LeapLaw's Trademark and Service Mark Best Practice Summary

Adoption of a company name does not protect the name as a trademark or service mark. A trade name that consists of distinctive symbols, pictures or words affixed to products in order to identify a seller's products is generally considered a trademark. Packaging, color combinations, building designs, product styles, and overall presentations can also be considered trademarks so long as they are sufficiently distinctive.

A service mark is any word, name, symbol, device, or any symbol used by a business in commerce to identify and distinguish their services in the marketplace from other businesses' services. Service marks distinguish services rather than products that are represented by trademarks.

Trademarks and service marks receive the same legal protection under the Lanham Act, 15 U.S.C. §§ 1051 - 1127 as well as under state and common law. Common law rights apply to trademark and service marks, hence marks do not have to be registered in order to establish rights. The right to use and register a mark will ultimately rest with the business that first actually used the mark in commerce or registered an intent-to-use application with the U.S. Patent Trademark Office (USPTO). The symbol “TM” or "SM" may be used whether or not the mark has been registered and in fact indicates the business’ claim to the mark. However, certain local or state laws may be applicable to the use.

Nationwide notice and evidence of the mark owner's claim.
Federal courts jurisdiction may be triggered.
U.S. registration can provide groundwork for registration in foreign countries.
U.S. Customs may prohibit entry of products that infringe on a U.S. trademark registration.

Trademark and service mark registrations may also be filed with the secretary of state of a state where the mark will be used in commerce pursuant to state laws. State information, forms and laws may be found at LeapLaw's Intellectual Property Connection. A state registration has no connection to and does not replace the need for federal registration. However, a state registration may assist in providing notice and evidence that a mark is being used in commerce and is enforceable in the state of registration. A small local business may opt for a state registration rather than a federal registration when its mark will be used only within the state in which it does business, such as a convenience store. State registrations may also be useful in staking a claim to the mark and putting the public on notice while awaiting federal registration, which takes much longer than state registration.

Registration applications are submitted to the USPTO. If the trademark application is approved, it is published in the USPTO's Official Gazette as a notification to other parties that the approval is pending. If the application is rejected, it may be appealed.

A company acquires another company or substantially all of the assets of another company;
A credit agreement assumes trademarks and service marks as part of the security interest;

The mark is sold.

In order to assign a mark, one original copy of an assignment agreement between the seller and the purchaser or lender is executed and filed with the USPTO.

Assignments may be submitted online, by fax or via mail. If you want to file a hard copy, it should be sent to together with a check in the amount of $40 for the first assignment, $45 for every assignment thereafter:

US Patent Trademark Office
South Tower
2900 Crystal Drive, Suite 900
Arlington, Virginia 22202

Trademark registrations in the United States are valid for ten (10) years. An owner of a trademark must file a use affidavit during the sixth year of the initial registration.

Section 8 Affidavit
Under Section 8 (a)(2) of the Trademark Act, a Section 8 Affidavit or Declaration is required during the 6th year after the date of registration, or within the six-month grace period after expiration of the sixth year. The Affidavit or Declaration of Continued Use purpose is allow the USPTO to remove marks that are no longer being used in commerce.

A Section 8 Affidavit, specimen, and fee must also be filed on the date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the registration, and each successive ten-year period thereafter. A renewal application (Section 9 Affidavit) must also be filed within the same period.

Failure to file a Section 8 Affidavit will result in the loss of trademark registration. Section 8 and 9 Affidavits may be filed online. For an additional fee per class, filings may be made within the six-month after the due date.

Section 15 Affidavit
To claim that a registered mark is incontestable, a Section 15 Affidavit or Declaration is filed after the mark has been in continuous use in commerce for a period of five (5) years after the date of registration, or date of publication under § 12(c), and states that the mark is still in use in commerce. (Section 15 does NOT apply to marks on the Supplemental Register). This affidavit may be filed within one (1) year after the expiration of either any five-year period of continuous use following registration, or any five-year period of continuous use after publication under § 12(c). NOTE: Because the time for filing a Section 8 declaration coincides with the time for filing a Section 15 declaration of incontestability for many applicants, a combined §§ 8 & 15 form is available.

Prior to filing a trademark or service mark application with the U.S. Patent Trademark Office, trademark searches may be performed to help assure that a similar trademark, particularly deceptively similar, is not already registered.

A preliminary federal trademark searches may be done at the USPTO. State searches may be done, where available at LeapLaw's Intellectual Property Connection. Trademark filings can also be retrieved online at the USPTO.

Information provided on the USPTO may not be completely up to date. For instance, sometimes assignments are available online while other times they are not. Ordering a trademark search from a reliable trademark search company may be required.

A popular trademark search ordered from these companies is called a "full search" which is a comprehensive search of the proposed trademark against current federal and state registrations, common law trademarks and domain names. The search provides information necessary to determine any potential infringement risks and conflicts concerning proposed marks that will be used or registered in the United States. A full search costs approximately $300 for a 5-day turn-around. Expedited services are available for a premium fee.

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