Trademarks 101 Checklist
The 23 Essential Factors Your Organization Needs to Know to Protect Its Intellectual Property
How much time do you spend worrying about protecting your company’s intellectual property, trademarks, and brand in general?
Most companies do decently at registering and monitoring their first few (and most important) trademarks. But, too often, trademark management grows into an unwieldy and stress-inducing project where small oversights can lead to serious revenue losses to competitors and other third parties.
We put this document together to help you evaluate how well you’re currently managing your company’s trademarks, and what issues you might need to look into in the future.
Scroll through for a thorough look at trademarks, or jump to your section of interest:
Basic Definitions & Processes
These items may seem elementary, but confirming understanding of trademark concepts and procedures is key to evaluating the current state of your own.
1. What is a trademark?
A trademark is a word, words, name or symbol including letters or design or any combination of these used to distinguish the products of one company from those of others.
A service mark is the same as a trademark except that the mark is used in connection with services. (The term “trademark” will be used hereafter to refer to both trademarks and service marks.)
2. What is a trade name / corporate name?
A trade name or corporate name is a name, surname or firm name used by a manufacturer or merchant to uniquely identify his legally constituted business or organization and distinguish it from all other business entities.
A trade name/corporate name is the name used by a company in its business transactions. It is the name under which it pays bills, takes title to real estate and the like.
A trade name/corporate name can also function as a trademark provided it is used in a trademark manner and it is used to distinguish the goods or services of the owner from those of others.
3. What Protections Can Registering Trademarks Offer?
The mere use of your trademark to identify and distinguish your products or services from those of another creates common law trademark rights.
Statutory rights are obtained through registration of the trademark in the United States Patent and Trademark Office (“Trademark Office”) and with the various state governments.
State trademark registrations should be obtained to cover marks that are used only in interstate commerce. The registration of a trademark in the Trademark Office enhances the rights of the owner of a registration to preclude subsequent users from using the mark. Registration also provides nationwide rights.
4. How Filing Trademark Applications Works
Trademark applications may be filed in the Trademark Office based on:
a) actual use of the mark;
b) the “intent to use” the mark.
After an application is filed, it is examined for compliance with the trademark laws. If the application is approved, the mark is published in the Trademark Official Gazette for the purpose of allowing interested parties to oppose if they are of the opinion they will be damaged by the issuance of the registration. If there is no opposition, or if the trademark owner is successful in defending against any filed opposition, the application is then in a position to be registered.
Actual Use vs. Intent To Use Applications
An application that is based on actual use will proceed to registration, without more. Owners of applications based on "intent to use” are allowed a specific period of time in which to put the mark in actual use and file a Statement of Use, after which the mark will be registered. Once an "intent to use” application is registered the filing date of the application will be considered the date of first use.
The date of first use for applications based on use is the date of actual first use. Thus, if you have plans for commercial use of a mark that is not yet in use, it would be wise to promptly file an “intent to use” application in order to put your trademark claim on record and establish an early priority date.
Failure to properly register trademarks in ALL relevant jurisdictions is one of the most common (and costly!) errors we see companies make.
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5. Foreign Registrations
If you export goods or services to foreign countries, it is extremely important that you obtain registrations in each country in which goods or services are sold; otherwise some third party may obtain a registration and obtain superior rights. In some countries, superior rights are acquired by the party who is first to register, and in other countries superior rights are acquired by the party who is first to use. Most countries have a first to register system. There are certain treaties in place which allows one application to cover multiple countries.
6. Additional Coverage
If the registrations for your trademark do not cover all the goods upon which you are currently using the trademark, you should consider filing a new application to obtain protection for the goods not covered.
7. How Domain Names and The Internet are Related to Trademarks
What is a domain name?
In its basic form, the Internet is a collection of interconnected networks of computers. Domain names are the Internet addresses (like your home or company address) used by individuals and organizations.
Domain names are assigned by Network Solutions, Inc. (“NSI”) or other such organizations. Domain names are granted on a first come, first-served basis and to only one owner.
These organizations do not conduct a trademark or service mark search before granting the domain name. These organizations will not register a domain name identical to one previously registered, but they will register a domain name confusingly similar to a previously registered domain name.
As a practical matter, companies seeking to establish a commercial presence on the Internet need to be prepared to engage in a race to register their marks as domain names as key components of their cyberspace identity.
Many unscrupulous persons register, as domain names, the marks of other companies and then try to sell them to the rightful owner. These people make a business out of this practice. In November 1999, the Anti-Cybersquatting Act was passed. This Act allows trademark owners to sue domain name violators for damages and for forfeiture, cancellation or transfer of the domain name to the rightful trademark owner. Thus, it is recommended that some consideration be given to registering your new marks as domain names at about the same time trademark applications are filed in the Trademark Office.
8. Trademark Notices & How to Use Them
If your trademark is registered in the Trademark Office, a notice should accompany the use of the trademark wherever practical. This should take place adjacent to the most prominent use of the trademark in any printed material.
The proper notice for registered trademarks may take one of the following forms:
- ®
- Registered in U.S. Patent and Trademark Office
- Reg. U.S. Pat. & TM Off.
The symbol ® is the preferred form.
If the trademark is not registered in the Trademark Office, you may wish to use, although it is not mandatory, the symbol ¢ to indicate a trademark or _ to indicate a service mark.
9. Trademark Licensing
Your trademarks are generally the most valuable assets of your company. Many companies use licensing as a means of additional revenue. You may license others to use your trademarks.
Such license agreements must be in writing and must provide for the owner’s control over the nature and quality of the goods or services sold under the licensed trademark/service mark.
10. Maintaining the Registered Trademark
Declaration of Use
The federal trademark laws require that a declaration of use be filed between the fifth and sixth years of the date of registration and at the end of each successive ten-year period following the date of registration. This declaration must state that the mark is still in use in connection with the goods or services covered by the registration. If such a declaration of use is not timely filed, the registration will be cancelled.
Renewal
Registrations are now valid for a period of ten years from the date of registration. The registration can be renewed every ten years provided the mark is still in use and a renewal application is filed six months prior to the expiration of the ten-year registration period or within three months following the expiration of the registration period. If such a renewal application is not timely filed, the registration will be cancelled.
11. Assignments / Change of Name
If you have sold or assigned your trademark, the document of transfer must be recorded in the Trademark Office. If you have changed the name of your corporation, a certificate of change of name must be filed in the Trademark Office.
Are all your trademarks properly tracked and maintained for long term management?
Learn how a trademark focused firm is in a better position to ensure no trademarks get left behind.
12. Trademark Abandonment
Trademark rights exist and persist in the United States through proper use of the trademark. Failure to continuously and properly use your trademark and/or failure to police your trademark may result in the abandonment of your trademark rights.
Every effort should be made to:
- A) make continuous use of your registered trademark;
- B) use the trademark properly, and
- C) stop infringers from using your mark.
The federal trademark laws provide that three years of non-use constitutes prima facie evidence of abandonment.
13. Stopping Infringing or Counterfeit Goods from Entering the United States from Abroad
The owner of a U.S. Registration may acquire significant protection by recording its registration with the United States Customs Service (“Customs”). The effect of such recordation allows the owner of the registration to preclude importation into the U.S. of counterfeit goods (copies that look like genuine goods) or goods bearing infringing marks. The Customs officials in effect police the mark for the trademark owner.
The Customs officials inspect shipments of goods coming into the U.S. and seize goods that are deemed to infringe the registration or that are counterfeit goods. If the goods seized are counterfeit, they are forfeited by the importer. If the marks are infringements, then the goods are either sent back to the place of origin or the mark is removed or obliterated. The cost of recording the registration with Customs is quite modest and may be done quickly. This procedure is highly recommended for registrations that cover manufactured goods.
14. How to Stop Trademarks From Entering Public Domain
Trademarks must be properly used. If a trademark is not properly used, the trademark may become part of the public domain. Examples of trademarks that have passed into the public domain, as being generic, because of improper use include escalator, linoleum, and cellophane.
1. A trademark should always be used as a proper adjective. It is not a noun and should not be used as a noun. For example: instead of referring to a certain food product as “OREOS” it should be referred to as “OREO” cookies.
2. A trademark should, wherever possible, be followed by the descriptive name or the generic name of the product, e.g., SANKA coffee. In printed material, the common descriptive name should be used with the most prominent usage of the mark and in every other instance, where practical.
3. In print, your trademark should always be used in a manner that will distinguish it from the surrounding text, i.e., by capitalization, bold-faced print, different colors, underlining, quotes, larger letters, etc.
4. If your trademark is a word mark, always spell your trademark exactly as it appears in your trademark registration certificate.
5. If your trademark is a logo or design, always use the precise pictorial representation as shown in your trademark registration certificate.
6. Trademarks should never be abbreviated, nor their spelling changed in any manner.
7. Trademarks should only be used in the non-possessive form, unless the trademark itself is possessive, such as McDONALD’S.
8. Trademarks should only be used in the singular form.
9. Trademarks should never be used as a verb. For example: You may say "Clean the windows with WINDEX glass cleaner” but you should not say “Windex my windows”.