Trademark Lawsuits: Frequently Asked Questions

• What is the difference between a trademark and a service mark?
• Do I have to register my trademark?
• What are the benefits of trademark registration?
• When should I use the "TM" (trademark), "SM" (service mark), or federal registration symbol "®"?
• How do I register my trademark?
• How long does trademark registration last?
• What do I do if someone has infringed upon my trademark?

What is the difference between a trademark and a service mark?

A trademark protects the unique words, names or symbols that identify a company or product. Examples of trademarks include logos, slogans, icons and phrases.

A service mark is in essence the same as a trademark, except that instead of identifying a product or company, it is used as an identifier for a service.

Do I have to register my trademark?

A trademark does not have to be registered in order to establish rights. Instead, you can establish trademark rights through legitimate use of the mark in commerce.

What are the benefits of trademark registration?

While a trademark does not have to be registered in order to establish rights and protection, registering your trademark does offer a number of benefits, including:

• Established public notice of ownership
• Legal presumption of trademark ownership
• Exclusive rights to use the trademark in connection with listed good or service
• Right to pursue legal action in federal court concerning the trademark
• Basis for obtaining registration in foreign countries
• The right to use the ® symbol
• Listing in the United States Patent and Trademark Office's online database

When should I use the "TM" (trademark), "SM" (service mark), or federal registration symbol "®"?

Anytime you claim ownership and rights to the mark, you may use the “TM" (trademark) or "SM" (service mark), regardless of whether a trademark application has been filed with the United States Patent Office (USPTO).

The "®" symbol signifies that a trademark has been registered with the USPTO, meaning that the "®" can only be used once registration has been completed.

How do I register my trademark?

If you would like to establish a public record of ownership over your trademark, you will need to register it with the United States Patent and Trademark Office (USPTO). These applications can be filed online or by mailing in a paper application. Prior to registration, it is recommended to search the USPTO’s Trademark Electronic Search System (TESS) database for pre-existing trademarks that are identical or similar to yours. This database is open to the public and is offered free of charge.

Keep in mind that the USPTO only registers your trademark. It does not conduct trademark searches, comment on validity of the mark, or offer decisions on whether you have a right to use the mark. For this reason, it is often recommended that you seek the services of a qualified trademark attorney. An attorney can conduct a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks.

How long does trademark registration last?

After registering a trademark, you will be required to file periodic maintenance documents in order to maintain this registration. This includes the filing of “Declaration of Use” documentation within the fifth and sixth years following registration and the filing of “Declaration of Use” and “Application for Renewal” documentation within the eighth and ninth years following registration. These documents must then be filed every ten years. If the proper maintenance documents are filed in a timely manner, the trademark registration may last indefinitely.

What do I do if someone has infringed upon my trademark?

A qualified intellectual property lawyer can be a valued resource against trademark infringement. Because trademark litigation can often be complex in nature, it is best to choose a firm with the resources and experience necessary to ensure that your rights remain protected.

If you have questions that are not covered here, or if you would like to discuss a possible case with our staff of trademark attorneys, please contact us.