A trademark functions as a source identifier for goods or services and is how we distinguish products and services in the marketplace. Trademarks and service marks are essentially the same thing. You probably know several off the top of your head, each bringing to mind a distinct product, service, style, flavor, sound, and so on. Having a trademark is not only about the source of your goods or services, but also the business goodwill that comes with those trademarks. Trademarks exist on three legal levels, each offering greater protection than the previous: common law or unregistered, State registered, and federally registered. Unregistered and State registered may be seen using the ™ symbol, which lets the public know the word, phrase or symbol is being used as a trademark. Only federally registered trademarks are allowed to use the familiar trademark ® symbol.
Trademarks are often confused for copyrights. While branding may involve copyright, such as logos and soundbites, trademark is about a name or design that functions as a source identifier, and copyright is about a creative work itself. This is how a trademark can also be a copyrighted work and involve both issues. In certain cases, it’s even possible to trademark sounds, colors, shapes, motions, scents, and textures.
Obtaining a trademark allows you to prevent others from using your trademark, which strengthens your brand and competitiveness. To obtain federal registration, your goods or services must be in interstate commerce, meaning that you provide or advertise your goods or services across multiple states. To get ahead on registration, we can file an intent to use application which gives you six months to use your mark in interstate commerce and follow up with the US Patent and Trademark Office (USPTO) with a Statement of Use. If your trademark won’t be used outside the State of New Mexico, we can file for your trademark with the New Mexico Secretary of State instead, obtaining trademark protection only in the State of New Mexico.
There are several rules for registering a trademark both federally with the USPTO and locally in the State of New Mexico that can be easy to overlook causing delay and other problems. Registering in the State of New Mexico is less expensive and easier; however, you don’t get as many protections. You may want to have a trademark search and analysis performed to determine if the trademark you’d like to register is risky or unavailable before spending the time and money on registration, especially for federal registration as they are published in the USPTO Official Gazette for thirty days prior to finally issuing the mark to the applicant to allow for opposition from owners of potentially confusingly similar or related federally registered trademarks.
When registering a trademark, you have to keep in mind each class of goods or services your mark will be used with, a list of which is available on the USPTO website. The more classes your mark is being registered for, the more expensive the USPTO fees will be, so it’s important to prepare your current intended use to avoid complications later on. There are also different forms of marks, such as a standard mark (word or phrase) and a stylized mark (graphical font or logo) which you can file for one or both. A standard mark’s protection is more broad as it trademarks the word or phrase rather than the graphical representation of the latter. A stylized mark can help combat a rejection for being too descriptive or generic by narrowing the application of the standard mark’s protection only when it appears in conjunction with the stylized mark.
Once you have a trademark, it’s important you understand the need to properly protect it which includes not only trademark enforcement, but also monitoring its use to those you may license it to. When obtaining a pre-existing mark, such as through purchasing a business, it’s important that the goodwill of the business is included with the trademark, and that the trademark continues to be used as it had originally been obtained and used. Oftentimes, specific language is used in trademark license and transfer agreements to ensure the legally binding contract covers the essential needs of trademark maintenance when dealing with registered marks.
Pederzani Law can discuss, analyze, and guide you through the process for your trademarks including not only State and federal registration, but also trademark licensing and sale. If you’re currently dealing with trademark registration and seeking assistance with office actions, trademark law services from Pederzani Law include filings and trademark prosecution.