Bruzga & Associates

A trademark is a word, phrase, symbol, design, or a combination of the foregoing, that identifies and distinguishes the source of goods or services of one party from others. For example, COCA-COLA® is used by the Coca-Cola Company as a trademark to denote a certain brand of cola beverage. A service mark is also a trademark, but is used to denote a service, e.g., WENDYā€™S for restaurant services.

A word or a combination of words, phrases, symbols, logos, designs, etc. can be trademarked. In addition, fragrance, sound or color may also be trademarked upon satisfying certain prerequisites.

Examples of what cannot be trademarked are:

ā€¢ An idea.
ā€¢ A generic term, such as ā€œSEAFOODā€¯ for seafood products.
ā€¢ A mark merely describing a characteristic or function of a product or service, such as BED AND BREAKFAST REGISTRY for lodging reservation services. However, such marks may be still protected if the applicant can show exclusive rights in the mark.
ā€¢ A mark that is primarily merely a surname.

Choose a strong trademark that is not merely descriptive of the products and services you wish to sell. A strong trademark is a coined term like KODAK®, or an arbitrary term like APPLE® for computers. Also ensure that the proposed mark is not likely to cause confusion with existing third-party marks, by undertaking a trademark availability search.

You have to file a trademark application with the U.S. Trademark Office if you want to obtain Federal (nation-wide) protection for your mark. You could also register the trademark in individual States, but this offers limited protection only within a State, and hence is usually not cost-effective.

No. Filing an application for trademark with the U.S. Trademark Office is only the first step. A trademark would be registered typically within 12-18 months after filing, if the U.S. Trademark Office raises only minor objections to the proposed trademark application, and if no third-party opposes the mark.

On the other hand, if the Trademark Office raises substantial objections, for instance, by finding that the proposed trademark may be confusingly similar to a third-party registration, we would then need to overcome such objections before the mark can be registered.

A trademark registration is valid as long as the trademark is being used consistently and continuously, and provided certain post-registration procedures are followed. These include the timely filing of an affidavit for renewing the mark, and an affidavit affirming continuous use of the mark.

Yes, you can, by filing an intent-to-use application. As long as you have not filed a trademark application with the U.S. Trademark Office, and have not started using the mark, you have no rights to the trademark. It is therefore advisable to file an intent-to-use trademark application, by which you can reserve your rights in the mark, before you use it. Otherwise, another company may gain superior rights in the trademark by using it, for instance, and can then prevent you from using the trademark, and perhaps require you to destroy any trademarked goods you have made.

Trademark infringement occurs when a company or individual adopts a trademark that is likely to be confused with a pre-existing trademark. If you adopt a mark that is likely to cause confusion with anotherā€™s, whether knowingly or unknowingly, the owner of the preexisting trademark could file a suit for trademark infringement against you.