Last month we covered the differences between the terms Trademark, Copyright, and Patent. To summarize, you patent an invention, trademark the brand name, and copyright the TV commercial. We also explained that Service Marks, or SM, is a word, phrase, symbol and/or design for a service as opposed to hard goods. Generally speaking, the United States Patent and Trademark Office calls both TM and SM as “trademarks.”
Now, in part 2 of our blog, let’s dive more deeply into Trademarks and answer commonly asked questions.
On the local (common-law) level, you can put a TM or SM on names and art that haven’t been claimed by someone else. But if you truly want to stake your claim and have legal protection, you must register on the federal level.
The ®, TM, and SM can be granted to plain text words as well as symbols and designs. Most manufacturers are interested in protecting one or both of these aspects. But most don’t realize that protecting the name in text form and protecting the logo or symbol are two different registration applications. Protecting one does NOT automatically protect the other.
Let me reiterate. If you only protect the design logo, you are not protecting the text version of name. And if you only protect the text version of the name, you are not protecting the design. Each must be registered separately.
When you register something, you not only register the name or design, you must select the category of Goods and Services into which it falls. The USPTO has an online interactive database so you can find the classification that matches your product. Your exclusivity applies only to that particular classification. It’s why there can be multiple products or even companies with the same name—it’s the category classification that makes the difference.
Per the USPTO, “There are 45 classes, or categories, that cover all goods and services. Classes 1-34 are for goods, classes 35-45 are for services. Each class can cover a wide range of goods or services. For example, class 25 covers clothing and class 36 covers all insurance and financial services.”
There’s a filing fee for each classification. So, if you have multiple product names and/or logos across multiple classifications, you will be paying multiple fees. Currently it is $225 up to $275 per class of goods, per product. Here’s a link to the current fee schedule for patent and trademark applications.
Let’s step back a moment and look at the different styles of mark that can be applied for. This can help you establish a priority.
Erik Pelton, a trademark lawyer and a former examining attorney with the USPTO, recommends starting with words.
“A trademark application for a mark that is just wording is called a ‘standard character’ mark. The mark is usually featured in all capital letters. In essence, a standard character registration covers all variations of the wording, no matter the form. So a registration for “XYZ” covers XYZ in any color, size, or font.
“A trademark registration for a logo or design covers only the exact design featured in the drawing of the trademark in the USPTO application/registration. When a design is original and creative, it is certainly worth protecting. But unless the wording in the design is very weak, protecting the words is generally more important. The protection is stronger for the words since a ‘standard character’ registration is more flexible. And more infringements relate to words than designs.”
Note that word marks are often filed in all caps. However, this does not limit actual usage to all caps. As mentioned above, actual usage of upper and lower case, color, or font is not restricted with just plain text words.
According to richardspatentlaw.com,
“Stylized marks are mark applications that are not for standard characters…
“Stylized word marks include words that are written in a particular font, configuration, and/or color. These types of marks usually correspond to company logos. Stylized word marks can provide some measure of protection for the underlying literal content of the mark, but they will not continue to provide the protection of registration for the underlying word marks if the stylized way of writing the mark changes.
“Stylized graphic marks provide for the registration of symbols or other illustrations that function as a mark…
“Stylized word and graphic marks may be combined in word and graphic trademarks. These marks must show the words and illustration in a configuration that is consistent with how the mark is used.”
To sum up, if a design changes, that design (and any underlying protection for the words contained within) is no longer covered. A new application for a new registration must be made.
To further muddy the terminology, brand designers often use slightly different terms to describe the art side of things. So, bear that in mind when talking to your graphics team.
Whether used as a common-law mark or used once the application has been successfully submitted to USTPO, a TM or SM is appropriate. If the ultimate goal is to obtain the ®, you must wait till the final registration process is complete and approved before you can use the ®. Approval can take between 6 months to several years. The length of time depends upon whether there are any objections by outside parties or USPTO attorneys, or any filing fine-tuning that must be done. You’ll be notified when you can switch to the registered trademark.
Note that unless you also file for registration overseas, you have no legal right to use the ® outside of the United States.
To search through the federally registered marks, go to TESS, the Trademark Electronic Search System of the USPTO. Using the Basic Word Mark Search (New User) link will get you started. It gives you the option of searching by the Combined Word Mark name, the Serial or Registration number, the Owner Name, or all. You can also search for still-valid or Live terms/designs, Dead ones that are no longer protected, and Live and Dead. Even though it is called a Word Mark Search, logos will appear too. You must click on every listing in order to see if it is in text or a design. The closer to the top of the page, the newer the listing.
A TM or SM listing will only have a serial number. A ® will have both serial and registration numbers. If you actually click into a listing, under Type of Mark, it clarifies whether the mark is a service mark or a trademark as well as provides additional information such as the Applicant, Filing Data, Goods & Services category, kind of mark (text/standard character mark, stylized text, design, etc.) and so on.
Even though your own trademarks search may show there’s no competition for your word or design, the USPTO attorneys will do their own, more thorough search. And if you hire an attorney, he or she will do a search as well. They know the finer points of search and may uncover things you may not.
This is completely up to you. However, there are many details in the overall process that need to be figured out before an application is submitted.
For example:
Even though USPTO applications are done online, trying to do it yourself can be an exercise in frustration. Do it wrong, and you’re out your time and filing fees. You’ll have to start all over. Using an attorney that specializes in trademark protection may be a far better investment in the long run.
The USPTO has a pdf brochure that helps explain things in far more detail than this blog can cover. Reading it may help you decide whether you want to employ a trademark/intellectual property attorney, a company like Legal Zoom, or do it yourself.
To firmly establish your intellectual property, use your marks as often as possible. But try to use them tastefully. For example, on a press release, show the mark at first usage. Then don’t use it for the rest of the document. In brochures and on your website, you’ll probably want to use them on every appropriate product name and logo. Some companies create a page on their website that lists most, if not all, of their trademarked terms. Apple, for example, lists many of their marks, but then rarely uses them within the site itself.
But it’s completely up to you. However, if it you don’t use it where it will readily be seen, who will know? Furthermore, if you want to renew your registration with USPTO, you must prove that it is in use by showing real examples. So, go ahead and figure out what works best for you. Never hesitate to use your mark.
Today, it’s important to claim what is yours, and back it up with legal teeth.
Here at Petra, we reproduce your common-law and legal marks to the best of our ability. Unfortunately, when it comes to usage in the ecommerce marketplace, it is completely up to the reseller. Some have blanket policies of no marks. Because of that, it’s doubly important that you have them on your own site, in your manuals and marketing materials, and of course, accurately registered with the USPTO.
We are a distributor that honors the intellectual property of others. To find out more about what Petra can do to help manufacturers like you to sell their products and expand their markets, be sure to visit petra.com.