1.  How long does a trademark registration last?

A registration has a 10-year term and can be renewed for additional 10-year terms if you prove the mark is still in use for all the goods and/or services stated.  Additionally, between the fifth and sixth anniversary of a mark’s registration, you must file evidence with the PTO showing that you are still using your mark.  If you do not, your registration will be canceled.

2.  What is the difference between the SM (^SM), TM (^TM) and the R-in-a-circle (®)?

These symbols are all used as notice of trademark rights.  Under U.S. trademark law, the R-in-a-circle symbol (®) may only be used in connection with a federally registered trademark. By "federally registered" we mean that the trademark owner filed a trademark application with the US Patent & Trademark Office (USPTO) and has been granted a registration. In contrast, the ^TM and ^SM symbols, for trademarks and service marks respectively, are often used with marks that have been filed with the USPTO and are awaiting registration or simply to highlight the owner’s claim to exclusive rights.

3.  Do I have to begin using a trademark before I can apply for federal registration?

No. An applicant may apply for federal registration in three principal ways: (1) an applicant who has already commenced using a mark in commerce may file based on that use (a "use" application); (2) an applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application).  The applicant will have to lawfully use the mark in commerce and submit an allegation of use to the Trademark Office before the Trademark Office will register the mark and finally; (3) under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.

4.  I live in Canada but I want to protect my trademark in the United States.  Can I file for a federal registration?

Yes. Applicants not living in the United States must designate in writing the name and address of a domestic representative – i.e., a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." This person will receive all communications from the USPTO unless the applicant is represented by an attorney in the United States.

5.  How do I know if the mark I want is already taken?

Although not a requirement, an applicant may choose to conduct either a preliminary scan or a full U.S. availability search for conflicting marks prior to applying with the USPTO.  As part of the trademark evaluation process, a U.S. trademark examiner will evaluate the efficacy of an application by conducting a search of federally registered marks.  If a conflicting mark is found the examiner will notify the applicant.  The application fee, which covers processing and search costs, will not be refunded and the mark cannot be registered. 

 6.  What is the difference between a preliminary scan and full U.S. availability search?

A preliminary scan is a quick, limited search designed to determine if there are any pre-existing identical or very similar marks. Generally a preliminary scan of the U.S. federal register can be accomplished in a few hours by competent trademark counsel.

A full U.S. availability search, on the other hand, will reveal if there are any identical, or similar, pre-existing marks registered at both the federal and state level and existing at "common law." Common law marks are unregistered marks that are currently being used as domain names, business names, slogans, etc. in commerce. If time permits, it is strongly recommended that a full search be conducted before filing a trademark application and that a written opinion be gathered from a competent trademark attorney on the feasibility of using the mark you pre-selected.

 7.  Why is a trademark search even necessary?

There are three (3) key reasons why a trademark search is needed:  1.) to avoid liability from trademark infringement lawsuits; 2.) to identify potential prior users, so you will not have to incur the time and expense associated with changing a name you have invested time and money in at a later date and; 3.) if the mark you attempt to register is the same, or "confusingly similar" to another company's registered trademark for the identical or similar goods and/or services, the application will be denied and the registration fees are non-refundable.

In addition to having a proper search conducted, it is also wise to obtain a trademark search opinion from a competent trademark attorney. Such an opinion can be used as a defense in a trademark infringement suit, which can potentially shield the subsequent user of a registered mark from liability for "willful infringement" as opposed to "innocent infringement." A finding of willful infringement may result in treble damages (that is three times the awarded amount of actual damages) and an award of attorney fees and costs.

8. I went online to buy the domain for my name and it was already taken. How can somebody else own my personal name? Do I have any recourse if my name is well known?

Someone else can legally own the domain name for your personal name or your company's name. You may have recourse if your name is well known, especially in California which has expanded rights for likenesses and names of well known persons. You also may be able to get the domain name transferred to you by negotiating with the domain owner through your attorney.

 9. I searched online for my company/my product name and all of the first hits were for other companies. I can't find my company name on their page, so why would that happen and what can I do about it?

Web designers use programming called meta tags to help search engines find their sites. The meta tags are words that can be "seen" by search engines but are invisible to someone viewing the page. The courts have ruled that meta tags referencing someone else's product or company name cannot be used to cause initial interest or confusion. However, if a user would not confuse your site with one of these other sites that pops up, you may not have any recourse.

 10. Someone is selling fake versions of my authentic product. They claim they are within their rights because they have changed the name by one letter. Do I have a case?

In this scenario, you may have a case for infringement trademark. A basis of trademark law is that a mark is used to identify the source of the goods and if someone is using a trademark similar to yours, such that a consumer would be confused as to the source of the goods, you have a cause of action. This can apply to a brand name or a logo or design. For instance, someone selling "Rollex" watches will most likely be considered by the courts to be infringing.  If your trademark is deemed to be "famous" you may have a case for dilution of your trademark regardless of whether there is any liklihood for confusion.

11. I sell T-shirts that parody name brands. I thought parody was protected, but now I'm being sued.  Why?

While parody is protected, a problem can arise if there is a likelihood of confusion as to the source of the goods. For instance, if a consumer would think that the t-shirt was actually produced by the brand that you are parodying, you may not be protected. If you are being sued, seek legal counsel to evaluate your individual situation.

12. My company never formally trademarked our name, but we've been using it for 50 years and everybody knows us by it. Now somebody else trademarked it and is using our reputation to build their own business. Do we have any recourse or are we out of luck?

You have acquired rights in the geographic area that your trademark has been used in. For instance, if you've operated Larry's Deli in the Los Angeles area, you may be able to prevent someone else from opening a Larry's Deli in Hollywood, but not a Larry's Deli in New York City. It would be a good idea to file a federal trademark showing the date of your first use. One possibility may be an agreement between the two parties where you cannot expand your business outside of the geographic area that you are in and they agree not to infringe within that area.

[back to top] 

This Web page, and the other pages of the Cislo & Thomas LLP Web site, are provided by the firm of Cislo & Thomas LLP as a service to the public. It is hoped that the information provided here will be helpful to readers in familiarizing themselves with intellectual property issues that may affect them. As legal advice must be tailored to the specific circumstances of each case, nothing provided herein should be used as a substitute for advice of competent counsel. In addition, be aware that intellectual property law varies considerably from jurisdiction to jurisdiction (and between states in the United States), so some information in these Web pages may not be applicable to your jurisdiction. You should also be aware that we cannot guarantee that everything on this web site is complete or up to date.