Trademarks are intellectual property rights, which can be granted by state or federal government agencies, or they may exist through common law (e.g., law developed by courts). Trademarks can include a word, name (including foreign words and phrases), symbol, device, logo, or a combination thereof and are used to allow consumers of goods and services to identify the source (e.g., provider or origin) of those goods and services. Trademarks can be protected in a limited geographic area or they can extend throughout the United States. Additionally, foreign protection can be sought to protect trademarks overseas. Only the U.S. Patent & Trademark Office (USPTO) can register a trademark so that single protection is provided throughout the United States (e.g., federal protection). Such protection is appropriate for interstate commerce. Individual states offer trademark protection that is limited to a particular state and is appropriate for intrastate commerce. Under common law trademark protection, no formal application (state or federal) has to be filed with the USPTO or state agency. Rather simply using the trademark in commerce establishes the common law trademark rights. However, federally registered trademark rights have distinct advantages over other types of trademark rights.
There are four types of marks:
- Trademarks – these marks are used for goods.
- Service marks – these marks are used for services.
- Certification marks – these marks are used to certify the qualities or characteristics of other goods or services.
- Collective marks – these marks are used for membership in an organization or used on goods or services used by a collective organization.
Generically, the term “trademark” is often used for all types of marks.
Securing a federal trademark involves filing a trademark application with the USPTO and prosecuting the application, which is the process of negotiating the terms under which a trademark will be registered. A trademark application can be filed for a trademark that is currently being used in commerce, or if there is an intent to use the trademark, at a later date. Prior to federal registration and even after registration, the validity of a trademark may be challenged by another party, and involves procedures adjudicated by the USPTO. Once a trademark is established, the trademark owner must be diligent in maintaining its use else risk losing the trademark rights. Trademarks can be renewed every ten years for as long as the trademark is being used. Unregistered trademarks can be marked with the TM (for goods) or SM (for services) designations. These designations can also be used for pending trademarks before the USPTO but which have not yet been officially registered. In the United States, only the ® symbol may be used for federally registered marks issued by the USPTO.
Foreign trademark protection can be sought by filing a separate trademark application in the specific foreign countries where protection is desired or by filing a trademark application under the Madrid Protocol, which allows protection in several countries by filing only one application.
Rahman LLC’s attorneys have significant experience in the many facets of U.S. and international trademark law, and can assist in conducting availability searches, filing and prosecuting state, federal, and international trademark applications, maintaining trademark rights through renewals, and defending challenges to trademark rights.
- Searches and opinions: availability, infringement
- Preparation of trademark applications
- Prosecution (including in-person Examiner interviews, appeals, and foreign filings/prosecution)
- Post issue renewals