What is a Trademark?

A trademark is a distinctive word, phrase, logo, symbol, or other device that is used to identify the source of a product or service and distinguish it from competitors.

The word “trademark” can refer to both trademarks and service marks. A trademark is used for goods and products, while a service mark is used for services.

What Are the Benefits to A Trademark?

Trademarks have many benefits for an owner; including identifying the owner as the sources of goods and/or services, providing protection for a brand, and guarding against infringement and fraud.

What Are the Benefits of Federal Trademark Protection?

1. “Nationwide priority rights” as of application filing date.
   1. no usage needed initially to establish rights
2. Nationwide rights benefits without need to use in all 50 states
3. Access to federal courts
4. “Constructive notice”
5. Attorneys fees and “treble” damages rights conferred by Lanham Act
6. Can register with U.S. Customs to block importation of infringing goods
7. Importantly:  Without a trademark filing, if others file before you litigation is required to attempt to stop a prior filer.  This can prove extremely costly in the long run.

What Do the Symbols TM and  ® Mean, and When Can You Use Them?

The use of “TM” or “SM” simply means you are asserting a trademark is yours.   You can use “TM” for goods, and “SM” for services, even if you have not applied for a federal trademark registration.

Only after you obtain federal registration for your trademark, may you use the registered symbol, or ® with the trademark.  You may use this symbol anywhere around the trademark (although most use place the symbol in smaller script to the immediate right of the trademark). Once again, use of this symbol is only permitted after federal registration of your trademark.

What Is the Difference Between A Trademark and a Copyright?

A trademark is a distinctive word, phrase, logo, symbol, or other device that is used to identify the source of a product or service and distinguish it from competitors.    Copyrights on the other hand, protect “original expressions of creative work.”  Such creative works include the following: art, sculptures, literature, music, videos, video games software, websites, and graphics.

 Requirements to qualify as a Copyright:

(a)  It must be ORIGINAL (that is, author must have created the work themselves and not copied it;

(b)  It must be fixed in a TANGIBLE MEDIUM OF EXPRESSION (i.e., recorded on a video, written on paper, or painted on canvas; and

(c)  It must have some CREATIVITY (that is, must be produced as an exercise of human intellect);

Note: Copyright does not protect “ideas” or “facts.” It also does not protect recipes.

Step One:  Is the Trademark Available?: For many clients, the best first step is a trademark search.  If appropriate, can conduct a comprehensive search of the federal trademark database and common law databases for possible conflicts.  We deliver both the search results and our analysis of the findings via email. Although searching is optional, it is highly recommended.

Step Two: Let’s Talk About It!:  As a client of Allmark Trademark, you can give Attorney John E. Russell a call anytime to discuss the results over the phone.  Clients typically have many questions about the trademark results, and we are happy to answer them in detail;

Step Three:  Filing The Application: We take the information provided by the client, research whatever other issues are needed, and then prepare and submit the trademark applications ourselves.  Since the USPTO does not do “refunds”, we make sure this vital stage is done correctly;

Step Four:  Issues with the USPTO?:  The USPTO commonly issues “Office Actions” requesting clarification or requesting changes to an application.  In cases of minor clarifications or changes, these are done for no extra charge.  In cases where a more substantive response is required (such as in the case of conflicts with existing trademarks, or disputing a “descriptiveness” ruling), additional fees may be required.  An estimate of these additional fees will always be agreed upon by the client prior to filing a response.

In many cases, most cases, we respond to such Office Actions for no additional charge to the client (with the notable exception of “conflict” rulings with another trademark, which we can respond to for an additional fee).

While it is not a legal requirement to hire a lawyer for the trademarking process, there are many advantages of doing so.  This is especially true when compared to the many “trademark mills” that currently operate on the Internet.   These outfits do not have attorneys to assist with the often complex aspects of clearing and securing a trademark registration.  An experienced trademark attorney can provide the following:

• Conduct a targeted search and analysis of other existing trademarks that may pose a conflict for the client, and advise the client on the potential risks involved. Remember, only licensed attorneys can provide legal advice.  Having “Trademark Eagle”, “LegalMarkia,” etc., produce a set  of search results, without providing a legal analysis of those results, is essentially meaningless.   In fact, it can give clients a false sense of security.   This is where 25 years of trademark experience makes all the difference;
• Consult personally with each client, and get a thorough understanding of the client’s goods and/or services that are being offered. This ensures the client’s trademark application accurately reflects their business, and protects them accordingly.  This is in contrast to many online services, that merely have the client choose from a list of generic terms.
• Prepare and file the trademark application with the USPTO, that complies with the intricacies of the USPTO requirements. Every aspect of the application is carefully reviewed for accuracy prior to filing;
• Advise the client on all developments at the USTPO after filing, including detailed explanations of any Office Actions issued. Importantly, advising the client on the best ways to proceed when such issues arise.
• Notify the client of all post-registration maintenance deadlines, and the requirements for satisfying them.

Finally, being able to ask questions from the same attorney that started the process.  We are always available to discuss your trademark.