What is a trademark? A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. In other words, it is nearly anything capable of distinguishing a person or entity as the source of goods or services. A trademark, in essence, is anything you can describe as your "brand".
Why should I care? Your trademark will be one of your most important and valuable business assets. If you decide to sell your business down the road, your trademark and goodwill will be a significant line item on your company’s valuation.
What are trademark rights? A trademark gives you the right to prevent others from using the same or similar marks on their goods and services. In a sense, it is a government-backed monopoly that allows the owner to be the sole and exclusive business to use a particular word, phrase, symbol, smell, or color.
How do I get trademark rights? In the United States, you can get valid and protectable trademark rights if:
Your mark is protectable; and
You use the mark in connection with your goods or services in interstate or foreign commerce ("use in commerce").
What do you mean by protectable? There are several limitations on the types of things that can be protected as trademarks. For instance, you cannot register the generic name for a good or service, like APPLE for Apples, because other apple vendors need to be able to use that word to describe their product.
What about use in commerce? This phrase refers to a variety of things related to the advertising or sale of your goods or services with the trademark. What constitutes use in commerce depends on the nature of the good or service. There is no one-size-fits-all. The main points are that the use must be in good faith, and it must be commercial in nature.
Do I need to register my trademark? Technically, no. If your mark is protectable and you use it in commerce, you have a valid and protectable trademark. That being said, your trademark rights will be quite narrow. Typically, it limits the scope of your protection to the geographic area where you actually use the mark. Classic examples are the corner barbershop or nail salon. If, on the other hand, you register the mark with the United States Patent and Trademark Office ("USPTO"), you get several benefits, such as nationwide rights, and access to federal courts.
How do I register a trademark? Trademark registration is a process that begins with an application submitted to the USPTO. For a diagram of the complete trademark registration process, referred to as "trademark prosecution", visit this page.
What is Trademark Bank? Trademark Bank ("TMB") is a web-based trademark monitoring and docketing service for attorneys and entrepreneurs of all shapes and sizes. It has a simple yet robust search function designed for people on the go.
What are features does TMB offer? Our services fall into two broad categories: docketing and monitoring.
Docketing. On the docketing side, you can save pending trademark applications to your profile and TMB will send you updates whenever something happens with that mark, whether it is a notice from the USPTO Examining Attorney, or the issuance of your registration certificate. Our system will remind you when deadlines are coming up, and give you a searchable, exportable trademark portfolio that is intuitively designed to save you time and energy finding information about your registered and pending trademarks.
Monitoring. Our watch service enables you to set up "Watches" for any word or phrase you can imagine. TMB will notify you by email whenever any applications are filed for trademarks that include that word or phrase. That way, if any companies come along that want to take advantage of your established goodwill, you will know about it.
How do I add a trademark to my TMB portfolio? Just search for the mark and click "Add to My Trademarks". That’s it. To remove the mark, simply navigate to "My Trademarks", find the mark, and click "Remove".
How do I create a new trademark watch? It’s just like adding a mark to your TMB Portfolio. Just search for the mark and click "Create Watch". You can modify or delete your current watches by clicking "My Watches".
Which membership tier should I choose? It really depends on how many trademarks you have.
Can I search for logos on TMB? Yes. Just type in a broad description of the mark (e.g., parrot or pirate).
How do I upgrade my membership? Navigate to "My Account" and click "Change Plan".
How do I cancel my membership? Navigate to "My Account" and click "Cancel my subscription".
Is there a limit on the number of searches I can perform without a membership? Nope.
Is my account and browsing history private? Of course!
Can I export my trademark portfolio data to use with Excel? Yes, our Platinum and Platinum Plus Docs plans include a reports feature that let you export your trademark portfolio into an Excel spreadsheet.
Does TMB offer international prosecution or monitoring services? At this time, we do not offer any international services. However, we may do so in the future.
What is an Office Action? An Office Action is a formal correspondence from the USPTO attorney who examined your trademark application (the "Examining Attorney"), denying registration of your trademark for one or more reasons. Often times, the reason why your application was rejected was due to an "informality", meaning there was a procedural issue with your application. In other cases, the reason for refusal may be “substantive,” in which case you will need to either abandon your application (and forfeit your filing fee), or file a response with legal argument and authority to convince the Examining Attorney that the mark should be registered.
What is required to respond to an Office Action? It depends. Some Office Actions can be resolved with a simple phone call to the Examining Attorney. Others require applicants to file a legal argument with citations to case law.
What is likelihood of confusion? Likelihood of confusion is a basic concept underlying trademark law. It is relevant to both trademark registration and trademark infringement. In the registration context, it is a substantive ground for denial of registration based in statutory and regulatory law. You cannot register a mark that is so similar to another, preexisting mark that consumers would likely confuse the marks in terms of sight, sound, meaning, or commercial impression. We apply that same test to determine whether trademark infringement has occurred.
What is descriptiveness? In response to a previous question, we described a trademark as a government-backed monopoly to be the only one who gets to use a particular word, name, symbol, etc. as a brand name. Because of the natural anti-competitive effect that results from trademark registration, the system has certain checks built in to mitigate the impact on the business community. A descriptiveness refusal is issued when the Examining Attorney believes that the mark chosen by the applicant (typically a word or phrase) merely describes a quality or characteristic of the goods, services, or relevant consumers. Allowing someone to monopolize those kinds of words would prevent competitors from accurately describing their goods or services. Therefore, marks that are merely descriptive can be registered on the Supplemental Register (albeit, with a more narrow scope of rights), or on the Principal Register once the applicant can demonstrate acquired distinctiveness (i.e., that its exclusive use of the descriptive word or phrase as a trademark has caused the purchasing public to view the word as a mark, and not just a descriptive term.
What is geographic descriptiveness? Like descriptiveness, geographic descriptiveness refers to a substantive ground for refusal of a trademark registration that arises when the Examining Attorney finds that a trademark merely describes a quality or characteristic of the applicant’s goods or services. The difference is that geographic descriptiveness has a more narrow focus – geography.
What is a specimen? A specimen is an image showing your trademark in action. It’s typically a photo showing a hang tag, e-shopping cart, or other place where the trademark is viewed next to the goods or services in a meaningful commercial way.
What is a drawing? A drawing is a rendering of your trademark as it will appear in the USPTO records. For standard character marks (i.e., unstylized letters and numbers), the drawing is auto-generated. For marks with visual elements (e.g., logos or word marks with a specific font or color scheme), the applicant will be required to show the mark as it is intended to be seen by consumers. Notably, this must be the same mark that appears in your specimen.
What are the international trademark classes? The International Trademark Classes are a set of 45 broad categories of goods and services. For administrative purposes, trademarks are organized according to class. The classes frequently overlap, and are less than intuitive.
My mark was rejected. What should I do next? Speak with an attorney or start doing research.
Is my trademark a good brand name? We don’t know. We are not your attorneys or your brand consultants. You should find one or both of those to answer your question.
What is the likelihood that my trademark will be registered? Nobody knows. There are a variety of internal and external factors that can affect whether or not your trademark is ultimately registered. If you are confused by the process, you should seek guidance from a trademark attorney.