Frequently Asked Questions (FAQs)
Q: What is a trademark?
A: A trademark is a name, word, slogan, phrase, logo, image, symbol, or design, or some combination of any of these, that is used by business or person (or government) to identify and distinguish its products or services from those of others, and to indicate the source of the goods. What we call a “brand name” is one kind of trademark. See our Intellectual Property ABCs page for more information about trademarks and the other types of IP protection that are available.
Q: Are there any rules on what can and can’t be trademarked?
A: Oh, yeah, lot’s of them. This topic fills entire books, including the statutes and procedural rules used by the examiners at the USPTO in processing your trademark application. Your best bet is to consult with a properly qualified trademark attorney for an analysis of whatever mark you would like to register. You can bet that the discount sites aren’t going to put a lot of effort into talking you out of filing an application on a mark that isn’t likely to ever get registered–they want your fee whether or not they can successfully get your mark registered. Of course, there are never any guarantees that your proposed trademark will be successfully registered, but hiring the right lawyer to help you is your best option to maximize your chances.
Q: Do I have to register my trademark?
A: Nope. You also don’t have to record the deed that transferred your house into your name, but would you ever even dream of skipping that step? Registering your trademark puts the world on notice of your legal rights to the name, slogan, symbol, etc., just like recording the deed to your house puts the world on notice that you are the owner. Registering gives you additional legal rights, including the right to bring a lawsuit against any infringers based on the federal law. When it can take eighteen or more months to register a trademark, do you want to have to wait that long before you can sue competitors who are improperly using your trademark?
Q: Can I apply for a trademark on something I’m not actually using yet?
A: Absolutely. For many people and businesses, the screening, analysis, selection, research and development of a potential trademark is part of the business plan from day one for a new business or a new product or service. Hundreds, if not thousands, of dollars are often spent on this vetting process, and that’s before you even get to printing up product labels, packaging, brochures and advertisements. Before you sink too much money into this process, it is extremely wise to you confirm that you have a valid and registrable trademark. You can do so by filing what is called an “intent to use” application with the USPTO, which allows you to complete most of the steps required for registration prior to the time that the mark is actually being used in commerce. Of course, a qualified lawyer can assist you with not only the intent to use application process, but with the fundamental steps in selecting a strong and registrable mark in the first place.
Q: How long does it take to register my trademark?
A: Sorry to give the typical lawyer response, but that depends. The USPTO is generally pretty backed up, and it can take months before your application is even assigned to an examiner and reviewed (the USPTO says this should happen within about three months). Then, if the examiner finds any legal or technical problems with the mark or the application, they will issue what is called an “Office Action,” which is basically a rejection of the application that states the legal basis for the rejection. (Of course, properly responding to an Office Action requires an intimate understanding of trademark law.) Anyway, this process can be repeated multiple times for any particular trademark application. If all of the legal objections are overcome, the proposed mark is published, which gives notice to the public of the intention to issue a registration, which takes about another three months. If nobody objects to the proposed mark, the mark is then registered. The entire process can take anywhere between about eight months and several years. According to the USPTO’s 2017 Performance and Accountability Report, the average time from application to registration (or final rejection) is 9.5 months as of 2017 (that’s down from over 11 months in 2009, and 18 months just three years earlier).
Q: How long does my trademark last once it’s registered?
A: Once registered, a federal trademark can be held indefinitely, so long as you continue to use the mark in commerce in conjunction with the goods and/or services for which the registration was obtained. In order to maintain the mark, certain filings and legal steps have to be completed during the fifth year after registration, by the tenth year, and then by every tenth year thereafter. Of course, the Gerity Law Group, PLC, can help you to meet these deadlines and file the appropriate documents to maintain your trademark.
Q: Can I use the TM, SM or ® symbols with my trademark?
A: You can use the “TM” or “SM” designations (“trademark” and “service mark,” respectively) from the time you first use your trademark or service mark in commerce. The “®” symbol, however, signifies that your trademark has been federally registered with the USPTO, so it can only be used after the mark has been finally approved and registered. The “®” symbol cannot be used while your trademark application is still pending, and it must be used only with the particular goods and/or services that were listed in the federal trademark application after registration is completed.
Q: What’s so special about a registered patent attorney?
A: A registered “patent attorney” is, first of all, an attorney who is licensed to practice law in at least one state or territory of the United States. Second, a registered patent attorney has passed a rigorous registration examination administered by the United States Patent and Trademark Office (the “USPTO”). Third, a registered patent attorney has obtained an adequate scientific and technical background or education, which is required before even being allowed to take the USPTO registration examination. A “patent agent” is someone who has passed the examination, but who is not a licensed attorney. Only a small percentage of attorneys are registered to practice before the USPTO. In fact, if you don’t count California, there are, on average, only about 500 such attorneys in each state, with Wyoming actually having less than ten!