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Trademarks and Service Marks

Trademarks and Service Marks can be confusing but they are important terms to trademarks and service marksunderstand for your business.

This is a general overview of trademarks and service marks. Please check these websites for the most up to date information: US Patent & Trademark Office: www.uspto.gov/, and the Ohio Secretary of State: www.state.oh.us/sos/

What is a Trademark?

A Trademark is any word, phrase, symbol or design or combination thereof that identifies and distinguishes the source of goods from one party from those of another. Examples are the statement “Like a Good Neighbor State Farm is There,” and brand names such as Ford “Fusion,” and “Tide.” A trademark may be owned by an individual, corporation or association.

What is a Service Mark?

A Service Mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product, for example: Fifth Third Bank’s “Jeanie”, “Penny Talk” for long distance Co.

Why are they important?

The primary purpose of a mark is to prevent consumer confusion. Additionally as consumers become familiar with the mark and the quality they represent, the marks become valuable business assets.

How to get and keep a mark

Create a mark that has not already been appropriated. Search the databases in the Public Library and at the Patent and Trademark Office to determine if it is use by others or has been requested. The U.S. Patent and Trademark Office website has a user-friendly search engine. www.uspto.gov/

Select a mark that is strong at the outset. The strongest marks are “fanciful” and unrelated to the use of the product. Examples: Tide, Clorox, Jif.

A mark must be used to be recognized. Apply it to your goods or services and use it as widely as possible.

Experts differ as to whether you need an attorney for this process. We have seen such services advertised from $200 to $500. You can do it yourself, but a lawyer who is experienced in this process can streamline it considerably. There are three ways to protect your marks.

Protection and Registration

1. Common Law method. Registration of a mark is not required. Mark the symbol n the product you wish to protect. Give the product very wide exposure. Rights to the marks begin as soon as the mark is put to use.

2. State Registration: Marks may be registered with the Secretary of State. However the mark is not protected outside the state.

3. Federal Registration: Though registration is not required, it provides many advantages. Registration is done through an application filed at the United States Patent and Trademark Office. You may file an application electronically or by paper and mail. You must show either that the mark has been used in interstate commerce or that you have a good faith intention to use the mark in interstate commerce.

Examining Attorney

After the USPTO determines that you have met the minimum filing requirements, the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes and includes all required fees.

If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.

The USPTO will send a NOTICE OF PUBLICATION to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.

Registration for Actual Use

If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a certificate about twelve (12) weeks after the date the mark was published.

Notice of Allowance for Intended Use

If the mark is published based upon the applicant’s bona fide intention to use the mark in commerce, the USPTO will issue a Notice of Allowance about twelve (12) weeks after the date the mark was published, if no party files either an opposition or request to extend the time to oppose. The applicant then has six (6) months from the date of the Notice of Allowance to either:

  • use the mark in commerce and submit a Statement of Use; or
  • request a six-month Extension of Time to File a Statement of Use.

When the application is approved, put an ® next to the mark. (such as after the word SCORE in the heading to this brief). You may use this symbol only after a mark is registered with the USPTO and not while an application is pending. This shows the mark is registered with the Patents and Trademark Office and is a notice to others who might be thinking of using it.

A Federal registered mark is issued for 10 years. During the fifth year an affidavit must be filed stating the mark is still in use in interstate commerce. It must be renewed every ten years.

There is a fee for State and Federal registration. The basic current fee for Federal registration is approximately $325.00 for an online application and $375.00 if submitting paper.

  • There are benefits for federal registration:
  • It provides constructive notice nationwide.
  • You can bring action for infringement in federal and state courts, and, if successful, collect treble damages.
  • A presumption that the registration is valid and not confusingly similar to other registered marks.
  • Prevents the importation of goods bearing the same or similar marks (e.g. fake watches).
  • File for foreign registration based on U.S. registration.

With all applications keep good records to show first use and always do a search to avoid infringement.

References and Sources:

US Patent & Trademark Office; www.uspto.gov/ Ohio Secretary of State, www.state.oh.us/sos/

Public Documents & Patent Department, Library of Cincinnati & Hamilton County, http://www.cincinnatilibrary.org/resources/government.asp?section=1&category=27

“Basic Facts About Trademarks,” http://www.uspto.gov/trademarks-getting-started/trademark-basics

Don’t forget that SCORE offers free mentoring to any business owner that requests it. Contact us here.

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