Frequently Asked Questions About Trademarks

What is a Trademark?

A trademark is a word or phrase (MERCEDES BENZ), logo (the McDonald's golden arches), symbol (the Nike 'swoosh'), design (Coke bottle shape), sound (the NBC chimes), or smell (rose scented yarn) that identifies the source of goods or services associated with it.   Top

How is it different from a Service Mark?

Effectively, trademarks and service marks are the same thing, but trademarks identify goods (tangible items that you can purchase) and service marks identify services (legal services, consulting services).   Top

How does a trademark differ from a copyright?

A trademark is anything that identifies the source of goods or services. A copyright protects original works of authorship.

For instance, LORD OF THE RINGS is a trademark that identifies a series of books. The actual content of the books (the words written by J.R.R. Tolkien) are protected under copyright law. Cobalt also registers copyrights.   Top

Is my company name a trademark?

If you sell products or services under your company name, then your company name serves as a trademark or service mark. If you sell your goods under a different name, then your company name might not be a service mark. An example of a company whose company name is not the trademark under which it sells products is V&S Vin and Spirit (which sells ABSOLUT vodka).   Top

My company is registered with the Secretary of State. Does that mean I don’t need a trademark?

No. The Secretary of State registers corporate names and does not monitor or record trademarks. Registering your company with the Secretary of State has nothing to do with state or federal registrations of trademarks.   Top

Do I need to register my trademark or service mark in order for it to be a valid trademark?

No. In the United States, merely your use of a trademark or service mark in a certain trading area (known as 'common law' use) is sufficient to give you trademark rights. Federal registration of your trademark, however, is recommended because it confers a number of automatic rights not conferred by your common law use.   Top

If I register my trademark, does that prevent others from using it?

Not in all cases. Registration of a trademark is limited to the goods or services that you sell under that trademark. For instance, if you register SYMPHONY for a line of wedding rings, you may prevent third parties from using that mark for jewelry, but you will not be able to prevent its use for the sale of unrelated goods or services, such as software or facial tissue.   Top

I have a website name with my trademark in it. Is that good enough?

Merely owning a website address does not mean you are using your mark as a trademark. The mark must be on the site in a manner consistent with what is considered trademark use.   Top

I haven’t started selling the product for which I want to reserve a trademark. Can I still file a trademark application?

Yes. If you intend to use a trademark, you can file a special application that will reserve your trademark. Once the trademark application is approved, you have up to 3 years in which to use your trademark and preserve your rights.   Top

My trademark is pretty descriptive. Can I still register it?

That depends. What is descriptive to you may not be descriptive to the U.S. Patent and Trademark Office (USPTO) and vice versa. If your mark is legally descriptive, you may nonetheless be able to register it depending on how long you have been using it and how well-recognized your mark is by consumers.   Top

Is there a time limit within which I must register my trademark?

No. You may register your mark prior to using it, or any time thereafter, but there may be many advantages to filing earlier rather than later, depending on the facts of your case.   Top

I just discovered that someone is using a trademark that I want to use. May I still use it?

It depends. If a party is using a mark for the same or similar goods or services, you may not be able to use it. If, on the other hand, a party is using a mark for goods or services that are distinctly different, you may be able to use it. An attorney can assist in this determination.   Top

I heard there is something called a certification mark. Is this something that I should apply for?

Possibly. A certification mark is used to certify the quality or origin of a product or service. If your company certifies third parties, this may be appropriate for you. Classic certification marks include the ILGWU mark for clothing, and the UL mark for electrical products.   Top

What is the difference between the symbol ™ and the ® symbol?

The ® symbol may only be used if a mark is registered at the USPTO. The ™ may be used after registered marks or unregistered marks to identify trademarks.   Top

I am only going to operate in one state. Shouldn’t I file a state application instead of a federal registration?

Maybe, but your attorney should counsel you in this regard. In order to receive a federal trademark registration (which gives you 'constructive' rights nationwide), you must be selling/offering your products or services in interstate commerce (between states). If you have an active website from which your products or services are being offered, then you are likely selling in interstate commerce. A Federal registration is always the best option because it affords you rights that a state registration does not.   Top

I am planning to sell my products or services internationally. Does my U.S. trademark protect me overseas?

No. Each country has different laws regarding trademark use and trademark registration. A good trademark attorney can advise you on the basic laws for each country. Cobalt has relationships with attorneys worldwide who can assist with trademark registrations in any country in which you wish to operate.   Top

Do I need an attorney to register my trademark?

Not in the United States. You can register trademarks without the aid of an attorney by using the USPTO (http://www.uspto.gov) website. Your trademark application may be refused, however, which could lead to abandonment of your application and a loss of your trademark rights. A qualified trademark attorney can assist you with various aspects of the trademark prosecution process, including identifying potential barriers to registration before you apply; assisting with a legal description of your goods or services; counseling on the appropriate class in which to register; drafting an application that reduces the likelihood of refusal.   Top

Are there other benefits to using an attorney?

Yes. A trademark attorney will docket all deadlines and assist you with filing the appropriate paperwork. An attorney can expand your classifications as your business grows. An attorney can help you draft the broadest description of your business, thereby creating a barrier to entry for other parties wanting to use your mark.   Top

I applied for a trademark and I was refused. Can I trademark attorney help me even though I’ve started the process?

Yes. A trademark attorney can assist you at any point before your application is abandoned (and sometimes, an attorney can help revive an abandoned application).   Top

I have some more questions.

Feel free to call Cobalt with questions about trademarks and trademark registrations.   Top