Which is Right for You: Trademark, Patent, or Copyright?
It is important to figure out whether you should file for a trademark, a patent, and/or a copyright. While all are types of intellectual property, each protects something very specific. Understanding the basic differences of a trademark, patent, and copyright will help to ensure you are making the proper filing decision at the outset of the filing process.
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.
Must all marks be registered? No, but federal registration has several advantages, including a notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.
A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.
Do You Need to Hire a Trademark Attorney or Get Other Help?
Although not required, most applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration. A private trademark attorney may help you avoid many potential pitfalls.
What Are Some Other Initial Considerations?
Before starting the application process, it is important to have clearly in mind
(1) the mark you want to register;
(2) the goods and/or services in connection with which you wish to register the mark; and (3) whether you will be filing the application based on actual existing use of the mark or a bona fide intention to use the mark in the future. This will make your search of the USTPO database more useful and may simplify the application process.
After Identifying Your Mark You Will Need To Select One of Three Possible Formats:
An important consideration is the depiction of your mark. Every application must include a clear representation of the mark you want to register. Three possible mark formats are available: (1) standard character format; (2) stylized/design format; or (3) sound mark. The standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized/design format, on the other hand, is appropriate if you wish to register a mark with a design element and/or word(s) and/or letter(s) having a particular stylized appearance that you wish to protect. Formats 1. and 2. may not be mixed in one mark; i.e., do not submit a representation of a mark that attempts to combine a standard character format and a stylized/design format.
USPTO will use this representation to file the mark in the USPTO search records and to print the mark in the Official Gazette (OG) and on the registration certificate. The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration.
The depiction of the mark you submit now is what will appear on your registration certificate once the application process is completed. And remember: you cannot add or subtract words and designs to the mark throughout the process, except in very rare circumstances. So, the mark you submit now is what will register later. And you want it to look perfect, right?
Before we talk about some of the important issues in this section, you should know a quick definition. Sometimes you will see official documents that refer to a mark “drawing.” Don’t be alarmed; there’s no sketching involved… The word “drawing” merely refers to a “depiction of the mark.”
A mark may appear as a Standard Character mark or as a Special Form mark. A Standard Character mark is the most flexible of all mark depictions. It grants protection to the wording itself, without regard to the font, style, size, or color. Although the mark looks like plain typed wording when registered, a Standard Character mark means that you can change how you display the wording over the life of the trademark. Not bad for a simple looking mark, right?
A Special Form mark, on the other hand, is a mark that comprises special characteristics, like fonts or designs or colors. Special Form marks can be broken down into two categories: Stylized marks and Design marks. A Stylized mark is a mark in which the wording appears in a particular font. A Design mark can be a composite mark, in which you protect wording that is combined with a design. Or, it can be a mark comprised of design elements alone.
Remember, then, to submit a Special Form drawing when you want trademark protection for a particular design, stylization of wording, or combination of the two. If you want protection for wording alone, without regard to font, style, or color, the Standard Character format might be the one for you.
When submitting a Special Form drawing, you must also comply with additional requirements. After uploading the mark image, you will see a field for entering the “literal element.” This field is used to indicate all of the words that appear in the attached mark image. Do not use this field to add words, letters, or numbers that do not appear in the attached image. The submitted image must be complete and depict your entire mark. Then, you must submit a complete description of the mark. It can be simple and very straightforward.
If the mark is in color, you must claim each of the colors in the mark and indicate the location of each of the colors within the mark. Be sure to be complete and precise. If you do not wish to claim any particular colors, simply submit a depiction of the mark in black and white and indicate that no colors are claimed.
Because of all of the additional requirements and limitations created by color Special Form marks, most applicants apply either for Standard Character marks or for Special Form marks that appear in black and white. This allows them the greatest flexibility in use of their marks as their businesses grow and change over the years.
How Can You Identify Your Goods and/or Services?
Once you have chosen your mark, you must also be able to identify the goods and/or services to which the mark will apply, clearly and precisely. The identification of goods and/or services must be specific enough to identify the nature of the goods and/or services. The level of specificity depends on the type of goods and/or services. For examples of acceptable identifications, please consult the Acceptable Identification of Goods and Services Manual.
NOTE: Under U.S. Trademark law, class headings from the International Schedule of Classes of Goods and Services by themselves are not acceptable for registration purposes. The specific items of goods and/ or services must be listed.
Is Searching Marks in USPTO Database Important?
You should search the USPTO database before filing your application, to determine whether anyone already claims trademark rights in a particular mark through a federal registration. Failure to conduct a proper search may result in your not making a proper assessment as to whether an application should even be filed.
How Do You Identify the Proper “Basis” for Filing a Trademark Application?
A trademark application must specify the proper “basis” for filing, most likely either a current use of the mark in commerce or on an intent to use the mark in commerce in the future. Understanding the distinction between these filing bases, and the implications of selecting one, are important considerations before starting the application process.
How Do You Actually File a Trademark Application?
You may file your trademark application online using the Trademark Electronic Application System (TEAS)
What Are The Required Fees And How To Pay Them?
The filing fee for your application will be based on the following:
(1) NUMBER OF MARKS: Only ONE mark may be filed per application. If you have multiple marks, they require separate applications, each with its own filing fee;
(2) NUMBER OF CLASSES: You must pay for each class of goods and/or services in the application. For example, if the application is for one mark but the mark is used on goods in two different classes, such as computer software in Class 9 and t-shirts in Class 25, then a filing fee for two classes is required before the application could be approved; and
(3) THE VERSION OF THE FORM BEING USED: The application filing fee for the TEAS Plus version of the form is $275 per class of goods and/or services, but with stricter requirements, while regular TEAS is $325 per class.
NO FEE REFUNDS: Registration is NOT automatic and requires legal review by an examining attorney. Please take all necessary steps to ensure your mark is entitled to receive a trademark registration before filing an application. For example, it is important to take steps such as consulting the ID Manual and searching the USPTO database before beginning the application (see “Identifying Your Goods and/or Services” and “Searching Marks in USPTO Database” sections, above).
WARNING: Additional fee(s) and filing(s) will be required if you select the “intent to use basis” in the application form. Documents showing use of the mark in commerce will be required before registration.
It is important to understand these variables, as it may impact how you may wish to proceed.
How Do You Monitor the Status of Your Application?
You should monitor the progress of your application through the Trademark Status and Document Retrieval (TSDR). It is important to check the status of your application every 3-4 months after the initial filing of the application, because otherwise you may miss a filing deadline.
How do You Protect Your Rights After Obtaining Trademark Registration?
You are responsible for enforcing your rights if you receive a registration, because the USPTO does not “police” the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.
Updated: 1/29/2013 by RHR
The Law Offices of R. H. Robbins assists companies and individuals with international trade matters and trademark registrations. Please contact us by telephone at: (954) 946-8130 OR by email to rose at roserobbins.com OR by submitting the simple form below to set up a free confidential consultation to see if we may be of assistance to you.