Frequently Asked Questions

A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same types of goods or from selling the same types of goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the U.S. Patent and Trademark Office (USPTO) for nationwide protection.

Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times. The Law Office of Xavier Morales can assist you with filing these documents to maintain your trademark registration. For more information, see our article How Long Does a Trademark Last?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration. For more information, see our article The 3 Trademark Symbols and What They Mean.

An "Office Action" is a letter from the USPTO setting forth the legal status of a trademark application. If your trademark application receives an "Office Action" from the USPTO, you may require legal assistance to properly respond to the issues raised in the Office Action. The Law Office of Xavier Morales can assist you with a proper response to the Office Action. Absent such a response, your trademark application may go abandoned, and you may lose your valuable trademark rights. Learn more about Office Actions.

There is a government filing fee of $350 per class of goods/services with any trademark application in addition to the attorney costs to prepare the application. Our Trademark Registration Service does not include responding to substantive USPTO challenges or third party oppositions to the trademark application. When appropriate, the Law Office of Xavier Morales can be retained at low flat-fee rates to represent you before the USPTO. For more information, see our article How Much Does It Cost to Trademark a Name?"

Assuming a clean application, the trademark process can play out in under a year. It typically takes the USPTO between four and six months to review an application. If the examining attorney finds no issues with the application, it might move quickly to the publication phase. Assuming no objections by third-parties, the USPTO could issue a registration within nine months of the initial filing. A more common timeline is between 13 and 18 months, factoring for any Office Actions or other delays along the way.

The initial trademark registration lasts six years. After the five-year anniversary of a trademark registration, an owner must filed a Section 8 Declaration form. This indicates to the USPTO that the mark is still in active use. Owners must file this form on or before the six-year anniversary date. Additionally, after the nine-year anniversary, the owner must file a Combined Section 8 Declaration and Section 9 Application for Renewal. This is due before the 10-year anniversary of the registration date. An additional Section 8 Declaration and Section 9 Application for Renewal is required every 10 years thereafter. For more details, see our article How Long Does a Trademark Last?

Trademark ownership does not bestow ownership of words on a company. Many companies use "DOVE" to identify their goods or services. They can do this, because they are not direct competitors (therefore consumers aren't likely to confuse them). Many searches of common words reveal many usages. Some examples include "DELTA", "APPLE", and "HOTROD".

If the USPTO approves and registers your trademark application, your rights are valid in all 50 states. These rights are not as absolute for common law and state-level trademark owners.

While a federal trademark registration will make it easier for you to pursue international trademark rights, it does not automatically grant you any international rights. You can file for international trademark rights under the Madrid Protocol.

Part of the trademark application process involves demonstrating to the USPTO that you are currently using the mark in commerce. That is, that you are actively using the mark to identify your goods or services. If you are filing a trademark application for goods or services that you plan to use in the future, that is said to be an "intent to use" application. Within six months after the USPTO approves your application, you must either demonstrate use in commerce, or you must file for an extension.

Most trademark applications are for the Principal Register. The Supplemental Register contains marks that could not be included in the Principal Register. This includes marks that are merely descriptive, are primarily merely surnames, or are primarily geographically descriptive. Placement on the Supplemental Register does bestow the owner with some, but not all, trademark rights, including usage of the ® registered trademark symbol. If the mark does acquire secondary meaning through long and continuous use in commerce, the owner can apply for an entry on the Principal Register.

While a federal trademark registration formalizes a business's rights, it is not necessary to hold trademark rights. The first company to use a name for particular types of products or services has common law trademark rights to that name. While common law trademark owners do have rights, owners of federal trademark registrations have clearer avenues to pursue anyone infringing on the trademark.

You can certainly run your own trademark search. The Trademark Electronic Search System (TESS) is free for anyone to use. However, there are many companies that have trademark rights, but do not have a federal registration. Additionally, a trademark attorney can pursue a search from many angles, helping to find not only matches of the mark, but any potential points of confusion. More information: How to conduct a trademark search