What is a trademark?

“Trademark” refers generally to the four types of marks that can be registered with the USPTO: trademarks, service marks, certification marks, and collective marks. Since registration confers essentially the same benefits for all types of marks, the term “trademark” is often used to generally apply to trademarks, service marks, certification marks, and collective marks.

A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Trademarks are used by their owners to identify goods (physical commodities that are natural, manufactured, or produced) sold, otherwise transported, or distributed via interstate commerce. In short, a trademark is a brand name.

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services. Service marks are used by their owners to identify services (intangible activities performed by one person for the benefit of others) for pay or otherwise.

A collective mark is any word, phrase, symbol or design, or a combination owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services. A collective membership mark is any word, phrase, symbol or design, or a combination which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members.

A certification mark is any word, phrase, symbol or design, or a combination owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others.

Certification marks and collective marks can be registered in the USPTO, but occur infrequently and have some different requirements for registration than the more commonly applied for trademarks and service marks.

How are trademarks different from copyrights?

A copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

A copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Unlike trademarks, copyrights are registered by the Library of Congress’ Copyright Office.

Many successful businesses and individuals combine copyright, patent, and trademark protection to create a comprehensive intellectual property portfolio. For more information regarding the forms of intellectual property protection best suited to protect your needs, kindly contact Nyman IP at hello@nymanip.com or 312.724.9938.

What is “interstate commerce”?

For goods, “interstate commerce” generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involves rendering a service to customers in another state or rendering a service that affects interstate commerce. Nonexclusive examples of services affecting interstate commerce include restaurants, gas stations, and hotels.

What is the deal with the TM, SM, and Circle-R (®) symbols?

Use of the TM and SM symbols may be governed by local, state, or foreign laws to claim rights to a mark. In the United States, the circle-R symbol (®) indicates federal registration and may be used only once the mark is actually registered in the USPTO. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. While a federal trademark application is pending, applicants should claim their rights using the TM and SM designations, as the circle-R cannot be used before the mark has actually become registered.

In summary, three important restrictions exist for use of the circle-R (®) symbol:

(1) The circle-R may only be used after the mark is registered. The circle-R may not be used use during the application process.

(2) The circle-R may only be used on or in connection with the goods and services listed in the federal registration.

(3) The circle-R may only be used while the registration is still alive. The circle-R may not be used if a federal registration expires, is canceled, or is otherwise not maintained.

Without federal registration, businesses and individuals may use the “TM” (trademark) or “SM” (service mark) designations to alert the public to a claim of a “common-law” mark. No registration is necessary to use a “TM” or “SM” symbol. In fact, the “TM” and “SM” symbols can be used even if the USPTO refuses to register a mark.

Why bother with federal trademark registration?

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. However, federal registration on the Principal Register provides some very important benefits, such as:

Constructive notice nationwide of the trademark owner’s claim.

Evidence of ownership of the trademark.

Jurisdiction of federal courts may be invoked.

Registration can be used as a basis for obtaining registration in foreign countries.

Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Can I register the name of my band or musical group?

Generally, yes. A band name may function as a service mark for federal registration purposes, for example, if it is used to identify live performances.

May I assign or transfer the ownership of my trademark to someone else?

Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee.


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