Trademarks

What is a Trademark or Service Mark and How do they differ from Patents and Copyrights?

A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.

How do I select a strong mark?

It is vitally important that you select or create a trademark that is both federally registrable and legally protectable. A strong trademark identifies the source of your goods and services, as well as distinguishes them from the goods and services of others.

Should I register my Trademark?

Although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods/services listed in the registration.

Identifying 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 (ID 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.

Applications for trademarks used on regulated products (e.g. cannabis, drug paraphernalia, ivory, whalebone) and activities (e.g. gambling and wagering, retail stores featuring controlled substances) are subject to additional review.

Identifying 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 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.

Filing a Trademark application

First, contact Cerebral IP to perform a trademark clearance search.  Second, Cerebral IP can assist you in filing your trademark application. Remember, The USPTO charges filing fees per application AND per class of goods or services you identify.  The lowest filing basis at the USPTO (called “TEAS Plus”) requires payment of a federal filing fee of $250 per application and per class directly to The USPTO.  If you file a single trademark application but the goods that your business sells span three separate classes (i.e. furniture, clothing, and cosmetics), you’ll pay $250 x 3 ($750) in federal filing fees. Once your trademark registers, you are responsible for paying maintenance fees at certain time intervals to maintain your registration. 

Protecting your rights

You are responsible for enforcing your rights if you receive a registration because the USPTO does not “police” the use of trademarks. 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.