The term 'trademark' is used to refer to any distinguishing attribute or special characteristic by which a product or business is readily identified. This could be anything from a logo to a name, word, phrase, symbol, design, image, or a combination of these elements, or in short, any intellectual property. In the United States, when a trademark is used in relation to services rather than products, it may also be referred to as a 'service mark'.
Trademark protection comes from either the actual use of it, or by filing an application to register it with the United States Patent and Trademark Office (USPTO) stating that the applicant has a bona fide intention to use it in commerce regulated by the government; however, the latter provides a higher degree of benefits. It is important to understand that federal registration is not required to establish the rights, nor is it required to begin use of one. However, if one avails it, they can secure benefits beyond those acquired by merely using the mark.
The trademark application can be filed by a lawyer in your name, as the owner, under the individual, corporation, or partnership categories. However, the owner solely controls the nature and quality of the goods or services branded by the mark.
Your attorney may apply for federal registration in three principal ways. Firstly, if you have already commenced using a mark, the attorney must file an 'actual use' application. Secondly, if you have not yet used it, he must apply for an 'intent to use' application. Lastly, under certain international agreements, an application from outside the country may be filed in the United States. However, this registration provides protection only in the United States and its territories, and hence, you must look for protection in each country separately under the relevant laws there.
Types and Validity of Rights
Rights in a mark can be classified into two types namely, the right to register and the right to use, which are related. In general, the first party who either uses it in commerce or files an application in the USPTO has the ultimate right to register that particular mark. The USPTO authority is limited to determine the right to register only.
On the other hand, the right to use can be more complicated to determine. This holds good when two parties have begun use of the same mark without the knowledge of one another and neither has a federal registration. In such a case, only a court can render a decision about the right to use, and can issue an injunction or award damages for infringement. It should be noted that a federal registration could provide significant advantages to a party involved in a court proceeding, hence, it is always advisable to get the mark registered.
These rights can last indefinitely if the owner continues to use the mark to identify his goods or services, dissimilar to copyrights or patents. The validity of a federal registration is ten years and can be renewed in ten-yearly intervals. However, the registrant must file an affidavit putting forth certain information to keep it valid, between the fifth and sixth year after the date of initial registration. If no affidavit is filed, the enrollment is canceled.
It must be for a bona fide use in the ordinary course of trade, and not made simply to reserve a right. It is important to know that the use of a mark in promotion or advertising, before the actual product or service is provided on a commercial scale, does not become certified as use in commerce. Also, the use of a mark at the local level within a state is not considered as 'use' under this law.
In addition to trademarks, other types of marks provided by the U.S. Trademark Act are certification marks, collective trademarks, service marks, and collective membership marks. To claim the rights, one may use the TM (trademark) or SM (service mark) designation with it, to alert the public of the claim. Since it is not necessary to have a registration, therefore, the claim may or may not be legally binding. However, the registration symbol (®) can only be used when the mark is enrolled with the USPTO.
It is advisable to hire a trademark lawyer to guide you with the registration process.