Indiana Intellectual Property Law News
What is a trademark?
A trademark is generally a word, phrase, symbol, or design, or a combination of these
elements, that identifies and distinguishes the source of one party’s goods from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than goods. The terms “trademark” or “mark” are commonly used to refer to both trademarks and service marks. Although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods and/or services listed in the registration.
Do trademarks, copyrights, and patents protect the same things?
No. Trademarks, copyrights, and patents protect different types of intellectual property. A trademark typically protects brand names and logos used on goods and services. A copyright protects an original artistic or literary work. A patent protects an invention. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.
Is federal registration of my mark required?
No. In the United States, parties are not required to register their marks to obtain protectable rights. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides a number of significant advantages over common law rights alone, including:
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);
- Public notice of your claim of ownership of the mark; Listing in the USPTO’s online databases;
- The ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol “®”;
- The ability to bring an action concerning the mark in federal court; and
- The use of the U.S. registration as a basis to obtain registration in foreign countries.
How long does a trademark registration last?
A trademark registration may remain in force for potentially unlimited consecutive ten-year periods as long as the owner meets the legal requirements for post-registration maintenance and renewal and timely files all necessary documents. The owner must file a “Declaration of Use” between the fifth and sixth year following registration, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration. In addition, the owner must file a combined Declaration of Use (or Excusable Nonuse) and Application for Renewal between the ninth and tenth year after registration, and every 10 years thereafter, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration and requesting to renew the registration. If these documents are not timely filed, the registration will expire or be cancelled and cannot be revived or reinstated.
Practice Tip:
Filing a trademark application at the USPTO starts a legal proceeding that may be complex and will require you to comply with all requirements of the trademark statute and rules. Most applicants hire an attorney who specializes in trademark matters to represent them in the application process and provide legal advice. While a USPTO trademark examining attorney will try to help you through the process even if you do not hire a lawyer, no USPTO attorney may give you legal advice. Once you hire an attorney, the USPTO will only communicate with your attorney about your application.
A private Indiana trademark attorney can help you before, during, and after the trademark application process, including helping you police and enforce the trademark registration that may issue from your application. While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks – all done before you file your application. Comprehensive searches are important because other trademark owners may have stronger protected legal rights in trademarks similar to yours even though they are not federally registered. Therefore, those unregistered trademarks will not appear in the USPTO’s Trademark Electronic Search System (also known as “TESS”) database but could still ultimately prevent you from using your mark even if the USPTO registers your mark.
In addition, trademark lawyers can help you navigate the application process to provide optimal protection of your trademark rights, by, for example, accurately identifying and classifying your goods and services, and preparing responses to any refusals to register that an examining attorney may issue. Further, a private intellectual property attorney can help you understand the scope of your trademarks rights and advise you on the best way to police and enforce those rights, including what to do if other trademark owners allege that you are infringing their mark. Enforcement of trademark rights is the responsibility of the holder of the trademark.
The information presented on this site does not constitute legal advice. It should not be considered to replace advice from an Indiana trademark attorney.