Tag Archives | trademark

Difference between a Trademark and a Service Mark

Tradmark_or_ServicemarkTrademarks are used to identify a source of goods. Service marks are used to identify a source of services.

If your business provides services to customers, then the names, logos, and other marks used to provide services are considered service marks. For example, when you goto a Marriott hotel, the Marriott mark is being used as a service mark related to the hotel services (e.g. providing hotel rooms for customers). When you rent a hotel room goods are not necessarily sold, instead the service of a place to stay is provided.

If your business sells goods to customers then your names, logos and other marks used to provide goods are considered trademarks. The Coca-Cola mark is being used as a trademark when it is used to sale beverages.

If your …

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Registration Priority: I Have Many Trademarks, Which Should I Register First?

CircleR_RegisteredTMBusinesses often have many trademarks, such as, the business name, product names, service names, logos, slogans, tag lines, etc. The question arises which of those trademarks should be registered and what is the priority order for registering of those trademarks? Trademark registration carries a cost. Therefore, the decision to register is a balancing between the importance of the trademark and the cost of obtaining a trademark registration, when allocating a limited budget for trademark registration. Assuming other factors are equal, the question you should ask with respect to each of your trademarks is: how important is this trademark to my business as compared to other trademarks of my business?

Below is an example priority order for registering trademarks (e.g. a registration priority). The list is a generalized example and …

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Should I Claim Color In My Trademark Application?

FedExIf your trademark or logo includes color, then you may wonder whether your federal trademark application should include a claim of color. If this is your first trademark application, then likely you should not make a claim for color. When no claim of color is made and the trademark is presented in black and white then the registration is presumed to cover the mark when presented in any color.

However, if color in your mark is very important so that you would want the best chance of stopping others using your color scheme with different words/characters, then you may want to make a claim for color in your trademark. For example, Federal Express has a trademark application and various registrations on the mark FedEx with “Fed” claimed in purple and …

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What is a Trademark: Usual and Exotic

CircleR_RegisteredTMA trademark includes almost anything that is used by a person or entity to identify a product or service. This includes product names, company names, logos, slogans, service names, slogans, taglines, colors, product packaging, product shapes, symbols, sounds, fragrances, flavors, and domain names. A trademark functions to identify and distinguish goods and services from those manufactured, sold, or provided by others and to indicate the source of the goods or services, even if the source is unknown. Trademark registrations can be renewed forever as long as they are being used with the corresponding goods or services in commerce.

Below are several types of trademarks. First are the standards word and logo marks and the more exotic marks like sounds, product shape, and fragrance, among others, follow. Click here to skip straight

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What is Trade Dress?

CocaColaBottle

Trade dress recognizes that product/service packaging or the product appearance itself can act as a source identifier in the same manner as more traditional trademarks, like names and logos. In other words, in some circumstances the product packaging or the product appearance can be so uniquely tied to one company or source of goods/services that the packaging or the product appearance indicates to the customer the source of the goods/services. Many times the trade dress of a product allows the consumer to recognize the source of that product from the product packaging or the product appearance alone without any brand or logo appearing with it.

Product and Service Packaging
One example of product packaging trade dress is the classic Coca Cola bottle shape. Coca Cola has a registered trademark (…

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Use Based v. Intent-To-Use Trademark Applications

There are at least two types of federal trademark applications. The first is a use-based trademark application, also known as a section 1(a) application corresponding to the section of the law that authorizes the application. The second type is an intent-to-use application also known as a section 1(b) application.

Use-Based
A use-based application is one where the applicant is already using the mark in commerce at the time when the application for federal trademark registration is filed. Use of the Mark in commerce can include shipping or selling the goods with the mark or rendering services after advertising those services with the Mark.

Intent-to-Use Based
An intent-to-use application is one where the applicant has not used the mark in commerce or business at the time that the application is filed. …

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What Happens After A Federal Trademark Application is Filed?

TrademarkApplicationFiled-001Generally an applicant should not be too concerned with how long it takes to obtain a federal trademark registration at the United States Patent and Trademark Office. Once your trademark application is filed, later filed applications by others are less of a concern. Further, in the United States, trademark rights accrue based not only on registration but also on use. Therefore simply by using your trademark in commerce you can begin to generate common law rights which you can assert even before you obtain a registration. This article will explain the process and the general timing of events after an application is filed.

Trademark Office Approval Is No Guarantee of Freedom to Use Mark
Approval of a trademark application by the U.S. Patent & Trademark Office (USPTO) does not guarantee …

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Should I File for a State or Federal Trademark Registration?

FederalTrademark_vs_StateTrademarkNow that you determined that you need to seek a trademark registration. The next question is what type of registration should you seek: a registration from your state or registration from the federal government? The answer is the federal government in most cases and here’s why.

Costs
State trademark registrations cost less. The government fees for state registration depend on the state but tend to be less than a federal registration. For example, an Illinois state trademark application has a $10 registration fee. Whereas a federal trademark application at the United States Patent & Trademark Office has a fee in the range of $275 to $325 per class of goods/services declared in the application.

Geographic scope
The scope of protection provided by state trademark registration depends on the state, but …

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Trademark Application Problems: Wrong Owner Named

While the United States Patent and Trademark Office (USPTO) provides online forms that appear to make it easy to file a trademark application, there are several portions of the application that can trip up an inexperienced applicant. One of those areas is the owner portion. The USPTO requires that the correct owner of the trademark be specified in the application to register the trademark. This sounds easy but in many cases it is not, as will be shown below.

Individual and Partnership Owner Problems
Take the case of American Forests v. Barbara Sanders, 1999 TTAB LEXIS 529 (TTAB 1999). In this case, Barbara Sanders filed a trademark application to register LEAF RELEAF to be used with the goods of leaf bag equipment. The application named herself individually as the …

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