Frequently Asked Questions
What is a Trademark?
A trademark is any name, word, color, symbol, design or any combination of these things, used to identify the source or the provider of a good. If it is a service being provided instead of a good, the technical classification would be a "service mark," however trademark is generally understood to identify both
Do I need to get my Trademark Registered to use by name?
Put plainly, no. Trademark rights are established by use, not by registration. Obtaining a federal registration significantly enhances your trademark rights, serves a springboard for international protection and is the only method of making a trademark incontestable.
What is an Office Action?
An office action is a letter from the trademark examiner assigned to review your application at the trademark office. This letter will highlight certain issues found by the trademark examiner. We talk more at length regarding office action letters here.
What happens if I don't make my renewal filings on time?
If you fail to make any of your renewal filings, the trademark office will cancel your registration and you will lose your federal trademark rights. It is important to keep on top of renewal deadlines to avoid a lapse in protection.
I received a notice saying my trademark application is 'abandoned'. what does this mean?
A trademark application will only become abandoned if you fail to respond to an office action letter, if you voluntarily abandon the application, if your application was contested and was subsequently abandoned by order of the Trademark Trials and Appeals Board, or if you did not provide a statement of use proving use of your trademark within your given deadline. Read our blog on abandoned applications for more insight on what to do when your office action is abandoned.
DO I have to register a trademark for my business name?
You can, but you are not required to do so. Any application you submit to the trademark office will generally include the name you are using to market to your customers. In many cases, this will be a name that differs from your business name. For example, if you operated a clothing line and your business name is registered as Mr. Jones Company Inc., but you were marketing your clothing line as Michael Jones to your customers, Michael Jones is the trademark you would attempt to register with the trademark office.
Do I need to register my Trademark?
The answer to this question varies from case to case. Generally speaking, if you have any aspirations for the growth of your company and your brand, federal trademark protection is a necessary step to achieve this goal. While a federal registration is not required to operate your business or to obtain basic trademark rights there are many benefits such as protection on Amazon's Brand Registry, a presumption of first use of the trademark and ecxlusive rights to use the mark throughout the country. Even with businesses that will have no aspirations of national expansion, federal registration is a recommended pathway to brand preservation and protection.
How long does a trademark registration last?
Once a trademark becomes registered, that registration is valid for a period of 5 years. At the 5 year anniversary of your trademark's registration, a renewal filing must be made with the trademark office and you have one year to make this filing. Once this renewal filing is made, another will be due on the 10th year anniversary of the registration and every 10th year after that. Provided renewal filings are timely made and your trademark is used for the goods listed within the registration, federal trademark protection can last in perpetuity.
How do I stop someone from using my trademark without permission?
Generally, the first step when you find out someone is using your trademark without authorization is to investigate the use of that trademark to make sure it is actually unauthorized, or infringing upon your own established trademark rights. Review the status of your own trademark to assess your current trademark rights, asses the rights of the person using your trademark and then reach out to an experienced trademark attorney to see if issuing a cease and desist letter is warranted. Prematurely notifying someone of what you believe to be infringement could come back to bite you if you do so without all the facts. Save yourself a headache and do some digging first, then go on the offensive if warranted.
Can I amend my goods and services or change my trademark on an application I already submitted?
Generally, no. Once you submit an application to the USPTO the information you've included within the application is pretty much etched in stone. You can clarify or refine your goods and services, but any alterations that would change the nature or scope of your goods and services will likely be deemed a material alteration and these types of alterations are not allowed. The same is true for the trademark itself, if you decide that you dislike your logo and want to change it, or you want to change the name of the trademark itself, you will need to resubmit an application.