Your business identity, like your personal identity, is a critical element of your business’ growth and success. And just like your personal identity, it must be protected. One of the best ways to protect your business is to register your business name, business logo and business taglines as trademarks or service marks. The following provides basic information regarding trademarks/service marks.
What are Trademarks and Service Marks?
A mark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies goods and/or services of one individual or entity from the goods and services of another individual or entity. A trademark is used in conjunction with various products. Products, or goods, are tangible objects that are purchased and sold such as car tires, stuffed animals and vacuum cleaners, while a service mark is used in conjunction with services provided to others such as a cleaning service, a computer repair service or a consulting service. Examples of trademarks are Coca-Cola®, Microsoft®, and the familiar three-diamond Steelers® logo.
While an individual or entity can have an inherent common law right in a mark, there are legal advantages of registering a trademark, either with the individual state governments or with the federal government through the United States Patent and Trademark Office (“PTO”). The advantages of registration include:
- Registration provides notice of a claim or ownership to a particular mark;
- Registration provides a legal presumption of ownership and the exclusive right to use the mark; and
- Registration provides the ability to bring a legal action in court to prevent another individual or entity from using the same or a similar mark in a manner that confuses the general public as to the source of a good or service.
Where to register a mark?
Although there are other bases for filing, where an individual or entity is using a mark generally determines where the mark is to be registered. If a mark is only being used with in one particular state, the mark should be registered with that state government. On the other hand, if a mark is being used for goods and/or services in interstate commerce or between the United States and another country, then the mark may be registered with the PTO.
How to register a mark?
Although it is not required, it is highly recommended that prior to beginning the registration process, an attorney conduct a search to determine whether or not a particular mark is available to be registered. A search should be made of state, federal and international trademark registers. Other sources such as domain name registers, Google® searches, telephone books and fee-based search sites should also be reviewed. All good attorneys should provide a client with an opinion letter. The opinion letter should set forth the feasibility of registering a particular mark as well as the disadvantages and potential liabilities associated with registering the mark.
The attorney should also work with the client to determine how the mark is going to be used. All registered marks must be fall within various classifications. The PTO and the various states base registrations upon the International Schedule of Classes of Goods and Services. For example, marks pertaining to hand tools may only be registered in International Class 8, while medical services can only be registered in International Class 44. Additionally, the attorney and client should work together to create an identification, or definition, of the goods and/or services for which the mark or marks are being registered. It is very important to prepare an accurate identification of the goods and/or services. An identification can be clarified or limited, but once an application is filed, an identification cannot be expanded or broadened.
Registration Process in Pennsylvania:
- One does not need to prove usage of the mark until the 5 year renewal period.
- Prepare a fill-in-the-blank application form (www.dos.state.pa.us/corps). Separate applications must be filed if the mark is going to be registered in more than one class.
- The application must include a drawing of the proposed mark and you must indicate which class you will be registering the mark.
- The application(s) is submitted to the Pennsylvania Department of State, Corporations Bureau.
- An applicant should receive confirmation of successful registration within 2 to 3 months, if not sooner.
- A registration is permitted to use the “TM” symbol but not the ® symbol which is reserved for those marks registered with the PTO.
- The mark must be renewed within 6 months of the 5 year anniversary date of registration. The renewal application MUST include a specimen showing the mark in actual use. The specimen should be specific to the good or service for which the mark is being registered.
- The mark may be renewed in 5 year periods indefinitely.
Registration Process for the PTO:
- There are two main ways to file an application for registration.
- A mark already in use or,
- An “intent to use” application. An “intent to use” application indicates that that you haven’t yet used the mark, but you will be using the mark within 6 months. (You can apply for additional 6 month extensions of time, but there is a filing fee and the PTO has the discretion in permitting the time extension).
- The Applicant must prepare and file an application either on-line (www.uspto.gov/main/trademarks) or by hard copy and mailing the application to the PTO.
- All applications must include a black and white line drawing of the proposed mark. If the mark is already in use, a specimen, one for each specific good or service for which the mark is being registered, must also be provided. If an “intent to use” application is being filed, a specimen must be submitted when the mark is first used in commerce, but after the mark has been approved for registration by the PTO.
- The process from initial filing to issuance of Certificate of Registration can and most likely will take anywhere from 1 to 4 years.
- Once a mark is registered, the ® symbol should be used with the mark.
- To maintain a registration, the registrant must file an Affidavit of Continued use between the fifth and sixth year of the date of registration and then must be renewed every ten years.
How long does a Trademark last?
Once registered, a trademark or service mark can last as long as the owner of the trademark wants, provided that the trademark or service mark is renewed and all documentation if filed when required.
Your business identity can grow to be the most valuable asset owned by your business. Protect your asset and register your trademark.