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USA Trademark Officials is not a law firm and none of the information on this website constitutes or is intended to convey legal advice. General information about the law is not the same as advice about the application of the law in a particular factual or legal situation. Individual facts and circumstances as well as legal principles including but not limited to the ones referenced on this website can affect the outcome of any given situation. Legal services provided in connection with your trademark application are provided through Swyft Legal, LLC. USA Trademark Officials and Swyft Legal cannot and do not guarantee that an application will be approved by the USPTO, that a mark will be protected from infringement under common US trademark law, or that any ensuing litigation or dispute will lead to a favorable outcome.
A trademark generally protects a word, phrase, symbol and/or design that distinguishes the source of the goods — what we think of as brand name and brand recognition. A patent generally protects an invention, including the functionality or design, or in other words, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Copyrights, meanwhile, generally protect artistic works such as books, photographs, arts, movies and music.
Under U.S. law, a “common law trademark” is generally established when someone uses a company name, logo or slogan in commerce, even if it is not registered. So, why pay to register a trademark when a common law trademark may already exist? Common law rights ordinarily are limited to the geographic area where the mark is used as opposed to the nationwide protection customarily obtained when a mark is registered with the USPTO. So, unless registered, the use of a mark can be geographically limited, which hampers the ability to expand the brand. On the other hand, a person using a mark in a limited geographic area could be boxed in by someone else who offensively registers a similar mark. In addition, registration of a trademark can give the person holding the registered trademark a leg up in court as to the validity of the mark and the date of usage in later trademark infringement litigation, if it comes to that. There are also favorable remedies available to registered trademark owners in the event of litigation. Finally, once a trademark is accepted by the USPTO, it will be maintained in the USPTO database, which can discourage others from using the mark in the future. Future companies should be on notice that the mark is already spoken for, which should in turn help avoid at least some disputes.
The United State Patent and Trademark Office will not necessarily approve every name for a trademark. The USPTO generally describes names as “generic,” “descriptive,” “suggestive,” “arbitrary,” or “fanciful.” A trademark application is more likely to be registered by the USPTO the less “generic” or more “fanciful” it is.
Generic names are rarely given protection. For example, a company that makes screwdrivers and tries to trademark the name “The Screwdriver Company” is unlikely to be successful. Merely descriptive names are also unlikely to receive registrations from the USPTO. For instance, “The Metal Screwdriver Company” is not likely to pass muster because it merely describes a screwdriver as being made of metal.
Ordinarily, descriptive marks are entitled to trademark protection, but only if they have gained what has been termed “secondary meaning.” In other words, the name has become so famous that despite the generic nature, the public associates the product with a specific company. One example is International Business Machines or IBM. Fledgling companies generally are not well known enough to have attained a secondary meaning. Generic names generally do not attain secondary meaning, so are unlikely to be registered by the USPTO.
The chances of approval normally improve with suggestive marks, which often hint at the quality or another aspect of the company. For example, “Herculean Screwdriver Company” may be more likely to be registered by the USPTO than “Strong Screwdriver,” but conveys a similar meaning. However, the line between a suggestive mark and a descriptive one is difficult to draw. Microsoft, which makes software for microcomputers, and Citibank, which provides financial services, are some well-known examples of suggestive marks. Brand owners often like these names because it gives the consumer a good idea of what the company does without the need for additional (and often expensive) education or advertising to disseminate the name for the particular product or service.
Next on the list are arbitrary marks. These are usually existing words used in a way unrelated to their normal everyday meanings. Hence, Chocolate Screwdrivers may work. The textbook example of the arbitrary mark is Apple Computers – not to be confused with Apple Records.
Finally, fanciful marks are ordinarily the easiest marks to be approved. A fanciful mark may be a made up word or a very rarely used word that has nothing to do with describing the products. “Glotz” for a screwdriver company may work. Some examples of fanciful marks are Yahoo!, Google, Exxon and Spotify.
Other common reasons the USPTO may reject names can include the following:
Trademarks are normally used to register a name, logo or slogan related to the sale of goods.
Service marks are often used to register a name, logo or slogan related to the sale of services.
“In-Use” trademarks applications are commonly filed by companies already selling products and services using the mark. When the mark is not in use yet (e.g., prior to forming the company or beginning to sell goods/services in commerce), an “intent-to-use” application may be more appropriate. An intent to use application can be understood as establishing a place in line to use the mark. After getting approval from the USPTO, they will issue what is called a “”Notice of Allowance.” At this point, you have 6 months to show the USPTO you are now using the trademark in commerce through what is called a “Statement of Use.” However, you are allowed to extend this period of time (for up to a total of three years) you need more time to begin selling your goods/services.
Statement of Use and Extension filings may be done using USA Trademark Officials custom and proprietary portal. When the applicant begins selling their goods/services in connection with their trademark, then they notify”
Most states allow incorporation with a chosen name as long as it does not conflict with another name also registered with that state. For instance, ACME Co. may be available in Texas, but there could be an ACME Co. in New York that has already registered that trademark and under trademark law has the exclusive right to use that name throughout the United States. Name conflicts that may arise when forming a business within a state are generally determined by a different analysis than name conflicts that may arise with trademarks.
While actually using a name to sell a product or service may provide common law trademark rights, being allowed to use a company name or a d/b/a does not typically provide any trademark rights. Registering a trademark with the United States Patent and Trademark Office is generally better than relying upon common law rights and the mere fact that a given state allows the use of a certain name.
Conversely, the availability of a trademark with the USPTO is not a guarantee that a given state will permit the use of that corporate name. The USPTO generally does not search individual state or d/b/a filings. But, USA Trademark Officials comprehensive search reports cover both the USPTO, state and d/b/a filings as well other sources to help determine the availability of a desired brand.
The trademark application includes a space for a description of goods and services. The description is usually at least two words but generally not more than a sentence that describes the goods or services.
Writing a description of use is sort of a Goldilocks and the Three Bears exercise. Too broad, and the application may get rejected if the USPTO thinks it infringes on another trademark when it really doesn’t. Too narrow, and the application may not reach the full range of a business’s offerings. The “just right” description of use typically meets the following criteria:
A trademark registration for a company name may also protect the company’s web address when it encompasses the company name followed by “.com.” The USPTO says the .com or other gTLD does not identify the source of goods and services and so it generally does not consider the .com part of a company’s name. An online business that commonly refer to itself by the name of the website may want to only register the domain name.
Even without registering the domain name as a separate mark, a registered trademark can help prevent cybersquatting and or the use of confusingly similar domain names. In the United States, the Anti-Cyber Squatting Consumer Protection Act and the Uniform Domain Name Dispute Resolution Process may provide additional rights and remedies to holders of registered trademarks.
After an application is filed, the USPTO states that they will begin reviewing it in about 8 months. Their review takes about a month. If there are no issues, the USPTO will publish the mark in the Official Gazette to see if anyone in the public challenges the mark. If there are no challenges within 30 days, the mark will register approximately three months later.
If the USPTO has any issues with the application, they may issue a letter, which is referred to as an “Office Action.” At that point, there are two options: respond to the USPTO or abandon the application. There is typically a 3 month deadline to respond to the Office Action, and failure to address the concerns of the USPTO will result in the abandonment of your registration attempt. You should consider obtaining counsel to address an Office Action if you’ve received one. You may request assistance in such matters from the attorneys of Swyft Legal through our website.
If the USPTO continues to challenge the application, there is an appeal process with the Trademark Trial and Appeal Board (commonly referred to as the TTAB). Challenges by a third party to trademarks are also reviewed by TTAB. TTAB proceedings are very similar to a trial in court, and have complicated procedural rules that even non-lawyers are expected to follow. If you find yourself involved in a TTAB proceeding, you should seek assistance from an attorney.
Once properly registered, trademarks registrations generally need to be maintained by filing the appropriate forms at specific points in time. The first of these forms is the Declaration of Continued Use which is due between the 5th and 6th anniversary date of the registration. The next filing, the combined Declaration of Use and Application for renewal is due renewal usually falls between the ninth and tenth year. Thereafter combined Declaration of Use and Application for Renewal is due every ten years. You may seek assistance through USA Trademark Officials to help with your renewal filings.
At the five year mark, assuming continued use of the mark, you may also pursue a “Declaration of Incontestability,” which provides additional protection under trademark law. This may prevent others from contesting the trademark on several common grounds, such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark someone else began using first; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.
The USPTO may object to the application or send what is referred to as an Office Action or Action Letter. This can happen for a variety of reasons, including for small administrative matters, such as a clarification of the goods and services being provided, or for more substantive issues such as when the USPTO determines the requested mark is too similar to one already in existence or the mark is too generic or merely descriptive. Applicants have the right to respond to the trademark office to address small administrative matters and/or make the case as to why any substantive issues raised in the Office Action can be overcome. You should consider obtaining counsel to address an Office Action if you’ve received one. You may request assistance in such matters from the attorneys of Swyft Legal through our website.
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Usually, determining whether something can be copyrighted is easy. Books, movies, and songs are copyrightable. Artistic drawings, paintings and photographs are also copyrightable. When you start moving towards more technical works and drawings, it can become a little trickier. Generally speaking, drawings, photographs, and other two-dimensional and three-dimensional expressions that visually depict three-dimensional objects are copyrightable. At the USA Trademark Officials, we can help you copyright your:
A trademark protects a word, phrase, symbol and/or design that distinguishes the source of the goods. These are brand marks that give a particular product or service a distinct identity or help consumers distinguish between various products or services. To learn more about trademarks, go to our FAQ’s on trademarks. Copyright, on the other hand, protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. A patent protects “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” usually consisting of inventions, including their functionality or design.
A patent gives the owner the exclusive right to manufacture products or employ processes covered by the patent for 20 years from the earliest priority date. A trademark, if properly maintained, can last forever. A copyright generally lasts for 70 years plus the life of the author as explained below.
While you do not have to register your work in order to receive copyright protection, registration will guarantee you several additional protections including:
To prove a copyright infringement, a copyright owner must establish:
Copyright law may extend to a drawing or design, but not to the actual three-dimensional product depicted in that design. In other words, you may be able to copyright a drawing of a chair, but generally speaking, copyright law would not allow you to keep people from making copies of the actual chair. The chair is what is referred to as a “useful article” and is not the subject of copyright law.
Sometimes, you can register a number of works in a single application that protects each individual work, as part of what copyright law calls a collection or “group registration of unpublished works”. This traditionally applies to albums, collections of essays or articles, or collections of photographs all created by the same person. You can file a copyright registration for a “collection” if (you meet the following requirements):
As part of the copyright application process, you will have to identify the “author” of the work. The “author” is the person responsible for the creation of the work, and the copyright in the work immediately becomes the property of the author. That is easy to figure out when one person created it and is responsible for it, as is the case most of the time. When there is employment or a payment for someone else to create something, it can get a little more complicated.
Copyright law recognizes something referred to as a “work made for hire.” Just because you pay for someone to create a drawing, computer program or design a website, does not mean you own the copyright to it. To own the work done by someone else, it must be a work for hire which means that it was created by an employee in the course and scope of their employment. This simply means that they created the work as part of their job and it was part of their duties to create these types of things. This would cover the programmer working for Google or the illustrator working for Pixar.
But what about contractors? When using outside contractors to create things, it usually requires a written contract assigning the copyright or intellectual property rights to the person paying for the creation for the person paying to own the copyright.
More specifically, Section 101 of the Copyright Act defines a “work made for hire” as: (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
Through international agreements, many countries will respect your copyright when filed through the U.S. Copyright. For a listing of countries and what rights apply, check out Circular 38a, from the U.S. Copyright Office.
A copyright owner is entitled to statutory fees and attorneys’ fees along with actual damages caused by the infringement. Actual damages may include lost profits and “reasonable royalty rates,” or what a willing buyer would have been reasonably required to pay a willing seller as a licensing fee for the actual use of the copyrighted material by the infringers. A copyright owner may also seek “any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages.” Additionally, a copyright owner may be entitled to an injunction to prevent the infringer from copying or selling the infringing materials.
The U.S. Copyright Office receives over 600,000 applications per year. It is taking at least nine months for the Copyright Office to review applications at this time. You can expect a letter, telephone call or email from a Copyright Office staff member if further information is needed.
If your application allows for electronic submission, we will use that functionality. The types of things eligible for electronic submission include:
For works where a hard-copy is required, you will be provided a mailing label to affix to your package and mailing instructions from us. NOTE THAT YOU WILL NOT GET BACK THE SUBMISSIONS YOU PROVIDE TO THE U.S. COPYRIGHT OFFICE.
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