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Frequently Asked Questions About Trademarks

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Questions About Trademark Searches

 

Questions About Trademark Registration 

 
 
 
What is 'trademark search'?

A trademark search is a search of various databases for the purpose of identifying identical or potentially similar trademarks, their status, and their owners. The reliability of the  trademark search depends on the number and the quality of the databases searched, and on the search techniques used (wild cards, Boolean operators, phonetic searches, etc).

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Do I need a trademark search?

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For most businesses, whether they are for-profit or non-profit, the answer is yes. It is wise to decide to invest in a business name, product or service name (or logo) only after you have a comfortable degree of certainty that the name or the logo is yours. Or at least, you should know the trademark risk you assume, before spending money and other resources in promoting the respective name or logo.

A good analogy can be found in the construction field: you would not want to build your house on an untested ground. Would you? The risk you would take would be directly proportional with the value of the house you want to build. Similarly, the more serious/valuable the business you want to build is, the higher is the risk you take if you do not make/order a trademark search.

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What is 'trademark risk'?

Trademark risk is the risk that someone else can claim rights in your trademark, or even worse, that someone else can claim superior rights to yours. If someone else can claim rights in your trademark, obviously your trademark is a weak mark. Furthermore, if someone else has begun using the trademark before you did, he is a senior user, and therefore, he may have superior rights in the trademark. A senior user may force you to stop using the trademark, and may sue you for trademark infringement. This is especially true when the senior user has the financial means to do so (e.g., a large corporation, etc).

Obviously, the more extensive your trademark search is, the more revealing the search results are, and therefore, the less is the trademark risk you take.  For example, if you make/order a federal search, you decrease the risk that the USPTO will deny registration of your trademark, and therefore, you decrease the risk of loosing the filing fee ($325) and other expenses; you also decrease the risk that you will infringe someone else's rights in a federally registered trademark. However, you are still exposed to the risk that someone else is already using the same or a similar mark, and did not register it with the USPTO.  This could be a serious problem, especially when that someone is a senior user. This is because in United States rights in a trademark may be acquired by use of the trademark in commerce, and registration generally only adds to those rights. This problem can be addressed, and the trademark risk further reduced, with a comprehensive search which includes the federal, the state (50), the common law, and the domain names search.

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How much does it cost to order a trademark search?

LegalArrow« can perform a federal trademark search for $89, and a comprehensive search for $269. The cost is smaller when a search service is combined with a registration service. Compare our packages for details.

When should I order a trademark search?

Ideally, you should do a trademark search before you start your business, and before you launch a new product or service. And once you determine that the trademark is available, you should immediately register it.

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Can I do a trademark search on my own?

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Unless you are familiar with search techniques (wild cards, etc), and you know how to access and use the appropriate databases, the answer most experts would agree with is no. However, you should always do some preliminary investigation, at least by simply making a search in Google, to see what comes up. The preliminary investigation you make reduces the risk that you pay for a professional search only to find out that the trademark is not available.

What is a 'word' trademark search?

A 'word' trademark search involves searches for business name, product or service name, or slogan, as they appear in standard characters; no special fonts, no colors, or design is part of the trademark. Example: 'flexone'.

What is a 'design' trademark search?

A 'design' trademark search involves a design, logo, or word mark with special fonts, and or colors. Example: FlexOne.

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What is a 'direct conflict' trademark search?

A 'direct conflict' search is a preliminary search intended to uncover only identical word trademarks previously registered with USPTO. No wild cards or other search techniques are used. It has the benefit of avoiding an almost certain denial of the registration by the USPTO, and the money loss that comes with it. However, in order to substantially decrease the risk of having the registration denied by the USPTO because of conflict with similar trademarks, a federal trademark search is required to uncover potentially similar marks prior to filing.

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What is a 'federal' trademark search?

A 'federal' trademark search is made for the purpose of uncovering not only identical, but also similar word trademarks already filed for or registered with USPTO. Wild cards, Boolean operators, and/or other search techniques are used to achieve this goal. The search substantially decreases the risk that the trademark registration will be denied by USPTO because of conflicts with similar trademarks already applied for, or registered with the USPTO. A rejection by the USPTO would mean loss of time and money, including the filing fee.

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What is a 'state' trademark search?

A 'state' trademark search is made for the purpose of revealing any identical or similar word trademarks previously registered at state level. The comprehensive search done by LegalArrow« includes a search of the trademark databases of all 50 states.

What is a 'common law' trademark search?

A 'common law' trademark entails the exploration of several common law databases like: IRS Cumulative List of Organizations, InfoBase Telephone Directories, Gale Group Data Sources, Dun & Bradstreet, and/or other similar databases. This search has the purposes of uncovering identical or similar trademarks others are using without registering them at state or federal level. Simply because of use, the users of these trademarks may have common law rights in these trademarks; from there the name 'common law' search.

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What is a 'domain names' trademark search?

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A LegalArrow« comprehensive search includes a search of the most popular domain names (.com, .net, .org). While a registrant of a domain name may not necessarily have trademark rights in that name, you may want to know if the domain name is available. Furthermore, if that domain name is also used as a trademark, conflicts may arise and you want to know about them before you commit to a trademark.

What is an 'international' trademark search?

LegalArrow« can also make a search for trademarks registered internationally. It includes the following countries and organizations: Canada, World Intellectual Property Organization (WIPO), European Community (EC), Germany (DE), and the United Kingdom (UK).

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What is a trademark?

A trademark is a word, a group of words, symbol, or a design used by a business to clearly and effectively inform current and potential customers about the origin of its goods or services. In other words, a trademark is the ID card for a good or service a business is offering in the market place. The consumers are relying on the trademark to identify the source of the goods or services they are interested in, and they make quick buying decisions based on the reputation of the trademark owner.

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May I register any word(s) or design I want as my trademark?

First, as explained earlier under 'Questions About Trademark Searches,' generally you may not register with USPTO an identical or similar trademark which was previously registered by someone else. A similar trademark will not be registered if it conflicts (i.e., it is "confusingly similar") with another pending or registered trademark. To determine this, USPTO looks primarily at the similarity of the marks, and the goods or services associated with each mark. Furthermore, generally it is not wise to register a trademark used by someone else, even if it was not registered, because as explained earlier, the mere use of the mark may give trademark rights to the user.

Secondly, USPTO will not generally register trademarks if they include geographic names, as for example "California Apple" proposed to be used to identify apples.  Also, generally the USPTO will not register a generic mark, as for example "Apple" to sell apples, or a descriptive mark (e.g., "Juicy Apple" for apples). The mark has to be fanciful (e.g., "Alpexis" for apples),  arbitrary (e.g., "Apple" to sell computers), or at least suggestive (e.g., "Polar Bear" for refrigerators). This is not an exclusive list, but some common reason why registration may be denied by the USPTO, and why you may be denied any rights in a trademark even if you were the first to use it in commerce.

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Do I need to register my trademark at federal level?

In the past, if you ran a small car repair shop for example, in a small town, with no plans to expand, the answer was probably no. You may have not even needed to register your trademark in your state. Someone else could run a similar operation under the same name in another state, or even in the same state. Irrespective of who used the mark first, because of geographically separated markets, both users (or many users) could use the mark simultaneously. However, in today's internet environment, these geographical boundaries become increasingly meaningless. You or another user may start a website, or advertise online in another way, and here you are, consumer confusion and trademark conflict may occur. Therefore, even for a small business, federal trademark registration is generally deemed a wise investment.

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How long does it take to register a trademark?

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LegalArrow« can make a trademark search and/or apply for registration for you in 48 hours. The sooner you apply for trademark registration the better, as the application date may be your priority date under certain circumstances. After applying for registration, USPTO attorneys will review your application (mark description, goods and services description, specimen, etc) and search for conflicts. Assuming that there are no problems (conflicts, oppositions to your trademark registration, etc), you may receive a registration certificate from the USPTO in about six to nine months.

How much does it cost to register my trademark?

We can prepare and electronically file your application for $129. The USPTO charges $325 as filing fee, therefore the total cost is $454. Or, we can prepare your paper trademark application for $79; you can then mail your paper application to USPTO with a check for $375.

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What is the difference between a trademark and a service mark?

A trademark refers to a mark used to identify goods, and a service mark, obviously, identifies services. This distinction becomes less and less significant in today's market place. It is common to use the word trademark to refer to a mark for services.

What is the meaning of the symbols «, Ö, or SM?

You can use the symbol « next to your trademark only after you received a registration certificate from the USPTO. The Ö or SM symbols can be used before registration, anytime you want to alert others that you claim some trademark rights in your unregistered trademark (Ö), or service mark (SM).

What is a 'standard characters' trademark?

A 'standard characters'  trademark is a mark which consists of words, letters, numbers, or a combination thereof, with no design element, and no claims to font style, size, or color (e.g., Flex21). This mark type provides broad rights and protection, because the owner can use it in any manner of presentation he/she chooses (e.g., Flex21, Flex21, etc).

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Can I register special fonts, colors, or designs associated with my trademark?

Yes. If your mark is a design (logo), includes a design element, or is a word mark (words, letters, numbers) with claims to font style, size, or color, it is called a 'special' mark.

Do I have to use the trademark before I apply for federal registration?

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No. USPTO allows you to apply for trademark registration based on your declared good faith intent to use the trademark in commerce. The application is called 'intent-to-use' application. If approved, you have approximately six month to start using the mark and submit an 'allegation-of-use' form to the USPTO, together with a specimen (see below). LegalArrow« can prepare and file both applications for you.

What is 'use in commerce'?

For the purpose of obtaining Federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark.

Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. >LEARN MORE.

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What is a 'specimen'?

A specimen is a proof that the mark is actually used in commerce in connection with the goods or services listed in the application. For goods, an acceptable specimen is a label for example, which shows the mark on the goods or their packaging. For services, an acceptable specimen is an advertisement showing that the respective services are marketed using the mark. A specimen is required if applying for registration on the 'use-in-commerce' basis, meaning that you are using the mark to sell your goods or to advertise for your services. It is also required within approximately six months after filing an 'intent-to-use' application.

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