Trademark Facts – Frequently Asked Questions
What is a trademark or service mark?
A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.
A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods. The terms “trademark” and “mark” refer to both trademarks and service marks.
Selecting a trademark must be done with thought and care, because not every trademark is registrable nor is every trademark legally protectable.
What should I consider when selecting a trademark?
Before filing a trademark application, you should consider (1) whether the trademark you want to register is registrable, and (2) how difficult it will be to protect your trademark based on the strength of the trademark selected. Keep in mind that the USPTO only registers marks and you are responsible for enforcement of your trademark rights.
Accordingly, don’t choose a trademark for your product or service that may be difficult to register or protect for various reasons.
Do trademarks, copyrights, and patents protect the same things?
No. Trademarks, copyrights, and patents protect different types of intellectual property. A trademark typically protects brand names and logos used on goods and services. A copyright protects an original artistic or literary work. A patent protects an invention. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.
Is every trademark able to be registered with the U.S. Trademark Office?
No, not every trademark is registrable with the U.S. Trademark Office. That is, some trademarks may not be capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar trademark on related goods or services. People new to trademarks and the trademark application process often choose a mark for their product or service that may be difficult or even impossible to register.
Why would the U.S. Trademark Office reject my trademark application?
The most common reason to refuse a trademark registration is a “likelihood of confusion” between your trademark and a trademark already registered or in a prior-filed pending application owned by another party. The U.S. Trademark Office determines that a likelihood of confusion exists when both (1) the trademarks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source. Accordingly, similar trademarks can coexist, so long as the goods and services are not related.
What is a good trademark to register?
In addition to selecting a trademark that is not likely to be confused with other trademarks, it is in your best interest to select a mark that is considered “strong”. A “strong” trademark is a fanciful trademark or an arbitrary trademark or a suggestive trademark because they are inherently distinctive. Fanciful marks are invented words with no dictionary or other known meaning. Arbitrary marks are actual words with a known meaning that have no association/relationship with the goods protected. A suggestive trademark suggests, but do not describes, qualities or a connection to the goods or services.
An examples of a fanciful trademark is BELMICO for “insurance services”. An example of an arbitrary trademark is BANANA for “tires” . An example of a suggestive trademark is GLANCE-A-DAY for “calendars”.
On the other hand, a trademark is “weak” if it is descriptive such as CREAMY for “yogurt”, for example, or others are already using it to describe their goods or services making it difficult and costly to try to police and protect. Weak marks should be avoided because they simply do not have the same legal protections of a stronger and more distinctive mark.
What is an International Trademark application and registration under the Madrid Protocol?
The Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks is one of two treaties comprising the Madrid System for international registration of trademarks. The protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holders to ensure protection for their trademarks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.
Moreover, no local agent is needed to file the initial application. While an International Registration may be issued, it remains the right of each country designated for protection to determine whether or not protection for a trademark may be granted. Once the trademark office in a designated country grants protection, the trademark is protected in that country just as if that office had registered it.
The Madrid Protocol also simplifies the subsequent management of the trademark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all members.
The Madrid System can be used to file a single application and pay one set of fees to apply for protection in up to 122 countries. The government filing fee of an international trademark application includes the basic fee of approximately $700, plus additional filing fees depending on where you want to protect your mark, and how many different types of products or services will be covered by your registration.
For example, the government filing fees to apply to register a trademark in India and the European Union, for one type of product, the total government filing fee would be approximately $1,800 [$700 basic fee + 150 (one type of product in India) + $950 (one type of product in the European Union)].
After obtaining an international trademark registration, additional government filing fees apply to expand the geographical scope of coverage, modify or renew your trademark portfolio.