Before you visit your Trademark Attorney

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Is your mark a TRADEmark or a SERVICEmark?

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.


Should you seek a federal trademark registration?

Federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.


Is your trademark already In-Use or are you still in the Planning Stage?

If an applicant is seeking federal registration and is still in the planning stages, he/she may still file an application with the USPTO as an "Intent-to-Use" application. The process is the same as with a mark that is being used except that when the application is granted, the applicant must provide a statement of use within a shortened period of time (6 months then extendable) to prove that the mark is then actually in use.


How far does my geographic scope of use have to extend?

You only need to start using a mark to begin owning common law trademark rights. These rights are governed by state law and your protection is geographically limited to the area in which you are using the mark. To legally apply for a federal trademark registration, you must prove that the mark is being used (or is intended to be used) in "interstate commerce". For goods, "Interstate commerce" involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).


Am I beginning use of a mark that someone else may already be using?

You should conduct some searching on your own before investing money into your brand. Such searching may be conducted through Google and also with the USPTO trademark search engine. Your attorney will likely advise having a professional search completed. If there is a prior conflicting mark, it is best to review carefully.


If I am set to file a federal trademark registration, what examples are needed?

The USPTO requires an example of how the mark is used; also called a "specimen".A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. Specimens are required in applications based on actual use in commerce.


Do I need to provide a drawing in addition to the specimen?

Yes. A drawing is required in all applications, and is used by the Office for several purposes, including printing the mark in the Official Gazette, and on the registration certificate. A specimen, on the other hand, is required as evidence that a mark is in actual use in commerce.The "drawing" is a page which depicts the mark applicant seeks to register.

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