What are common law rights?
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration. However, there are many benefits of federal trademark registration.
What is a common law search and is it necessary?
A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration. A common law search is not necessary but some find it beneficial. Telephone numbers for search firms that perform these searches for a fee can be found in the yellow pages of local phone directories and through an internet search.
How do I find out if I need patent, trademark and/or copyright protection?
Patents protect inventions and improvements to existing inventions. Copyrights cover literary, artistic, and musical works. Trademarks are brand names and/or designs which are applied to products or used in connection with services.
Can I search patents online?
Some patent databases are available on http://www.uspto.gov/main/trademarks.htm just click on Search Patents.
How do I obtain a federal trademark registration?
A registration may be applied for by filing a properly executed application with the Patent and Trademark Office (PTO). The application, and any accompanying communications, should be addressed to “Assistant Commissioner for Trademarks, Box New App/Fee, 2900 Crystal Drive, Arlington, VA 22202-3513.”
You may access the trademark forms, plus information about applying for a trademark at http://www.uspto.gov/main/trademarks.htm and by clicking Basic Facts About Registering a Trademark. The forms may be downloaded, filled out, and mailed in, or, by clicking PrinTEAS, you can fill out, validate, and print trademark and service mark applications via the PTO web site.
Who may file an application?
Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark and controls the nature and quality of the goods to which it is affixed or the services for which it is used is the owner of the mark.
Do I have to use the application form provided by the Office?
No, but the format used must comply with all Patent and Trademark Office (PTO) requirements. The prepared PTO form is provided as a convenience. The PTO recommends use of the form to avoid the omission of important information.
Can a fax copy or photocopy of an application be filed?
Yes. However, there is no provision for filing an application by means of facsimile transmission, i.e., by faxing it to the Office. Applications, whether originals or copies, must be filed either by hand or by mail. A faxed copy can be submitted either by U.S. mail or hand delivery.
Just a reminder — I’m not a lawyer, I don’t even play one on TV and I did not stay at a Holiday In Express last night. I’m just a retired SBDC counselor, who knows where to look stuff up — both online and IRL. In this case my source is the SBA.