© 2002, Gallagher & Dawsey Co., LPA
June 2002

Businesses often underestimate the importance of trademarks in protecting business and product names. Additionally, many incorrectly believe the process of federally registering a mark to be expensive and time consuming. This article will explain the basics of trademark law and clarify some common misconceptions.

Trademarks & Service Marks
Federal trademark law is governed by 15 U.S.C. S1051, also known as the Lanham Act. While common law and state law trademark rights do still exist, they provide significantly less protection than federal trademark registration. Therefore, this article will focus on federally registered trademarks.

Marks fall into one of two categories; trademarks or service marks. A trademark is any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.

Rights Afforded by Federal Trademark Registration
Federal registration serves as notice to the public of the registrant’s claim of ownership of the mark. Registration also affords a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. Additionally, registration is required to bring a lawsuit in federal court concerning the mark. Lastly, registered marks may be filed with the U.S. Customs Service to prevent infringing foreign goods from entering the United States.

Types of Trademark Applications
Applications for federal registration are based on either “actual use” of the mark in commerce or the “intent to use” the mark in commerce. If the mark is in use when the application is filed an “actual use” application is appropriate. “Intent to Use” applications are appropriate when the mark has not been actually used in commerce but the creator plans to do so in the future. “Intent to Use” applications must include a sworn statement of indicating an intent to use the mark and then file an “allegation of use” of the mark or a “statement of use” within six months of the USPTO issuing a notice of allowance.

Application Costs
The current application for registration fee charged by the USPTO is $335 per registration class. When in “intent to use” application is filed there is an addition fee of $100 per class when the “allegation of use” or “statement of use” is filed. Professional fees generally range between $350 and $500 per application.

Registration Time
The length of time it takes for a trademark application to mature to a registered mark generally takes between 7 and 14 months.

Validity of Registration
Once a mark is registered it must be renewed to remain valid. Currently marks must be renewed between the fifth and sixth year following registration and before the end of every ten-year period after the date of registration. Therefore, a trademark can be renewed indefinitely.

Loss of Rights
The rights afforded by a registered mark may be lost in a number of ways. The most obvious method of losing rights to a trademark is simply by not filing the required renewal paperwork.

Additionally, trademark rights may be lost through genericity, which is when the trademark becomes generic and has lost it’s distinctive nature. The most common examples of this are the terms cellophane, aspirin, and thermos.

To the surprise of most people, trademark rights may also be lost through improper licensing and assignment. For example, if a trademark is assigned to a third party without a sale of assets the trademark will be canceled. Additionally, if the trademark is licensed and the owner inadequately supervises the use of the trademark, then the trademark will be canceled.

Proper Use of TM, SM, and ®
Lastly, proper use of the symbols TM, SM, & ® is critical in notifying the public of a claim of rights in the mark. The symbols TM and SM indicate a claim of right in a non-federally registered trademark or service mark, respectively. The ® symbol may only be used once the mark is actually registered in the U.S. Patent and Trademark Office.