Trademark FAQ's

• What is the difference between a Common Law TM, SM, and a Registered Trademark ®?
• What is the difference between a State TM, SM, and a Registered Trademark ®?
• What is the difference between a State TM, SM, and a Common Law TM, SM, standing?
• What happens if the same name I already have a TM or SM trademark on is being registered with the Trademark Office?
• What happens if the trademark name I submitted is found in your search?
• What is the difference between a Trademark and a Service Mark?
• How do I establish legal trademark rights?
• Use of the "TM", "SM", and "®" symbols
• What is the difference between a "trade name" and a "trademark" (or service mark)?
• What types of marks are the most easily protected?

What is the difference between a Common Law TM, SM, and a Registered Trademark ®?
A TM or SM represents a mark that is unregistered with the U.S. Patent and Trademark Office (PTO). It is a notification that there is a public claim as a trademark, it must comply legally to be recognized in a court of law. It is only valid within the states it is actively engaged in commerce with proofs of first usage (a hand full of sales most likely wouldn't constitute commerce within a particular state unless you have a SM standing). The ® is a warning notice to advice the public that the mark is federally registered and is legally recognized. The registration symbol ®, may only be used when the mark is registered in the PTO (valid in all 50 states and territories regardless of any commerce amount within any particular state or territory). Federal registration is NOT required to establish rights in the mark. Both registered and unregistered marks have a private right of action (legal protection) under the Lanham Act. 15 U.S.C. s 1114(1) (1994). Remember, although a documented TM or SM common law status has the same protections as with a US federal registration... If for example someone in California takes out a state trademark for the same name in the same type industry and you live in New York sending them a letter of infringement, they most likely will pay no attention to your request. Although you can enforce your trademark rights using the court system it most likely will cost you more than the costs of a federal registration. When sending an infringement letter as a federal registered trademark, infringers most likely will adhere to your request. With having a federal registration your mark is much more easily seen that it is taken (less infringements) and costs less to enforce. A federally trade marked name is considered to be more valuable than a common law standing. A federal trademark status takes about 1-1/2 years to get, having a documented Common Law trademark standing gives you legal protections while you wait. Another advantage of a Federal Trademark is after 5 full years of registration you can file for incontestability for your name meaning that even if someone has proofs of a prior TM (or SM) standing, common law, state, or third party claims of ownership it is to bad they can't take it away. An uncontestable mark can be the single most valuable asset when selling a business.

What is the difference between a State TM, SM, and a Registered Trademark ®?
A State TM or SM represents a mark that is unregistered with the U.S. Patent and Trademark Office. It is a notification that there is a state claim as a trademark. Each state has it's own laws regarding trade marks, however all state trade marks issued must yield to a prior first usage within their state of a same or like name (in the same type industry) on a common law level. A state trademark must also yeild to a federal level trademark status unless the state trademark owner has proofs of first usage across state lines and is willing to oppose the federal standing. The ® is a warning notice to advice the public that the mark is federally registered and is legally recognized. The registration symbol ®, may only be used when the mark is registered in the Patent and Trademark office (valid in all 50 states and territories). A federally trade marked name is considered to be more valuable than a state trademark. A federal trademark status takes about 1-1/2 years to get, having a state trademark will give some legal protections while you wait. Another advantage of a Federal Trademark is after 5 full years of registration you can file for incontestability for your name meaning that even if someone has proofs of a prior TM (or SM) standing, common law, state, or third party claims of ownership it is to bad they can't take it away. An uncontestable mark can be the single most valuable asset when selling a business.

What is the difference between a State TM, SM, and a Common Law TM, SM, standing?
A State trademark TM or SM represents a mark that is unregistered with the U.S. Patent and Trademark Office. It is a notification that there is a state claim as a trademark. As you know a state trademark is registered within a particular state giving rights of trademark within that state. A Common Law TM or SM trademark standing represents a mark that is unregistered with the U.S. Patent and Trademark Office. It is not registered anywhere (it must have legally recognized documentation of it's first usage in commerice) and is only valid within the states it is actively engaged in commerce with proofs of first usage (a hand full of sales most likely wouldn't constitute commerce within a particular state unless it has a SM service mark standing). Each state has it's own laws regarding trade marks, however all state trade marks issued must yield (by federal law) to a documented prior first usage Common Law standing within their state of a same or like name (in the same type industry).

What happens if the same name I already have a TM or SM trademark on is being registered with the Trademark Office?
If you find someone has registered or has applied for registration using your same name within the Trademark Office (and the name is in the same type of business you are in) you can send email to us as "Opposition of Trademark". Generally so long as your documented date of first usage in commerce across state lines is prior to the first usage date of the pending trademark you should prevail. Time is of the essence! You should keep tabs on your trademark name and enforce your rights at all times.

What happens if the trademark name I submitted is found in your search?
Remember trademark law does allow for the same trademark name to be used by different parties as long as they are in different industries. The Internet however presents a problem because if someone is in a different industry they still could want the same domain name. Say a Car manufacture produces a "Star" car and a Tennis company produces a "Star" racket, under current trademark law both could have a trademark on their product names. If the Tennis company has the domain name of "Star.com" then the car company having a trademark on the same name "Star" could try and take the Tennis company to court to take away it's domain. It seems that courts for the most part are currently siding with the company who registered the domain trademark name first (providing it had ownership rights to the mark). So you can have a same name trademark, only if you are in a different industry and it's first come first serve for registering your domain name. If you register a domain name that is a trade marked name and you do not own the trademark for that name you are at risk that your domain will be taken from you some day.

What is the difference between a Trademark and a Service Mark?
A Trademark is either a word, phrase, symbol, or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods of one party from those of others. A Service Mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.

How do I establish legal trademark rights?
Trademark and service mark legal rights arise from either 1) actual use of the mark with legally recognized proof of first usage in interstate commerce, or 2) the filing of a proper application to register a mark in the Trademark Office.

Use of the "TM", "SM", and "®" symbols
Anyone who claims rights in a mark may use the TM or SM designation with the mark to alert the public to the claim, however it must comply legally to be recognized in a court of law. The registration symbol ®, may only be used when the mark is registered in the Trademark Office.

What is the difference between a "trade name" and a "trademark" (or service mark)?
The name that a business uses to identify itself is called a "trade name". This is the name the business uses on its stock certificates, bank accounts, invoices, etc. If, however, a business uses its name to identify a product or service produced by the business, the name will then be considered a trademark or service mark. If a trade name is used as more than just the company name and informs consumers where a product or service is coming from, then it is being used as a trademark or service mark. For example, if the name is used as a noun, ("You can get your traveler's checks from American Express"), it is a trade name; if used as an adjective, ("You can get your American Express traveler's checks here"), it is a trademark.

What types of marks are the most easily protected?
Marks that are distinctive and memorable because they are creative or out of the ordinary or because they are well known through their use over time. Unique logos, such as McDonald's, or made-up words such as Exxon, or words that invoke imaginative images, such as Double Rainbow, or words that cleverly connote qualities about the product or services, such as Slenderella diet foods. Marks that consist of common or ordinary words are not considered inherently distinctive and receive less protection. Examples of these types are people's names, such as Joe's Coffee House, or geographic terms, such as Arizona Insect Control, or descriptive terms, such as Ice Cold Ice Cream.