Frequently Asked Questions about Trademarks by William H. Eilberg, Intellectual Property Attorney

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Frequently Asked Questions about Trademarks

by William H. Eilberg, Intellectual Property Attorney
Admitted in Pennsylvania and Nevada, USA

Disclaimer: Disclaimer: The information on this page is not intended as legal advice. The situations of each person will differ, and what applies to one may not apply to all. I can make no assurance that this page will answer your specific questions correctly and completely. If you have a question, I urge you to contact me, or some other intellectual property professional, to determine the answer to your particular question.

What is a trademark?

A trademark is a word or phrase, or logo, or combination words and logo, which is placed on a product, and which identifies a source of the product. A service mark is like a trademark, except that it applies to an intangible service. For simplicity, I may refer to "trademarks" when I usually mean "trademarks and service marks".

Think of a trademark as a brand name. It identifies the "brand" of the product. Thus, the trademark is an adjective, used before the generic name of your product. If you can put the word "brand" between your trademark and the generic name of the product, and the phrase makes sense, you are probably using the mark as a trademark. Some examples of this concept, in the case of three famous marks, are "Scotch Brand Tape", "Kodak Brand Film", and "McDonalds Brand Restaurants".

How do I establish rights to a trademark?

Until 1989, the only way to establish trademark rights was to use the mark on a product, in actual commerce. That still works; if you are the first to use the mark on a product, then you have established trademark rights automatically, at "common law".

Since 1989, it has become possible to file an application for federal registration before you have used the mark. The federal registration will not be granted, however, until you have begun to use the mark. However, if you maintain the application in good standing, and if you begin to use the mark within the required time, your "date of first use" of the mark is deemed to be the date you filed the application. Thus, filing an "intent to use" application is equivalent to reserving a right in the mark.

If I can establish trademark rights automatically, why register?

Federal registration provides very important procedural rights to a trademark owner. For example, when you have a federal registration on the Principal Register, everyone in the country is considered by law to know about your use of the mark. If someone in a distant state uses your mark on a product similar to yours, that person cannot defend against your infringement suit by saying that he or she did not know about you.

A federal registration also strengthens the trademark owner's legal position in the event of a court suit. A federally registered mark is presumed valid. And after five years of continued use of a registered mark, the registration may become "incontestable", which means that the rights of others to challenge the registration are severely limited.

How can I find out whether my mark is registrable?

As a preliminary step, one can do a search to determine whether others have used or registered similar marks for similar products or services. A search is not mandatory, however.

There are different levels of thoroughness of searches. The most common type of search, in my practice, is a search of federally registered marks and pending federal applications. This kind of search can be done on a computer database, relatively quickly, and at a cost of about $500, which includes my opinion letter on registrability.

It is possible to extend the search to include state registrations, and unregistered marks, by doing a search through trademark registers of state governments, business directories, telephone books, etc. The latter step can cost an additional $500, and possibly more if the search is done on a rush basis. The search of unregistered marks is often called a "common law" search, because it covers trademarks that arise at common law.

Should I do a search?

If you have been using the mark for a long time, and over a wide geographic area, it is likely that if there were any serious conflict, you would have heard about it by now. On the other hand, if you are planning to adopt a mark within the next year, you may want more information now about whether you can expect a conflict. The reasons for doing a search are more compelling in the second case than in the first.

But there is no single correct answer. I would be happy to do a search for you in either of the above situations.

If no similar mark shows up in the search, is my mark protectable?

Maybe. Since the database on which the search is done may be valid only up to a certain date, a relevant item may be too new to have reached the database when the search is performed. Also, there may be a prior user of the mark who did not bother to register, and whose name would not appear even in a common law search.

However, note that, for purposes of federal registration, the federal Trademark Examiner will not consider any marks which would not appear in a federal search. On the other hand, when the mark is approved by the Examiner for registration on the Principal Register, the mark must first be published for opposition. Other parties having rights in the mark have the opportunity to oppose your application. Statistically, the likelihood of an opposition is small, but when it happens, defending the opposition is almost the equivalent of defending a federal lawsuit, and this can greatly increase the cost of obtaining the registration.

Note also that, although there may be no conflicting mark, your mark may still not be registrable for some other reason. For example, the mark may be inherently descriptive of the goods or services, or it may be entirely generic. A generic mark is never protectable, but a "descriptive" mark may be registered on the Supplemental Register, and may eventually be registered on the Principal Register if the mark is used for a long time or is heavily promoted. The trademark law presumes that a descriptive mark used continuously for five years has acquired the distinctiveness necessary to be registered on the Principal Register, although the Examiner can require additional proof of distinctiveness in doubtful cases.

What is the difference between the Principal Register and the Supplemental Register?

Marks registered on the Principal Register receive full benefits of registration, such as constructive notice (i.e. all persons are deemed to know about the registration), incontestability after five years, presumption of validity, etc. The Supplemental Register does not confer the latter benefits, but it does allow the owner to display the mark with an official registration symbol (the encircled "R"), and it prevents others from federally registering the same mark. It will also turn up on federal searches conducted by others. A mark used for five years may "graduate" from the Supplemental Register to the Principal Register, if a new application is filed.

What happens if someone is using my mark, but on non-competing goods or services?

Until recently, the simple answer, at least at the federal level, was that two identical marks could coexist if they were used in disparate fields. However, a federal "antidilution" statute provides that the owner of a "famous" mark may prevent another from using the mark, even where the parties are operating in unrelated fields. The statute defines "famous" in a general manner, but courts have held that, to be protected by the antidilution statute, a mark must be "famous" in the ordinary sense of the word.

What is the difference between the encircled "R" and the "TM", and may I use these symbols?

The encircled "R" is an official symbol indicating that the mark is registered. You should not use it until you actually receive a registration. The "TM" (or "SM" in the case of service marks) is simply an unofficial designation which tells others that you claim common law rights in the mark. The "TM" may also be interpreted to mean that you have applied for federal registration, and are awaiting a decision.

When you do not yet have a registration, there is no harm in using the "TM" or "SM" near your mark, and doing so could be beneficial. On the other hand, your use of "TM" or "SM" will not convert an unprotectable mark into a protectable one. Also, remember not to print so many labels with "TM" that you can't switch to the official registration symbol when you do receive a registration.

How do I apply for registration of my mark?

You simply give me some information about the mark, the goods or services, the name and address of the applicant, and the date of first use, if applicable. You may give me this information by phone or by email. I then prepare an application, and have it filed in the U.S. Patent & Trademark Office. It may take several months before the Examiner reviews the application on the merits.

What happens when the Examiner reviews the application?

The Examiner may approve the application as filed, in which case the mark will be set for publication in the Official Gazette of the Patent & Trademark Office. When the mark is published, others have thirty days within which to file an opposition (or to obtain an extension of time to do so). If no opposition is filed, and the application is based on actual use, a registration is granted, usually about three months after the date of publication.

If no opposition is filed, and the application is based on "intent to use", the Patent & Trademark Office issues a "Notice of Allowance", which sets a six-month deadline within which you must file a Statement of Use, showing you have begun to use the mark (or file a request for extension of time to do so). You may obtain extensions in six-month increments, up to a maximum of three years from the date of the Notice of Allowance.

The Examiner often rejects an application, for one or more of several reasons. These reasons can sometimes be serious, and sometimes trivial. Examples of "serious" refusals are where the Examiner believes your mark conflicts with another mark, or where the Examiner holds that your mark is descriptive or generic. An example of a "trivial" refusal is that the Examiner is dissatisfied with the description of the goods in the application, and wants us to change the wording.

If the Examiner refuses registration, we have the right to respond, in writing, within a six-month period. If the Examiner is persuaded, the application is approved for publication. If not, one can appeal from the Examiner's refusal.

What does it cost to file the application?

For an application to register a word mark (i.e. a mark with no special logo), in one class (i.e. where the mark is applied to only one category of goods), the cost of filing the application is $1,025. This includes the government filing fee for one class. It does not include the cost of a search.

If the application covers more than one class, then the filing cost increases by $275 for each additional class. If the mark includes a design or logo, it may be necessary for my drafter to prepare a trademark drawing which meets the exacting requirements of the trademark rules. If so, the filing cost may increase by about $100, or sometimes a bit more.

If the Examiner refuses registration, or makes further requirements after the application is filed, it will be necessary to respond. The cost of such response will vary, but it depends on the time needed to prepare the response, and is based on my hourly rate of $195.

Note also that if the application is based on your "intent to use" the mark, it is necessary to show that the mark is in use, before the mark can be registered. The latter showing is made by filing a Statement of Use, which is a sworn statement which sets forth the date of first use, and which is accompanied by labels or other specimens showing use of the mark. The cost of filing a Statement of Use, or of obtaining an extension of time to do so, is about $500, for an application in one class.

Obviously, the total cost of obtaining the registration may depend on how many extensions you need. But keep in mind that, once the mark has been used, and a proper Statement of Use has been filed, the date of first use, in law, is the date you filed the application. Thus, an "intent to use" application can be very useful, because it can make you, in law, a prior user, even against someone who used the mark before you did.

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William H. Eilberg, Attorney at Law
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