When a mark registered with the appropriate authority is used, the mark ® is used in connection with it.
· The mark “TM” is used to depict marks for which registration has not been obtained or is pending. This symbol is used with marks used for identifying goods. It is optional to use TM symbol but advisable.
· The marks used for identifying services use the symbol “SM” which stands for a service mark. The mark can be easily used when it has not obtained registration or the registration is pending.
7. How to obtain trademark registration?
The federal authority dealing with registration of trademarks in the USA is the USPTO. A trademark registration application is filed online through the TEAS (Trademark Electronic Application System) portal. The application includes details such as name and the entity type (individual, sole proprietor, corporation, partnership, LLC, or other) of the trademark owner, email address, depiction of the trademark, goods/services, relevant class, filing fee etc. After an application if filed with the required details, a filing date is assigned to it. The application is reviewed by the authority, as a result of which your proposed trademark may be provided registration.
8. How long is the process of trademark registration?
Once the application for registration is filed, a filing date is assigned to the applicant. The complete review of your application by the USPTO takes some time and one may expect to hear from them within 6 months or less of filing an application. If the proposed mark is found ineligible or not registrable, then the procedure may take few more months. Thus, it is advisable to always do thorough research and consult intellectual property attorneys before proceeding for registration.
9. Can I file a trademark application if I am currently not selling any products?
Yes, you are allowed to do so. Such applications specifically fall within the category of “Intent-To-Use” trademark applications. Section 1(b) of the Lanham Act, 15.U.S.C. § 1051(b) allows a person to request registration of trademark if he has a bona fide intention to use a trademark in commerce. When a Notice of Allowance is given by the authority in respect of such applications, the applicant is required to submit a Statement of Use of the proposed trademark. An extension may be requested for filing of such a Statement of Use.
10. Do I have to be a US citizen to apply for and obtain federal trademark registration?
No. There is no such requirement. As per the USPTO, you are required to either have a domicile in the United States or a U.S.-licensed attorney to represent you in all trademark matters at the USPTO.
11. Is it compulsory to prepare a trademark search and risk analysis report?
It is not compulsory but highly advisable. A search and analysis of the proposed trademark is primarily conducted to know whether the mark is registrable legally and to analyze the strength of the proposed trademark. To know more about the need of extensive search, read our informative piece on the importance of search in trademarking.
12. Can the USPTO refuse to register my trademark?
Yes. After a review of your trademark registration application is done by the USPTO, the authority may either accept or reject registration of the mark.
13. What will the USPTO consider while reviewing my trademark registration application?
The USPTO considers primarily the following with respect to the proposed trademark:
· The authority considers if there is a “likelihood of confusion” of the proposed mark with the other mark which has been already registered or for which the registration application is pending;
· It considers whether the mark or the offered goods/ services are deceptively similar to any mark registered or for which application is pending;
· It further allows registration of proposed mark if it does not cause any confusion in the minds of consumers and does not come in way of any other trademark;
· It also considers if the mark is merely ornamental or decorative.
Please note: Along with this, many other aspects are considered by the USPTO before granting registration to the mark. These are in accordance with the prevailing law and the decisions pronounced by Courts.
14. What is the benefit of trademark registration?
Once the registration is obtained for a mark, the owner gets the exclusive right to use such a mark with the federal registration symbol ®. The protection granted to the mark by way of registration may then be utilised further to obtain registration in other foreign countries. Registration is an effective tool which empowers an owner to protect her mark and equips her with the capability to bring an action in the court of law in case of any infringement of the mark.
15. How long does a trademark registration last?
The trademark registrations now have a 10-year fixed term after which renewal of registration is required. A trademark registration has to be renewed by filing a Declaration of Use: (1) between the fifth and sixth year following registration and (2) within the year before the end of every 10-year period after the date of registration.
Renewal of registration may be granted as long as the applicant/owner of trademark continues to use it in commerce. The intent is that no such mark must be registered which is kept in abeyance and not being used.
16. What kind of trademarks are non-registrable?
Below are some examples of trademarks that are non-registrable (the list is not exhaustive):
· Trademarks which are similar to other trademarks,
· The trademarks that may cause confusion in the mind of public,
· Trademarks that clearly describe the goods/ services being offered for eg. “Milky Milk” for marketing Milk and Milk products,
· Trademarks that are descriptive of the origin or nature of goods or services,
· A trademark including common family names and titles, etc.
17. Can I transfer ownership of my trademark?
Yes. If you are the owner of a registered trademark, you are allowed to transfer the trademark to any person. Your trademark is your intellectual property so you have the right to transfer it. Such a transfer is described as an "Assignment" which may be done through a written contract. When such transfers are made, the information must be conveyed to the USPTO.
18. What is a trademark specimen?
A specimen shows a trademark being used in real life in connection with goods/services described in the registration application. The goods/ services in respect of which a mark is required to be shown must be the goods/ services intended for public use or those present in the public domain. A clear picture of the proposed mark being used on the container of detergent powder(goods) would count as a proper specimen.
19. What is a statement of use/ Allegation of use?
A Statement of Use is filed when the application for registration with respect to a proposed Trademark is filed on the basis of an “Intent-To-Use”. This is a basis for filing for those trademarks which are not already being used in commerce and so, the applicant presents an intention to start using it. Thus, the USPTO demands a Statement of Use in order to make sure that the applicant has started using the proposed mark, thus, enabling it for registration.
20. How to check the current status of my trademark filing?
In order to check the status of your trademark application, you may visit http://tarr.uspto.gov/ and use the trademark serial number provided by the USPTO to know the status of your application.
21. What if someone else is using my trademark?
In case you find out that another individual, company, any business entity etc. is using your trademark, this act on their part may amount to infringement. An owner of a trademark has the authority to stop anyone from using his mark as such an act may lead to loss of business, loss of reputation etc. for the owner.
If you are facing such a situation where your mark is facing such a danger, you must contact an intellectual property attorney. The counsel will assist you by sending a cease and desist notice to the infringing party with a demand to stop using your mark. Trademark registration is beneficial as it gives you the priority to use your mark and acts as a good evidence of the ownership of the mark.
About the Author
Isha Kapoor is a young lawyer with passion for law and dispute resolution along with a deep interest in human rights and Intellectual Property Rights. During her law school career, she has interned at the offices of advocates practicing at district courts of Delhi, High Courts and the Supreme Court of India. Along with this, she has interned at the National Human Rights Commission and also has to her credit, a paper published on the Rights of Muslim Women in India.