Frequently Asked Questions about Trademarks
What defines and distinguishes a trademark‚ service mark‚ and trade name?
A trademark can be any word‚ name‚ symbol‚ device‚ or any combination thereof that distinguishes a product from those produced and sold by others‚ and also indicates the source of the product (Lanham Act‚ 15 U.S.C. Section 1127 and California Business and Professions Code section 14202(a)).
A service mark is similar to a trademark‚ except it applies to services rather than products. Titles‚ character names used by a person‚ and other defining features of a radio or television program can be legally protected as service marks (Lanham Act‚ 15 U.S.C. Section 1127 and California Business and Professions Code section 14202(b)).
A trade name is simply a name used by an individual to indicate his or her business or vocation (Lanham Act‚ 15 U.S.C. Section 1127 and California Business and Professions Code section (14202(d)).
How do I find out whether I have a trademarkable name?
Generally‚ it is better if the name of your product or service is not descriptive or generic in nature. You can also have us conduct a trademark search to see whether your name is viable before applying with the U.S. Patent and Trademark Office (PTO). We do both basic and comprehensive trademark searches. There are also options for international searching. An experienced trademark attorney can help you determine what trademark searches to conduct.
What is a trademark specimen?
A specimen displays how a trademark is used on commerce. It can be varied in the forms it takes depending on the types of goods or services involved.
For example‚ a proper trademark specimen of use can be a label or a photograph that shows the product’s trademark. An advertisement‚ a flyer‚ or a webpage can also be proper specimens of use.
How do I apply for a trademark on the federal level?
You may file a U.S. Trademark Application if you are using the trademark across state lines or internationally. For Actual Use trademark applications‚ specimens of use must be filed along with the application.
You may also file an intent-to-use trademark application if you have a bona fide intent to use the trademark but haven’t done so yet. If you file based on an intent to use‚ you must later file either an Amendment to Allege Use or a Statement of Use when you start using the trademark which includes your specimen of use and dates of first use both anywhere and across state lines.
When your application is approved for publication‚ it opens a 30 day window for third parties to oppose the application. To oppose the application the third party must have standing. In other words‚ the party filing the Opposition must prove that they will be harmed in some way by the trademark registration. Any such conflicts must be resolved before a trademark registers. After registration a Petition to Cancel can be filed which is the same proceeding involved with the Opposition though after registration the trademark owner has some presumed rights.
How can I get a state trademark or service mark?
Though not as strong as a federal registration‚ trademarks may also be registered with the California Secretary of State. Registration in the state of California is a good option if the trademark is not used across state lines.
Where can I file a trade name?
In California‚ a trade name may be filed with the county clerk. However‚ this filing does not grant any trademark rights.
What is a trademark license?
A trademark license allows someone other than the trademark owner to use a trademark under specific conditions. Under such a contract‚ the licensor permits the licensee to utilize the trademark under agreed upon circumstances. There may be multiple licensees for a trademark. Furthermore‚ licensing can take place before registration.
Why do I need an attorney for my trademark needs?
Your ownership of a trademark is not guaranteed by registration alone. The laws concerning trademarks are complex and there are many pitfalls so it is important to ensure that everything is handled properly. Persons who file their own trademarks often forget to do simple things that later lead to a loss of rights. Please feel free to Contact us for help with all of your intellectual property matters.