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General information about trademarks

 
  

When may I use TM and when may I use R-in-a-circle (®)?

Under U.S. trademark law, the R-in-a-circle symbol (®) may only be used in connection with a mark if that mark is a federally registered trademark. By "federally registered" we mean that the trademark owner has not only filed a trademark registration application with the US Patent & Trademark Office, but has been granted a registration. In contrast, the TM and SM symbols may be used freely without respect to whether or not there is a federal trademark registration. If you are offering goods or services, you may freely use the TM or SM symbol to denote trademarks or service marks that you use to indicate the origin of your goods or services.

How may I do trademark research on the Internet?

There are no free-of-charge comprehensive trademark resources on the Internet. At Arvic we do trademark searching by utilizing two techniques:

  1. online searches of our own databases of complete listings of both the American and Canadian trademarks databases and

  2. comprehensive common law searches from a number of Internet resources.

There are a number of recognized trademark searches on the Internet. They include Thomson & Thomson. Online databases available through Dialog include trademark applications and registrations in the United States, Canada, and many countries of Europe. Other trademark databases are also available through Compuserve, Questel/Orbit, and STN.

A number of companies have set up sites that permit doing trademark searches through a web interface. We do have competition. We would like you to know what they offer so you will have an appreciation of what we offer.

When must I file a trademark application?

Unlike patent applications, which in many cases must be filed in advance of a particular date, there is no specific date by which a trademark application must be filed. Instead, the time constraint is in a different direction. In the United States an ordinary so-called "use" trademark application can only be filed after the goods or services have been in interstate commerce.

What is ITU (intent to use)?

A few years ago the U.S. Patent and Trademark Office established a new kind of application called an "intent-to-use" or ITU trademark application. To be able to file this application, the applicant need not have used the mark in interstate commerce (as would be required for a use-type trademark application) but need merely have a good-faith intention to use the mark in interstate commerce. However, the intent-to-use law does not permit "reserving" trademarks for indefinite periods of time. In particular, an intent-to-use trademark application goes abandoned if the applicant does not perform actual use within a specified time interval after the filing date of the application.

"ITU" is also the acronym of the International Telecommunications Union, a body which coordinates policies and technical standards for radio, telephone, and telegraph communications.

Can I register a trademark myself?

Just as with copyrights and patents, it is possible to apply for a trademark without the assistance of counsel. Although the rules for prosecution of a trademark application are somewhat complicated, many trademark registrations have been obtained by applicants who represent themselves before the Trademark Office. Nevertheless, many applicants choose to pay an attorney to represent them before the Trademark Office in obtaining a trademark registration.

What is a good publication from the U.S. Patent and Trademark Office?

The U.S. Patent and Trademark Office publishes Basic Facts About Trademarks, a 20-page brochure containing all necessary forms, information, and fees.

What does it cost to file a trademark application?

The cost to file a trademark registration application, if you do it yourself, is largely the cost of the U.S. Patent & Trademark Office filing fee. The filing fee increases with the number of trademark classes in which the application is made. If you hire a trademark lawyer to do the work the cost will probably be the lawyer's professional fee, the filing fee (again based on the number of classes), and incidental expenses. Our experience suggests that the cost to the client (fees and expenses) for the trademark filing averages around $900.

The cost does not always end with the filing of the application, however. If the application is opposed by some member of the public, or if the Examiner raises objections, then the response to the opposition or objection takes time and money.

What is the governing law for trademarks in the US?

In the United States, the law that governs trademarks is Chapter 22 of Title 15 of the United States Code, commonly cited as "15 USC". (LLI, Legal Information Institute, retrieved link on Oct. 17, 2005)

How may I find out about trade mark laws around the world?

For information about trade mark laws around the world, the trade mark search firm of Thomson & Thomson offers a very helpful International Guide to Trademarks. You may also wish to consult intellectual property counsel in your country of interest.

The name of my company was approved when I incorporated - Doesn't that mean I am free to use that name as a trade mark?

A most common misconception is that if one has a corporate name approved by the Secretary of State (the state agency that regulates corporations) then this means one may freely use the name in commerce. It is simply not so.

The reason that state approval of a corporate name is insufficient, is that the state authorities are only concerned that there not be two identical corporate names. They are not at all interested in making "likelihood of confusion" comparisons. Thus, they will happily allow ABC Distributing Co. and ABC Distributions Co. to exist at the same time, simply because they are not identical. Furthermore, a state agency only cares about one state. This means that there is probably a Mike's Pizza Inc. in most (if not all) of the states.

Another reason why getting approval from a state agency is insufficient is the fact that such agencies only concern themselves with business names, not trademarks. If you wanted to go into business as "Tide Soap Co." you probably would be permitted to do so by the state agency, but the big company that has TIDE as a trademark on its products would take a very different view.

Intellectual property lawyers find themselves explaining this from time to time, typically after a client has received a "cease and desist" letter from a company that has been around longer. In many cases the prudent business decision is to give up and use some other name. This has the clear drawbacks that any accumulated goodwill with customers relating to the previous name is often lost, and one must throw away stationery, business cards, and promotional materials and pay to have new materials printed.

In some businesses these costs may be minor enough that there is no good reason to spend money on searching to see if a name is free to use. But for many businesses, it is good planning to conduct a "freedom-to-use" inquiry before making substantial investment in a proposed new name. While the inquiry cannot guarantee the absence of trademark disputes, it can drastically reduce the risks. The client may create a list of proposed names, and experienced trademark counsel can then perform an initial screening of the names using relatively inexpensive online databases. This screening can be done in a matter of minutes by experienced counsel; many clients also have in-house searching capability on Dialog, Compuserve, Questel/Orbit, or STN to perform such screening.

Assuming that one or two proposed names survive the screening, usually the next step is to have a "full freedom-to-use search" done by a well-known trademark search company. The results of this search are studied by counsel who can then advise the client of the relative level of risk for the proposed names. Depending on how extensive a search is ordered, freedom-to-use searches may review US federal and state trademark filings, foreign trade mark filings, corporate name filings, and databases reflecting usage in trade for which no formal registrations have been made. The results of these searches are studied to evaluate both similarities in the words being used and similarities in the goods or services being offered.

Summary: it is unwise to attach any freedom-to-use significance to approval of a corporate name by a state agency. In cases where it would be a hardship to have to change the name later, it is wise to consult experienced trade mark counsel.

We trust, now that you have read this article, that you will come to the conclusion that you should include an Intellectual Property specialist on your list of professional advisors.

If this article has left you with unresolved questions then we ask that you direct them to us. We ask that you take the time you to learn all about ARVIC, who we are, what we can do for you and why you should employ us. For free consultation or practical information on any trade mark related issue you are invited to contact us.

 

Arvic Search Services Inc.
Suite 260, 2323 - 32 Ave. N.E. Calgary, Alberta Canada T2E 6Z3
Phone: 403-234-0844 Toll Free: 1-888-227-8421 Fax: 403-294-0944 or Email Us