TRADEMARK FREQUENTLY ASKED QUESTIONS

 

1.  Does the USPTO determine trademark infringement?

2.  Why should I obtain a trademark?

3.  What is a trademark?

4.  May a trademark filing company represent me before the USPTO?

5.  Will my information be public?

6.  What is "interstate commerce"?

7.  What are "common law" rights?

8.  My spouse owned a trademark registration and has since died. Do I own it now?

9.  What if someone else is using my registered mark on related goods and services?

10. Is a federal registration valid outside of the United States?

11. Are there any restrictions on use of the "®" symbol?

12. How long does a trademark registration last?

13. May I assign or transfer the ownership of my trademark to someone else?
14. If I filed based on an "intent to use" the mark, when must I allege actual use of the mark in commerce?

15. How long will it take for my mark to register?

16. Is registration of my mark guaranteed?

 

Q:        Does the USPTO determine trademark infringement?

 

The USPTO examines trademark applications to determine if there is likelihood of confusion between the mark in the application and a previously registered trademark or another mark in a prior-pending application. If no conflict is found and all other statutory requirements are met, the examining attorney can approve the mark for publication. The USPTO has no powers of enforcement concerning the use of trademarks in the marketplace.

 

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Q:        Why should I obtain a trademark?

 

Here are some specific benefits of having a federally registered trademark:

 

        Constructive notice nationwide of the trademark owner's claim.

        Evidence of ownership of the trademark.

        Jurisdiction of federal courts may be invoked.

        Registration can be used as a basis for obtaining registration in foreign countries.

        Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods. See U.S. Customs Service

 

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Q:        What is a trademark?

 

The term "trademark" is often used to refer to any of the four types of marks that can be registered with the USPTO. The two primary types of marks that can be registered with the USPTO are:

        Trademarks - used by their owners to identify goods, that is, physical commodities, which may be natural, manufactured, or produced, and which are sold or otherwise transported or distributed via interstate commerce.

         Service marks - used by their owners to identify services, that is, intangible activities, which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.

 

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Q:        May a trademark filing company represent me before the USPTO?

 

Only licensed attorneys may represent you before the U.S. Patent and Trademark Office (USPTO). If you hire someone to represent you, he or she must be an attorney licensed to practice law in a U.S. state and be a member in good standing of the highest court of that state. Attorneys from other countries, except certain Canadian attorneys and agents representing Canadian filers, may NOT practice before the USPTO.

 

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Q:        Will my information be public?

 

All data you submit to the USPTO, including your phone number, e-mail address, and street address, but not your credit card and banking information, is public record and is viewable on the Internet. Do not submit personal identifying information that is NOT required for a filing, such as a social security number or driver's license number.

 

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Q:        What is "interstate commerce"?

 

For goods, "interstate commerce" generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" generally involves rendering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).

 

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Q:        What are "common law" rights?

 

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.

 

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Q:        My spouse owned a trademark registration and has since died. Do I own it now?

 

Perhaps. Because this depends on state law, the USPTO cannot provide a definite answer for all factual situations. You should consider contacting an attorney.

 

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Q:        What if someone else is using my registered mark on related goods and services?

 

You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting an attorney specializing in trademark law. Time can be of the essence.

 

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Q:        Is a federal registration valid outside of the United States?

 

No. However, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.

 

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Q:        Are there any restrictions on use of the "®" symbol?

 

There are three important restrictions on use of the "®" symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the federal registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don't maintain the registration or it expires). Note: Because several foreign countries use "®" to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.

 

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Q:        How long does a trademark registration last?

 

The registration is valid as long as you timely file all post registration maintenance documents. You must file a "Declaration of Use under Section 8" between the fifth and sixth year following registration. In addition, you must file a combined "Declaration of Use and Application for Renewal under Sections 8 and 9" between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated.

 

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Q:        May I assign or transfer the ownership of my trademark to someone else?

 

Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee.

 

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Q:        If I filed based on an "intent to use" the mark, when must I allege actual use of the mark in commerce?

 

You must file your Allegation of Use either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted.

 

If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request form and the required fee(s) to avoid abandonment. The applicant must continue to file extension requests every 6 months calculated from the issue date of the notice of allowance until the statement of use is filed. A total of 5 extension requests may be filed.

 

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Q:        How long will it take for my mark to register?

 

The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. You may view the application processing timelines here.

 

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Q:        Is registration of my mark guaranteed?

 

No. The examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2.

 

The most common reasons for refusing registration are because the mark is:

 

       Likely to cause confusion with a mark in a registration or prior application;

       Descriptive for the goods/services;

       A geographic term;

       A surname;

       Ornamental as applied to the goods.