Trademark and Service Mark
Best Practice Summary
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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.
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.
Benefits to federally
registering trademarks or service marks are:
- Nationwide notice and evidence of the mark owner's claim.
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.
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.
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.
Trademark rights may
be assigned when:
- 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
- The mark is sold.
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.
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:
Patent Trademark Office
2900 Crystal Drive, Suite 900
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
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
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
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.
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
search company may be required.
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.
Related Best Practice Summaries
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