TRADEMARK FAQ

What is a trademark and why do I need one?
What is the USPTO and what can they do for my TM and me?
What are the different kinds of TMs?
Once I choose my TM, how can I file it with the USPTO?
Do I need to file an International Application?
How will my TM be protected?

What is a trademark and why do I need one?

A trademark, or TM, is a design, symbol, word, or slogan that is readily identified with your particular business for the purposes of distinguishing your brands from others. It can come in different forms and combinations, such as:

Words (group of): This category includes both real and fictitious words. Examples: Levi’s (a distinctive last name) and Kleenex (a word that was invented).
Symbols (designs): This category includes designs that are used to represent an abstract idea. Example: “Golden Arches” of the McDonald’s Corporation.
Slogans: This category includes memorable phrases used for advertising purposes. Example: Nike’s “Just Do It”

You want to TM words and symbols attributed to your business because:

It restricts other people from using ideas and names that are associated with your particular brand.
Once you have established your brand, you want to maintain and protect the goodwill that comes with your particular name or service.

What is the USPTO and what can they do for my TM and me?

The U.S. Patent and Trademark Office is the governing body that oversees TM affairs in the United States. Depending on the strength and uniqueness of your TM, the USPTO will place your application into one of two groups:

Distinctive TMs that are easily identifiable with your particular business are put into the Principal Register. For a period of up to 10 years, your trademark will have the protection of this office in regards to anyone trying to use your TMs. You can keep renewing TMs for 10-year block periods after the expired first term.
For TMs that are not as unique, the USPTO funnels them into a category known as the Supplemental Register. This group does not offer you the protection that you would receive under the Principal Register. Though they’ll be warned of their infringement, others will still be able to use your mark. You can be on the Supplemental Register for a period of up to 10 years, with an option to renew. If your TM becomes known worldwide, or if your TM has been in the Supplemental Register for at least five years, you have the option of filing a petition to move your TM from the Supplemental Register to the Principal Register.

What are the different kinds of TMs?

The USPTO recognizes four different kinds of TMs. The office groups them based on how easy it would be to trademark and market your particular phrase or symbol.

- Descriptive Marks: Having words in your TM that specifically describe a quality, purpose, or function of your goods or services would qualify as a descriptive mark. They are the easiest to market and hardest to register. It would take years of solid customer recognition to take a descriptive mark and be able to register it. Example: Vermont Teddy Bear Company. Though it’s not the only company that sells teddy bears in Vermont, the Vermont Teddy Bear Company has spent a great deal of time building the goodwill associated with its brand.

-Suggestive Marks: These marks are a little easier to register than descriptive marks, but they are a little harder to market. The TM qualifies as suggestive if it indirectly hints at a particular good or service without naming it outright. Your consumers would have to use a little imagination to correctly determine what goods or services your suggestive TM is implying. Example: Jaguar. Jaguars are noted for their killer stealth and speed, but your consumers would have to make a jump to link this mark with an automobile company.

-Arbitrary Marks: These marks are distinguished by the fact that the normal meaning of the word(s) used in the TM has nothing to do with the actual product or service being offered. These marks are comparatively easy to register, but hard to market. Example: Apple Computers. Apples don’t have an inherent connection to computers, but a lot of money and time was invested in this trademark to establish its widely recognizable status.

-Fanciful Marks: This category is the easiest to register, but the hardest to market. In essence, a fanciful mark is derived from words or symbols that have never existed before. Example: Starbucks. The unique mermaid logo came from the imagination of designers.

Be advised that this design continuum is not subjected to your preference. Your trademark will fall into one of these categories based on the judgment of the USPTO.

Once I choose my TM, how can I file it with the USPTO?

Depending on the aspirations of your business model, you will need to have your TM compared to other registered marks that are on the State, Federal, and Common Law levels (business directories, web domain names, etc). Visit Trademark Services to find out more about TM4’s comprehensive search programs.

Note: Even if you do a search and find that your TM doesn’t conflict with other registered marks, it doesn’t mean your TM will automatically be approved by the USPTO.

There are standard forms that you can fill out and send to the USPTO. But these forms are very generic and responses from the office are not immediate. With TM4, our intellectual property legal team will create specific forms that will greatly speed up the approval process.

The approval process can take up to a year or longer. During this time, known as “trademark prosecution,” attorneys at the USPTO will examine your application and discuss possible complications. To properly file your papers and get your trademark approved in a timely manner, you’ll need legal assistance. Poor trademark filings will lead to legal complications. Having TM4 as your legal support will help simplify the process without compromising your trademark protection.

Do I need to file an International Application?

When you’re applying for a U.S. registration application, consider the probabilities of your business expanding into foreign markets. Here are your options for registering with international markets:

If you plan to sell your goods or services in a particular country, you’ll have to file for registration in that same country.
If you plan to sell your goods or services in multiple countries, you’ll have to file an application for whichever region you choose. These are your options:

European Community Trademark (ECT): One application for this filing system covers you in the following countries: Austria, Bulgaria, Belgium, Czech Republic, Cyprus, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, and United Kingdom

International Registration filing system (IR): Slightly different than the ECT, this application process offers you more options in terms of countries. However, you’ll have to specifically pick the ones in which you’ll want to market your goods or services. You may choose from the following list: Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People's Republic of Korea, Denmark, Egypt, Estonia, European Community, Finland, France, Georgia, Germany, Greece, Hungary, Iceland, Iran (Islamic Republic of), Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, Norway, Oman, Poland, Portugal, Republic of Korea, Romania, Russian Federation, San Marino, Serbia, Sierra Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The former Yugoslav Republic of Macedonia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Vietnam, and Zambia.

How will my TM be protected?

TM4 offers a comprehensive monitoring service to help you avoid complications with your trademark. We monitor new TM applications, as well as the Internet, for anything that would be in violation of your rights. If a violation is found, we offer protective services in the form of Trademark Disputes. See our SERVICES page for more information about our specific protection services.

Improper use of your trademark should be avoided. Blatant misuse can be a major contributing factor in you losing your registration with the USPTO. Here are some general guidelines to follow:

Proper Trademark Use:

When you file with the USPTO, you’ll enter into an agreement as to how your trademark will be used. If you violate this agreement by using your trademark in ways that were not filed with the USPTO, you’ll be in jeopardy of losing your registration. Example: If you agreed to have your TM logo be printed on the product, or on the packaging of the product, then that’s how you must use your logo. You cannot use that same trademark reserved for tangible goods on your advertising or company letterheads.

Proper Service Mark Use:

Proper use of a service mark means directly associating the mark with the underlying services such as radio, television, print ads, or advertising on the Web. You’ll have to stay within the parameters you agreed to with the USPTO.

To make sure that your trademark application is processed efficiently, call TM4 today at 877-5-TRADEMARK (877-587-2336).