Trademark FAQ: Our Top 20 Webinar Questions

Trademark FAQ: Our Top 20 Webinar Questions

by LegalZoom Staff, November 2017

trademark_webinar.png

We recently hosted a webinar, Trademark Tips for Business Owners, that included a live Q&A with a trademark attorney. We had over 500 questions and answered as many as possible, but couldn't get to them all. We've compiled our most popular questions complete with the answers from a trademark attorney.

1. Can you explain the difference between a trademark, a patent, and a copyright? In which instances would you use each?

A trademark often refers to a symbol, word, or words representing a person's or company's goods or services. For example, things that can qualify as a trademark include the name of a product or service, a tagline or catchphrase, a symbol or logo, or even a specific color, shape, or sound.

Patent registration refers to the process of securing a right to exclude others from making, using, or selling an invention. To qualify for a patent, the subject matter must (1) be considered new or novel, (2) have a useful purpose, and (3) be non-obvious to a person having ordinary skill in the art. Patents apply to new inventions and useful processes.

Copyright registration refers to the protection of creative works of expression, such as paintings, creative writings, sculptural works, performances, etc. Phrases, slogans, and taglines do not fall under copyright law.

2. When you register a trademark for your business name, are all associated logos automatically included? Or do you have to register logos separately?

The answer depends on the trademark format that is registered. Trademark registration has several different formats. A word mark format reflects a claim to the textual words only (meaning that any font or styling of the words is covered under the registration). A design mark format only reflects a claim to a design (like the red bullseye at Target or Nike's swoosh). A word and design mark format reflects a claim to both word and design elements under a single registration (like the UPS logo).

Going back to the question, if a word mark is registered, then the logos would not be included in the registered claim. Additionally, if a word and design/logo is registered, the trademark owner cannot claim the individual word or design elements if the elements are used apart from each other or used in a manner different from the specific format that is registered. However, the trademark owner can claim infringement if a third party uses only one element in a word and design mark.

3. Can a trademark protect quotes, tag lines, catchphrases, marketing phrases, and business slogans?

Yes, quotes, tag lines, catchphrases, marketing phrases, and business slogans can serve as trademarks. However, to support a trademark claim, there must be commercial use of the slogan, tagline, etc. in connection with the offering of goods or services. A common problem is when a business develops a slogan that it uses verbally but does not use on any marketing materials.

4. Does the registration and use of a domain name give you any rights?

Registration of a domain name and use of a domain name are two different things and impact trademark rights differently.

The registration of a domain name does not confer trademark rights. This is because trademarks must be used in connection with goods or services. Domain name registration does not automatically associate the term(s) in the domain name with goods or services. For example, if someone has a business called "ABC123," ownership of the domain name www.abc123.com says nothing about what type of goods or services are being offered under that domain name.

The use of a domain name does impact trademark rights if the web content reflects use of the trademark in connection with goods or services. Use is critical, because the first to use a trademark for a particular good or service gains trademark rights.

5. How does a service mark differ from a trademark?

A service mark reflects a claim to a term, phrase, design, or symbol used in connection with services. A trademark reflects a claim to a term, phrase, design, or symbol used in connection with goods.

However, it is common for individuals to use the term "trademark" to refer to marks that cover both goods and services.

6. If I've had a company name for a few years and haven't registered it as a trademark, can someone else register the name for their claim or use? What can I do if this occurs?

Trademark registration is generally based upon a first-to-register principle. However, trademark rights are generally based upon a first-to-use principle.

First-to-register. To clarify, if Company A has been using a trademark for five years and hasn't registered it, and Company B recently starts using the same trademark and applies for federal registration, it is likely that Company B will be awarded the registration.

This is because, when examining trademarks to register, the United States Patent and Trademark Office (USPTO) will only conduct a search of filings in the USPTO's trademark system. The USPTO will not perform an external search of business filings, domain names, social media, or the internet. Therefore, the USPTO may grant registration to the party applying for the mark first, because it will have no knowledge of parties who may be using a similar mark that is not registered.

First-to-use. The rights to a trademark are generally considered to be owned by the party using the trademark first (that is, the senior user). A senior user can oppose a pending federal trademark application and seek to cancel a federally registered trademark. If seeking to cancel a similar trademark that has been registered by another party, the senior user can initiate a cancellation proceeding with the Trademark Trial and Appeal Board at the USPTO. The senior user can also explore the option of filing a trademark infringement lawsuit.

7. What are the differences between a local trademark and a federal trademark? Can you file one trademark to cover everything? Or must you file one in the state your business is in, and a separate federal one to cover all states?

The difference between a state and a federal trademark is territory/geographic scope. Common law trademark rights, state trademark rights, and federal trademark rights each have territorial features.

Common law. A person has common law trademark rights when they are simply using a trademark in connection with the sale of goods or services. The claim to common law rights is limited to the territory or geographic scope under which a trademark is being used. Therefore, depending upon the use, the trademark claim can be limited to a specific region.

State registration. A person can secure state trademark rights by applying for trademark registration with a state, commonly through the office of the state's Secretary of State. Unlike common law rights, if a person is merely using a trademark in their neighborhood but has a state registration, their rights extend beyond the territory of the neighborhood and expand to statewide coverage. State filing fees vary but are generally under $100 per class of goods or services. Additionally, registering a trademark in one state will not prevent the mark from being registered by another party in another state or federally registering the mark.

Federal registration. A person can secure a federal trademark registration and enforce it against third parties nationwide. Through federal registration, a person using a trademark in interstate commerce in one section of the country can extend his or her rights nationwide.

However, a federal registration is not considered superior to a state registration if the owner of the state registration was using the mark first.

8. How does a DBA play into this? What is the relationship between a DBA and a trademark?

Business owners commonly conduct business under a specific name to help consumers identify their business. The business owner can be a person or an entity. In either case, the name of the owner is often not the same as that of the business. When the owner's name is not the same as the business name, the owner(s) are considered "doing business as" (DBA) or trading under (trade name) a specific business name.

You can secure a DBA certificate for a business name and also secure trademark registration for the same name.

Securing a DBA or trade name certificate does not offer the same rights as a trademark. First, unlike trademarks, the DBA registration process allows for the registration of very similar names by different parties. The DBA registration generally will not allow for the registration of an identical name, but will not block the registration of similar names.

Second, DBA and trade name certificates are a state or county process. Therefore, someone can register a DBA in one state or county and the same DBA can be registered by another party in a different state or county.

9. Once a trademark is registered, how aggressive do you need to be about protecting it? Are you contacted or informed when someone uses your slogan/logo?

A trademark owner must take steps to police a trademark. There is no formal standard on how much or how little policing must take place. Trademark registration represents a trademark owner's claim to an exclusive right to use a trademark in connection with goods or services. And if the trademark owner allows others to use the trademark, claim to that exclusive right is diminished.

If a third party uses or seeks to register a trademark that is already in use, the USPTO will not contact the rightful trademark owner. There are companies that offer trademark watch services that will notify a trademark owner if an infringing trademark is applied for at the USPTO.

10. After having an initial idea, what is the first thing you should do to protect your idea? How can you develop your idea while keeping it safe? What's the biggest mistake you can make while protecting a product during development?

If the idea relates to a new invention or business method, patent registration may be the appropriate course. Trademarks are tied to protecting a brand, rather than an invention.

If the name of a product that is in development is already known or if the name of a business that has not yet opened is already known, an "intent-to-use" trademark application can be filed (1) to protect the product name while the product is being developed or before the business is launched and (2) to complete the beginning stages of the trademark application process during development.

Keeping one's ideas safe during development is extremely important. Some of the biggest mistakes that are made relate to communications with third parties. Generally, the owner of a product that is in development should secure nondisclosure agreements with all relevant third parties.

Additionally, product development can involve creative contributions by third parties. These contributions may be subject to copyright claims. To avoid the individual contributor from claiming ownership of the contribution, a work for hire agreement is needed. A work for hire agreement acknowledges a clear "employee/employer" relationship between the contributor and the owner and recognizes the employer as the author of the creative contribution/copyright.

11. What if I can't afford trademark fees right now? Can I start to sell, save the money, and then register? Can you clarify the "use in commerce" vs. "intent to use" situation?

A trademark application can be filed at any time that is financially convenient for the trademark owner. If a trademark has been in use, the application process has a section to acknowledge the date of first use.

A trademark application based on use in commerce represents an application having all of the elements needed to be eligible for registration, namely, (1) the trademark itself, (2) the owner details, (3) a description of the goods and/or services, and (4) proof that the trademark is in use at the time the application was filed.

A trademark application based on intent to use is a type of application that is accepted, all the required elements for registration are not present. The only element that is permitted to be absent in an intent to use application is item (4) above, namely, proof that the trademark is in use at the time the application is filed. The filing of an intent to use application represents a trademark owner's claim that they have a bonafide intent to use the trademark at some point during the application process.

Once the trademark owner has commenced use of the trademark, they can file an Amendment to Allege Use or a Statement of Use to update the application. The USPTO charges a filing fee for these submissions.

12. What are common law rights? What protections do they offer?

A person has common law trademark rights when they are simply using the trademark in connection with goods or services. A common law claim to a trademark is solely based on the fact that the trademark is being used in commerce. However, the claim to common law rights is limited to the geographic area under which the trademark is in use. Therefore, depending upon the use, a common law trademark claim can be restricted to a specific region.

Common law rights fall under state law. Therefore, an action for common law trademark infringement would have to be filed in state court.

13. Generally how long does it take and how much does it cost to register a trademark through a attorney?

The trademark registration process involves the following stages: (1) filing, (2) examination, (3) publication, and (4) allowance/registration. The registration time frame varies because it often involves a back and forth dialogue between the USPTO and the trademark owner (or the trademark owner's attorney).

Assuming the trademark application is examined and published with no issue, a registration can occur in six to seven months. However, registration will take longer if issues arise during the examination and/or publication stages. Furthermore, if the application is based on an intent to use, the trademark registration will be delayed until the application is updated with acceptable proof of use.

The average cost to register a trademark through an attorney ranges between $1,000 and $2,500.

14. What is the cost and process of using LegalZoom to register a trademark? Can you request a specific attorney from LegalZoom? Is having LegalZoom file for a trademark the same as having an attorney file for a trademark?

LegalZoom's pricing starts at $199 plus filing fees.

You can go through LegalZoom's user-friendly questionnaire to complete your trademark application yourself. LegalZoom can also set you up with an independent attorney who can review your search results for potential conflicts, complete your application for you, and serve as your Attorney of Record should any post-filing issues arise.

Q15. Once a trademark is approved, does that mean you can use the letters “TM" in all logos/branding? What are the guidelines there?

A15: The TM symbol is meant to provide notice to the public that a trademark owner claims a trademark right in the term or design. To clarify, this right can be associated with a trademark claim under a common law right, a state registration, or a federal registration. Therefore, you are not required to have completed a state or federal filing to use the TM symbol.

A trademark that is federally registered is often identified with the "R" (within a circle) symbol, or registered mark: ®. The "R" (within a circle) symbol can only be used in connection with an active federally registered trademark.

Q16. Can an abandoned trademark (because of a missed deadline) be revised and allowed to keep the original filing date, or would I need to start all over again and go with a new date?

A16: The circumstances surrounding the revival of a trademark filing depend upon whether the trademark is at the application stage or whether the trademark is registered.

Application stage. If a trademark is in the application stage, it is considered pending. If a deadline is missed in connection with a pending application, the USPTO will issue a Notice of Abandonment. An applicant will have two months from the date of the Notice of Abandonment to revive the application by submitting a Petition to Revive. Note that an Applicant may submit the Petition to Revive before an actual Notice of Abandonment issues.

Registration stage. If a trademark is registered and the registrant misses a maintenance/renewal deadline, registered trademark rights may be lost. However, post-registration deadlines generally have an automatic six-month grace period.

Q17. Are trademarks case sensitive (for example, oneBrand vs. ONEBRAND)?

A17: Trademarks are not case sensitive. The application process allows for a trademark term to be entered in capital letters, lowercase letters, or a mixture of both. However, a trademark claim covers the literal elements, rather than case sensitivity.

Q18. Are apps, which are intangible, able to be registered as trademarks?

A18: Mobile applications can be protected by trademark law. Mobile applications are not considered intangible; rather, they are considered computer application software. A software brand can be registered as a trademark.

Q19. Can you have more than one trademark name for the same company? For example, if you have multiple ways of referring to your brand or LLC that provides services, could you trademark the different ways they are spelled or said under one TM for the brand? Or, if I have a brand, and under that I have different product lines, would I need to register the main brand and all the sub-brands, or just the main brand?

A19: A company can have one trademark that is applied broadly across various different goods and services, so long as the trademark is in use with the goods and services. For example, STARBUCKS is a trademark registered in connection with coffee shop services. However, the STARBUCKS trademark is also registered for other related goods including coffee, mugs, and food.

A company can also have multiple trademarks for various goods and services sold by the company. For example, THE COCA-COLA COMPANY is a registered trademark for a beverage company. However, the company also has trademark registrations for additional beverage brands, such as COKE, SPRITE, FANTA, etc.

If a trademark is presented in a specific style, depending upon how distinct the style is, a separate application may be filed to protect a claim to the stylized elements. However, if a trademark application is registered in its standard characters, the registration is still valid and enforceable if the trademark isn't presented in the standard characters. For example, if the standard character trademark "GO NUTS DONUTS" is registered, you can use the registration symbol even if on your signage you replace all the letter "o's" with donut images.

Q20. Does the same process apply to protecting recipes? Or for music artists and their catalogs?

A20: Trademark law is meant to apply to the commercial name used to identify goods and services. Therefore, recipes, music lyrics, songs, and catalog contents are not protected under trademark law.

Recipes generally are not protected under copyright or trademark. However, if a recipe involves a truly unique process, keeping the process secret may qualify for trade secret protection.

Music lyrics, songs, and catalog contents fall under copyright law because they are considered creative works. However, a trademark can be secured for an artist's name because, under the name, the artist is offering entertainment services.

Ready to start your trademark registration? Start your application here and take the next step in protecting your brand.