This section is divided into three parts, namely: (a) Trademark Background; (b) Trademark Infringement; and (c) Trademark Registration including Trademark Searches.  Please note that this brief overview of trademarks is provided as a free service and is not a substitute for the advice of an attorney.  The information provided is general in nature and may not apply to your particular situation.  If you have a legal matter, it is recommended that you seek the advice of a lawyer.  If you have any questions, please click here. 

A. Trademark Background

A trademark (or service mark) is generally a word or logo which identifies the source of products or services and distinguishes those products from competitors.  Over time, trademarks tend to establish consumer goodwill based on quality.  YAHOO! and MERCEDES are examples of trademarks.  An Internet domain name may also be used as a trademark. 

Trademark rights are usually acquired by use in commerce.  Generally, the prior user of a mark owns the mark in the geographic region in which the mark is in use.  Several exceptions to this general rule exist.  For example, a Trademark Application may be filed on an "intent to use" basis.  The filing date of such an ITU Application becomes the constructive date of first use for the mark even if the applicant has not yet begun actual use.

B. Trademark Infringement

Trademark and Unfair Competition laws generally prevent competitors from "palming off" goods as those of another.  The key inquiry in a matter of trademark infringement is whether a likelihood of confusion exists between the marks.  If the marks are confusingly similar, a prior user may request that a subsequent user desist use of a trademark.  If the subsequent user refuses, litigation may ensue.

There are no hard and fast rules in determining whether a likelihood of confusion exists.  Several factors must be considered including, but not limited to: (1) the similarity of the marks; (2) the similarity of the goods or services; (3) the similarity of trade channels; (4) the number and nature of similar marks in use on similar goods; and (5) the extent of any actual confusion.  If you are involved in a trademark infringement matter, you should seek the advice of an attorney.

C. Trademark Registration

When a trademark is in use in interstate commerce, it is recommended that it be registered with the United States Patent and Trademark Office (the "PTO").  Many benefits exist in registering a trademark with the PTO.  The most important benefit is that federal trademark registration may afford the registrant nationwide trademark rights even if the registrant's actual use is limited to a certain area of the country.  The reason for this is that federal registration of a trademark acts as constructive notice to the world of the registrant's rights to the trademark.  Thus, constructive notice prevents a later user from claiming that it's use was in good faith.  Federal trademark registration can also provide certain statutory benefits most notable of which is incontestability.  Incontestability allows a trademark owner to prevent a defendant from claiming certain defenses in the event of infringement.  In practice, a federal registration also notifies potential infringers that you are serious about protecting your intellectual property.  Lastly, but certainly not least, a registered trademark tends to increase the value of the trademark and the business which owns it.

Filing a Trademark Application

If you are interested in filing a Trademark Application to register a trademark, a trademark search is always recommended prior to using a trademark or filing a Trademark Application.  Our fees to prepare and file a Trademark Application are $495 for one Class of goods or services plus $50 per additional Class.  Our fees do not include the PTO filing fees which are $325 per class of goods or services.  If you are interested in having us assist you with your Trademark Application, please click here.