A service mark is very similar to a trademark, except that it is used to distinguish services in the stream of commerce. Like a trademark, a service mark can include words, names, symbols and logos. Typically, trademarks appear on the actual product or its packaging, while service marks appear mostly in advertising for the services. In this law library, when we use the term “trademark,” we generally mean both trademarks and service marks.
If you wish to register your trademark or service mark, legal services can help you obtain a trademark.
Establishing Trademark Rights
The Trademark rights of your logo design, name or brand identity are established by either (1) actually using the mark, or (2) filing a proper application to register a mark in the Patent and Trademark Office (PTO). Registering with the PTO is not necessary for establishing trademark rights. However, registration of your mark can help secure benefits such as giving everyone notice of your claim to the mark, having evidence of ownership of the mark, being able to invoke federal court jurisdiction, being able to use the registration as a basis for obtaining registration in foreign countries and being able to prevent the importation of infringing foreign goods.
There are two types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application with the PTO has the ultimate right to register. The right of use can be more difficult to determine, especially when two parties begin use of a mark without knowledge of the other party and without registering the mark. In a case like this, only a court can decide who has the right of use. It should be noted that federal registration provides a significant advantage in a court proceeding if you find that someone is using your trademark.
As mentioned before, using a template driven software like Logo Design Studio, makes establishing your trademark extremely important, especially if you plan on marketing your identity or selling your name on a national or international level. Since other Logo Design Studio users will also have access to the same logo templates, determining the type of business, service or product and how it relates to similar marks is an important part of the Trademark process. Anyone wanting to establish a claim on the look of a mark in commerce, based on a common logo template from Summitsoft’s logo design software, should contact a lawyer or legal service as soon as possible.
Searching for Conflicting Trademarks
While it is not required that you search for conflicting trademarks, it can be a good idea to do so anyway. Should there be any existing trademarks registered that conflict with yours, your application will be denied, and your filing fees will not be refunded. Doing a little research ahead of time can save a headache later.
Additionally, it should be noted that because trademarks can be created through common law by using the mark, it is also advisable to search for common law trademarks. It is less important to conduct a common law search, but if you wish to, you should start with phone books, industrial directories, state trademark registers.
You can search for registered trademarks at the USPTO’s website: http://www.uspto.gov/.
There are four basic requirements for filing a trademark (or service mark) with the United States Patent and Trademark Office. The first requirement is the mark must be filed under the name of the actual owner of the mark. The owner of the mark is the person who controls the nature and the quality of the goods sold or the services rendered under the mark. The owner does not have to be an individual; the owner can be a partnership, a corporation, or an association. If the owner is a corporation, then the applicant’s name is the name of the corporation. If you are a one-person operation or small business using Summitsoft’s logo design software, Logo Design Studio, to establish your look, you can also use a service to get non-profit status, or become an LLC or DBA.
The second requirement is that the applicant specify what type of entity it is (individual, corporation, etc). The applicant must fill in national citizenship, although being a U.S. citizen is not required.
The third requirement is the application must be based on an actual use or on a real intention to use the mark in business. For the application to be based on actual use, the applicant should indicate what products he or she has actually placed the mark on and sold for business. A mark for services will be considered “actual use” when it is used or displayed in the sale or advertising of services and the services are actually rendered. This can be easily done when using Logo Design Studio, or other logo design software from Summitsoft, by creating your name and mark and then displaying the mark(s) on your website, newsletters, advertisements, packaging or any other marketable material.
When you are filing an intent-to-use application, it is sufficient that you make a statement in good faith that you plan to use the mark in commerce. However, you will have to actually use the mark before it can actually be registered. The USPTO will first issue the Notice of Allowance, which gives you six months to either use the mark in commerce or file for an extension. Once the Statement of Use is filed, the USPTO will issue the registration certificate.
The final requirement is that you submit a drawing of the mark and a specimen of the mark when the application is based on actual use. A specimen is a real-world example of how the mark is actually used on the goods or in a service. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. Logo Design Studio makes it easy to print a drawing of the mark by allowing you to export or print directly from the software; this includes creating a PDF document that clearly shows your logo design, name and/or other mark that can then be printed and sent in with the specimen.
For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual specimens are bulky, or larger than 8½” x 11″, then the applicant must submit facsimiles, (e.g., photographs or good photocopies) of the specimens. A drawing is a page that depicts the mark you seek to register. In an application based on actual use, the drawing must show the mark as it is actually used, i.e., as shown by the specimens. In the case of an application based on a real intention to use, the drawing must show the mark as the applicant intends to use it. A drawing is necessary even when a specimen is submitted.
The Process of Obtaining a Trademark
The registration process generally takes six months from start to finish, although it can last longer if legal issues arise during the process. After filing an application, the USPTO will assign your file a serial number and mail you a receipt about two months after filing. An attorney for the USPTO will examine the application and will publish the mark in the Official Gazette. Other parties will have thirty days from the date of publication to object to the mark. Thereafter, the USPTO will either issue a Certificate of Registration (if the application was based on actual use) or will issue a Notice of Allowance (if the application was based on intended use).
Grounds For Refusal
The USPTO will refuse to register a mark if it does not function as a trademark or service mark. Not all words, names, symbols or devices function as trademarks. For example, names which merely describe the goods on which it is used cannot be registered. You cannot register the mark “keyboard”, for example, for a computer keypad. To give your mark the best chance for consideration, make sure to shy away from generalized terms or descriptions. Instead, try adding a specific detail or personal twist. For example, “logo design” is too general to trademark, but “Kay’s Logos” may give you a better chance of trademark registration.
Additionally, Section 2 of the Trademark Act contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as:
1. The proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
2. The proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
3. The proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
4. The proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
5. The proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant’s goods or services are likely to cause confusion, mistake, or deception;
6. The proposed mark is merely descriptive or deceptively misdescriptive of applicant’s goods or services;
7. The proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant’s goods or services;
8. The proposed mark is primarily merely a surname; and
9. Matter that, as a whole, is functional.
Once you have registered your trademark, you will have legal ownership of the trademark. Additionally, you can have the U.S. Customs Service prevent the importation of goods that infringe on your trademark rights. However, if a domestic company infringes on your trademark, it is probably best to consult an attorney specializing in trademark law. The factual situation of your particular case will determine the best way to resolve the dispute. This is a decision that an attorney can help you make.
For a trademark registration to remain valid, an Affidavit of Use must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee.
Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.
The registrant must file a renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.