Michael E. Byczek, Attorney at Law

A trademark is a term used by a company to identify or distinguish their business or products from others. Trademarks are used to identify goods. Service marks are used to identify services.

This term can be a word, name, symbol, device, or combination.

Trademarks are not required. Any company can conduct business without registering any trademark with the federal government. However, registration with the United States Patent and Trademark Office (USPTO) allows the company an exclusive right to use that term as described during the application process. A registered trademark is a claim of ownership of that mark.

Without federal trademark protection, any third-party could capitalize on your success, profitability, brand recognition, or credibility to lure customers away from your business, and perhaps damage your reputation with low-quality goods or services. Counterfeit goods is a perfect example.

The primary role of trademark analysis is whether two marks are confusingly similar. This refers to the similarity and commercial relationship between the marks. Two companies cannot both use the same or confusingly similar marks to conduct business.

This could involve sound (spelled differently, but phonetically sound alike), appearance (same name with different fonts), or meaning (two works that are spelled entirely differently, but represent a foreign language translation of the same word). Another scenario are two words that create the same commercial impression on consumers.

There are two basis for filing a trademark registration. The first is use in commerce, which means the applicant is actually using the trademark or service mark. The second is intent to use, which requires the applicant to prove that they are going to use the mark.

USPTO Fees

There are three different applications to register a trademark or service mark, each with different submission requirements.

Trademarks must be renewed, or will expire.

Between the first 5th and 6th year, a Section 8 Declaration of Use and/or Excusable Nonuse of Mark must be filed for $125.

Every 10 years, a combined Section 8 along with Section 9 Application for Renewal ($300) must be filed for a total of $425.