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FAQs on Trademarks

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+What is a trademark?

A trademark is a word, phrase, design, or a combination of them, used by a company to identify its products and to distinguish them from the products of a competitor.

+What is a service mark?

A service mark is the same as a trademark except that a service mark is used to identify a company's services rather than its products. The term trademark is often used to refer to both trademarks and service marks.

+What is the difference between patents, trademarks, and copyrights?

Patents, trademarks, and copyrights are different types of intellectual property rights. Patents protect inventions. Trademarks protect words, phrases, designs, or a combination of them, as used by one company to identify its products and services from those of a competitor. Copyrights protect original works of authorship, such as website content, books, and music.

+What is the difference between the symbols ™ and ®?

The ™ symbol after a mark means that you claim rights to that mark, whether or not it is registered. The ® symbol may only be used if a mark is registered.

+I have registered my company name with the Secretary of State. Is that the same as registering a trademark?

No; registering a company name with the Secretary of State is not the same as registering a trademark. By allowing you to register your company name, the Secretary of State has determined that there is no other company by the same name in the state. The Secretary of State does not check state or federal trademark records when clearing a company name so it’s possible that, although you've registered your company name, the name may infringe another business' trademark rights. We recommend that you check the availability of a company name as well as a trademark before registering your business with the Secretary of State.

+Can a domain name be a trademark?

Yes; some companies use their domain name also as a trademark. For example, online retailer Amazon uses Amazon.com as both its web address and a trademark. If you use a domain name purely as your company's web address, it is not a trademark.

+Is a trademark search necessary?

Trademark searching is not necessary but advisable. We recommend a search to determine if the mark you want to use is already used by another company for the same or similar products or services. If another company has superior rights to the same or similar mark, it may be able to stop your use of the mark.

+Do I have to register my trademark before I can use it?

No; trademark rights in the U.S. are based on use, not registration. If you use a mark without registering it, this is known as "common law" use, which gives you rights in the mark for the geographical areas where you use it. We recommend federal registration if you plan to sell products or provide services in more than one state because there are several benefits to a federal trademark registration, including:
  • Constructive notice nationwide whether or not you use the mark in all the states
  • Registration gives you the automatic right to sue in federal court
  • Registration establishes your ability to recover an infringement award for up to triple the amount of your damages, plus attorneys' fees
  • You may file your registration with U.S. Customs to prevent infringing products from entering the U.S.

+I've been using my trademark for a while now. Can I still register it?

Yes; there's no time limit to registering your mark after you begin to use it. You can choose to register your mark before using it or anytime thereafter but, generally speaking, the earlier you file, the better.

+I only sell my products in one state. Should I consider a federal trademark registration?

Probably not; a state trademark registration may be sufficient, but you should consider if you'll sell your products in other states or other countries in the future. With many businesses on the internet, it may be easy for you to have customers in other states or countries so a federal trademark registration may be applicable.

+I plan to sell my products or provide my services internationally. Does registration of my mark with the U.S. Patent and Trademark Office protect me in other countries?

No; each country has its own trademark laws so registration in one country does not extend to other countries. PLW has established relationships with trusted attorneys worldwide who can assist in registering your mark globally.

+What is the cost of registering a mark internationally?

In most cases, you have to file a trademark application in each country where you plan to do business so the cost is dependent on the number of countries you file in. The cost is also dependent on the products and/or services you want the application to cover. Most trademark offices group similar products and services in the same category or class; for example, downloadable software is in Class 9, financial services in Class 36, telecommunications services in Class 38, and medical services in Class 44. Each trademark office charges a filing fee per class so the cost is dependent on how many classes your products and/or services fall into.

+Do I need an attorney to register a trademark with the U.S. Patent and Trademark Office?

No; you can file for registration on your own. However, it's advisable that you hire a trademark attorney because he or she is familiar with the rules and regulations for registration and may be able to make the process smoother for you.

+I found out that another company is using the same mark I have. Can I stop them?

Maybe; you should seek legal advice to determine if you have superior rights to the mark and whether this other company's use of the mark will cause consumer confusion or dilute the strength of your mark. In some cases, two different companies may be able to use the same mark if they use them for different and unrelated products or services. Attorneys who specialize in trademark law, such as those with PLW, will be able to assess your case.

+More questions?

Please feel free to contact us at 801-258-9820 or trademarks@patentlawworks.net with your questions.

Patent Law Works LLP

Silicon Valley Office
5150 El Camino Real, Suite A-20
Los Altos, CA 94022
ph. 650.537.4500

Salt Lake City Office
201 South Main Street, Suite 250
Salt Lake City, UT 84111
ph. 801.258.9820

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