Trademarks and Service Marks which are used in interstate or foreign commerce may be registered with the United States Patent and Trademark Office. Trademark rights are used to prevent confusion in the marketplace, but not to prevent others from making similar goods or from selling similar goods or providing similar services under a clearly different Mark.
A Trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods 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.
The terms “Trademark” and “Mark” are commonly used to refer to both Trademarks and Service Marks.
NOTE: To file a Trademark or Service Mark application, you must be using the Mark with services or goods in the stream of interstate commerce or have a bona fideexpectation that the Mark will be used in the stream of interstate commerce within the next six (6) months.
Registering a Mark is not legally mandated; however, having a Federal Trademark Registration on the Principal Register provides several advantages:
provides a constructive public notice of the registrant’s claim of ownership of the Mark;
a legal presumption of the registrant’s ownership of the Mark and the registrant’s exclusive right to use the Mark nationwide on or in connection with the goods and/or services listed in the registration;
the ability to bring a legal action concerning the Mark in federal court;
the use of the U.S Registration as a basis to obtain registration in foreign countries; and
the ability to file the U.S. Registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Using the Trademark Symbols TM, SM & ®
When you claim rights to a Mark, you may use the “TM” (trademark) or “SM” (Service Mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the Federal Registration symbol “®” only after the USPTO actually Registers the Mark, but not while an application is pending. Further, you may use the “®” with the Mark only on or in connection with the goods and/or services listed in the Federal Trademark Registration.
BASIS FOR FILING
A Trademark application should include your basis for filing. Most applicants base their application on their current use of the Mark in commerce, or their intent to use their Mark in commerce in the future.
What is “In Use”? 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 used simply 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. What is “Intent To Use”? If the Mark is not being used in commerce, but will be in the near future, you may file based on a good faith intention to use the Mark in commerce within the next six (6) months. You do not have to use the Mark before you file your application. If you file based on “Intent to Use,” you must begin use of the Mark in commerce before the USPTO will Register the Mark. When the Mark is used, you must file an“Allegation of Use” form.
OTHER POSSIBLE FILING BASIS
Although not as common, you may base your application on international agreements. Under certain international agreements, if you qualify, you may file your Mark in the U.S. based on a foreign application or on a registration in your country of origin.