Trademarks and Service Marks

A trademark is a word, name, symbol or device, or a combination thereof, that serves as an indicator of the source or quality of goods bearing the trademark. Similarly, a service mark serves as an indicator of the source or quality of services. Both are referred to here as trademarks.

Rights in trademarks arise through use in commerce, and can increase in value over time as they gain recognition in the marketplace. Unlike patents, trademarks do not require government registration to exist, but they can be registered at the state and federal level.

Advantages of registration include notice to the public of the trademark claim, a legal presumption of ownership, and the opportunity to achieve “incontestable” status after use in commerce for five years. Additionally, in the case of an application for a federal trademark, an applicant can file for registration before the mark is in use in commerce, allowing for confirmation of the availability of the trademark prior to investing in advertising and packaging.

A federal trademark registration is obtained by filing an application with the U.S. Patent & Trademark Office.  The application is assigned to an examiner who will conduct a search for similar registered trademarks that might be confusingly similar to the applicant’s trademark. The examiner will also evaluate whether the mark can function as a trademark. Words or phrases that are generic for the goods or services, or merely descriptive of them, cannot serve as trademarks and will be refused registration. The examiner will correspond with the applicant or the applicant’s attorney (called “prosecution” of the application), and if the mark is ultimately found to be capable of serving as a trademark or service mark, and not likely to be confused with an earlier registered mark, it will advance to allowance or registration, depending on the type of registration filed.

Once granted, a federal trademark registration must be maintained to remain valid. Declarations of continued use and fees are due between the fifth and sixth years after grant, between the ninth and tenth years after grant, and every ten years thereafter. So long as the trademark remains in use, the registration can be renewed indefinitely.

More Information on U.S. Trademarks

The above description of trademarks and trademark registrations is simplified. Additional information about trademarks can be found on the U.S. Patent & Trademark Office website, https://www.uspto.gov/trademark.

Practice Areas

  • Plant Patents
  • Plant Variety Protection (PVP)
  • Trademarks
  • Foreign Plant IP Rights
  • Agreements