A trademark is a brand for a product or service. The trademark can be a word, logo, or phrase that identifies and distinguishes the source of the goods or services of one party from those of others. Technically, if a certain mark is associated with a service, it is called a "servicemark," but trademark is commonly used to refer to both marks associated with services and products.
Establishing Trademark Rights
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark stating that the applicant has bona fide intention to use the mark in commerce regulated by the U.S. Congress. Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure rights beyond the common law rights acquired by merely using the mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.
Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive.
Types of Applications for Federal Registration
An applicant may apply for federal registration in three principal ways. (1) An applicant who has already begun to use a mark in commerce may file based on that use ("use-in-commerce"). (2) An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). For the purpose of obtaining federal registration, commerce means all commerce between the U.S. and another country. The use in commerce must be bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as "use in commerce". If an applicant files as bona fide intention to use in commerce, the applicant will have to use the mark in commerce. (3) Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.
Use of the "TM," "SM" and "®" Symbols
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues. Please omit all symbols from the mark in the drawing you submit with your application; the symbols are not considered part of the mark.
Identification of the Goods and/or Services
When submitting an application for registration of a U.S. trademark, you must indicate what kinds of goods and/or services the trademark applies to. Use clear and concise terms specifying the actual goods and services by their common commercial names. A mark can only be registered for specific goods and services. The goods and services listed will establish the scope of the applicant's rights in the relevant trademark.
Use language that would be readily understandable to the general public. For example, if the applicant uses or intends to use the mark to identify "candy", "baseballs and baseball hats", "travel magazines", or "dry cleaning services" the identification should clearly and concisely list each such item. If the applicant uses indefinite terms, such as "accessories", "components", "devices", "equipment", "food", "parts", "systems", "products", or the like, then those words must be followed by the word "namely" and the goods or services listed by their common commercial name(s).
Basis of Filing
When applying for a trademark the applicant must declare whether the mark is currently in use in commerce or the applicant has a bona fide intention to use the mark in commerce. If the applicant has already started to use the mark in commerce prior to filing application for federal trademark, then the applicant must choose "use-in-commerce" and provide the dates of "First Use Anywhere" and "First Use in Commerce". The terms First Use Anywhere, as it implies, means the date of the applicant’s first use of the mark anywhere on or in connection with the goods or services. First Use in Commerce refers to the initial date that the applicant began using the mark in all commerce that the U.S. Congress lawfully regulates; for example, interstate commerce or commerce between the U.S. and another country.
When applying for a federal trademark, you must also submit at least one actual sample of how you use the mark in commerce. This sample(s) is referred to as a specimen. The purpose of the specimen is to provide a context for your application. The PTO will use the specimen to determine whether you are actually using a trademark or service mark in commerce in direct association with the goods/services you described in the application. Care should be used in selecting the appropriate specimen for the application. The key is to provide a specimen that is consistent with your application and drawing page. It should include all the elements of the mark shown on the drawing and should eliminate (or attempt to minimize) any other extraneous matter.
You must submit one (1) specimen for each class of goods/services you identify in your application. For example, if you have selected two (2) classes, you should include two (2) specimens. The specimens may be identical, but are not required to be. As a general rule, if your application includes a range of goods or services in a class, your specimens do not need to show each and every item in that group.