TRADEMARKS IN THE USA
The words “trademark” and “service-mark” are often used by individuals, businesses both huge and small. In a world full of opportunities where new entrepreneurs are emerging each day and the start-up culture is ravishing, the terms hold extreme relevance. A mark, word, phrase, symbol, design or a combination thereof may be used to distinguish the goods of one person from that of another. Such a mark, when used for distinguishing services rather than goods, is often referred to as a service-mark.
IDENTIFYING GOOD AND SERVICES
A first step after you think of getting your trademark registered is to identify the category and class of goods or services in which the desired mark falls. An application must list the specific goods/services for which a trademark/ service-mark is being used or is intended to be used. The application for registration may either be based on goods or services already in “use in commerce” or on a “bona fide intent to use the mark”.
DEPICTING THE MARK
A mark must be properly depicted in the application for registration through a clear image or drawing of it. This drawing is then used for printing on the registration certificate and is also uploaded on the USPTO website. The depiction is, thus, available in the public domain and can be in either of the following forms:
§ Standard character drawing: A standard character mark 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.
SEARCH- A STEP OF EXTREME IMPORTANCE
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. It is advisable that an expert legal professional or an attorney is hired for preparation of a trademark search and risk analysis report to prevent potential risks and losses.
HOW TO FILE AN APPLICATION?
In the USA, the mark can either be registered federally or by the respective state authority depending upon the existing or intended use of such a trademark. The United States Patent and Trademark Office (USPTO) is the federal authority which is responsible for providing registration to your proposed mark.
A trademark registration application is filed online through the TEAS (Trademark Electronic Application System) portal. There are two filing options available at the portal, particularly the TEAS Plus and the TEAS Standard, with a different fee attached to each option with $225 being the lowest filing fee option available.
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. This filing date is significant as it is a tool to assign priority to an application filed earlier than other applications. The application is thereafter reviewed by the USPTO as a result of which, the proposed mark may either be accepted or rejected.
The application and other aspects related to the registration and selection of a trademark can prove to be confusing and technical. Prodigy Legal is a firm that offers services of expert legal professionals for handling your trademark filings in a hassle-free manner. To prevent future risks and avoidable legal issues, it is advisable that an experienced professional is hired to effectively manage the procedural as well as legal aspects.
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.