Answers to Your Questions & Resources for Business Owners

FAQs keep you in the know

What is a Trademark?

The United States Patent and Trademark Office provides that a trademark is “generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the products or services of one party from those of others.” – Basic Facts About Trademarks, USPTO (2020).

Why order trademark research?

Trademark registrations are costly and a Search is a way to review whether your Mark is even available for filing, before you file for its registration. The Trademark Search results will help to confirm whether you should spend the money on filing for registration.

What if someone is using the mark I want?

If someone has already registered your desired mark, or even a similar mark to yours in the same or similar industry to yours, you may then want to find a new and different mark to avoid potentially “infringing” on their registered mark.

 

  • Considerations for Federal Considerations for Federal Registration When Selecting a Mark, Basic Facts About Trademarks, Protecting Your Trademark, Enhancing Your Rights Through Federal Registration, USPTO, p. 3-9 (20209)
Why perform international research on a Mark?

Yes! Under US treaties, certain Internationalusers who are actively using their Mark abroad. and have not registered their Mark in the US, can automatically gain protection under the laws in the U.S. for first use. If such a user later decides to file in the United States, and if you have already filed, they may challenge your filing by being able to show first use.

International research lets you know whether or not someone may already be using your Mark in other countries. Also, if you plan to sell your goods or services internationally, then you want to make sure that the Mark is available Internationally and not being used by another company in the same industry.

How do I file a trademark?

After researching the Mark’s availability and deciding on the trademark that you want to file, you can protect the trademark by filing it in your U.S. State, Federally, and/or Internationally. You may file on your own, or with the help of a licensed attorney.

What marks are commonly refused?

Trademarks that are commonly refused by the United States Patent and Trademark Office (USPTO) are:

  • Marks that are already registered in a similar class
  • Marks that are confusingly similar to already registered marks
  • Marks that are merely descriptive of the product or service
  • Marks that are a generic term for the product or service offered
  • Marks that are offensive
  • Marks that are the title of a single work
  • Marks that are deceptively mis-descriptive of a geographical source location
  • Marks that encompass trademarks of others

–  USPTO, Trademarks: Getting Started, Process Overview, Possible Grounds for Refusal of a Mark, https://www.uspto.gov/trademark/additional-guidance-and-resources/possible-grounds-refusal-mark (2022) (last visited 07/25/2022)

Can I trademark a book or a song title?

If the Mark is the “title of a single work,” the USPTO will generally refuse the Mark. However, if the title is part of a series (e.g., the work is labeled “Volume 1,” “Part 1,” or “Book 1”) or is a type of work in which the content changes significantly with each edition, issue, or performance, the mark generally will be eligible for registration.

– USPTO, Trademark, Basics, Process Overview,Trademark refusal: Title of a single creative work https://www.uspto.gov/trademarks/additional-guidance-and-resources/possible-grounds-refusal-mark (Last visited: 07/25/2022)

Can I trademark my name?

If you are using your full name to identify the producer of a product or service, you may be able to trademark it. However, surnames alone are generally not allowed for registry unless a showing of acquired distinctiveness under §2(f) of 15 U.S.C. §1052(f). See Trademark Manual of Examining Procedure, “Primarily Merely a Surname,” Sect. 1211.01 (2017).

Can I trademark a website domain name?

Yes, if you are using the website domain name to identify the producer of a product or service, and it is not denied on other grounds.

– USPTO, Basic Facts About Trademarks, TRADEMARK, COPYRIGHT, OR PATENTp. 2 (2022)

I Have Registered the Web Domain. Does That Mean I Automatically Qualify for a US Federal Trademark Registration?

No. Unfortunately, owning a web domain alone is not viewed by the USPTO as constituting use of the Mark as a trademark.
However, the use of the web domain combined with other use will help you prove your use of the Mark as a Trademark. Therefore, it is great to have the web domain but not determinitive.

USPTO, Basic Facts About Trademarks, TRADEMARK, COPYRIGHT, OR PATENT, How do domain names, business name registrations, and trademarks differ? p. 2 (2022)

I have the Social Media Handles for the Mark. Does That Mean I Automatically Qualify for a US Federal Trademark Registration?

No. Unfortunately, having procured the Social Media handles for the Mark, alone, doe not guaranty Federal Trademark protection. However, use of your mark on your Social Media channel, combined with advertising, a website, or other use, will help you prove your use of the mark as a Trademark. Therefore, it is a good idea to secure the Social Media handles that relate to your Mark, and to utilize your Mark repetitively thereon, after you have researched the mark to make sure you want to proceed with it.
See, e.g., USPTO, Basic Facts About Trademarks, TRADEMARK, COPYRIGHT, OR PATENT, How do domain names, business name registrations, and trademarks differ? p. 2 (2022)

I Found Someone Using My Mark, but They Never Registered It. Should I be Concerned?

Yes. Utilizing a Mark as a Trademark creates common law rights in the mark for the owner. This is the concept of “First Use.” Even though the owner did not register the Trademark, having utilized it first is very important.

An owner who utilized the Trademark first can bring a contest during your Mark’s publication period, and challenge your filing.
After your Mark registers, for the first five years of use, the prior owner can bring a proceeding against you to Cancel your trademark.

15 U.S. Code § 1064 (2022).