How to Perform a Trademark Search

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC.  My law firm represents trademark owners throughout the world, and today, I will be answering the question of how to perform a trademark search. 

Before I answer that question more directly, I should recommend to you that you retain a registered trademark attorney who has experience with trademark matters, including trademark availability assessments and trademark clearances.  I say that not because I’m a trademark lawyer, but instead because I truly believe it.

What is a Non-Traditional Trademark?

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC; a law firm representing trademark applicants throughout the United States.  Today, I will be answering the question: What is a non-traditional trademark?  And before I get into a non-traditional trademark, let’s remind everyone what a regular or traditional trademark is.  A trademark is essentially any type of word, image, symbol or other indicator used to identify the source of goods or services.  It is required to be distinctive and used in interstate commerce in order to be protected in the United States.  While someone can apply a trademark registration with the USPTO or United States Patent and Trademark Office, it’s not absolutely critical in order to establish trademark rights.  Instead, you can have trademark rights under what’s known as common law.  And that’s usually governed by a particular state law.

What Kind of Trademark Do I Need?

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC; a trademark law firm representing trademark applicants and registrants throughout the United States.  Today, I will be answering the question:  What kind of trademark do I need?  And in order to answer this question, we need to talk about the different kinds of trademarks that exist.   Let’s first keep in mind that a trademark is a distinctive sign, symbol, indicator or some other representation that is used to identify the source of goods or services provided.  A trademark is typically a name, word, phrase, logo, symbol, design, image or even a combination of all of those elements or some of them.  There’s even what’s known as non-conventional trademarks, which can be made up of colors, smells and even sounds.  So, when determining whether or not to apply for a trademark, and more specifically, what kind of trademark to apply for, there are many options out there.

Which Trademark Symbol Can I Use?

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This in Brian Hall, a trademark attorney with Traverse Legal, PLC; a law firm that represents trademark applicants and those looking to acquire a trademark registration in the United States Patent and Trademark Office.  Today, I will be answering the question: Which trademark symbol can I use?  This is a common question that I receive all the time as a trademark attorney.  The reality is that there are several symbols out there, and they all can be used in specific situations.

The first is the small ™ or ℠ symbol, oftentimes a superscript next to the actual trademark or service mark.  These particular marks simply claim rights by the owner in the mark itself under common law.  They can be used by anybody who is claiming an exclusive right to use a particular mark in connection with the goods or services.  Now, the ™ symbol is typically used in connection with goods.  So, if you’re selling chairs, cars, pencils, buttons or some other good, you can use the tm symbol in connection with whatever mark you’re selling those products under whereas the ℠ symbol is used in connection with a service mark.  So a law firm like my own, we use the ℠ symbol if we have a new slogan or tag line that we want to protect under common law.  Similarly, if you are a dental office, a doctor or some other service provider, you can use the superscript ℠ symbol next to your particular mark.  It simply is a designation that alerts the public of your claim of ownership in the mark regardless of whether or not you have actually filed an application for trademark registration with the United States Patent and Trademark Office, also known as the USPTO.

What to Do Before Registering a Trademark

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC.  I represent trademark applicants and trademark owners throughout the world on all matters related to trademarks.  Today, I will be answering the question that I often receive from prospective clients concerning what to do before registering a trademark. 

There are several steps that are important before pursuing a trademark application in route to a trademark registration.  The first, and most important, is determining whether or not that trademark is available.  And this is important for two reasons.  The first, you wouldn’t want to file a trademark application only to be denied because someone else had already filed the same or similar mark in connection with the same or similar goods or services.  Equally important, you wouldn’t want to pursue a trademark that someone else has been using and subject yourself to claims of trademark infringement, which could lead you to federal court litigation.  So, it is important to conduct what’s known as a trademark availability assessment or sometimes called a trademark clearance. 

What is the Difference between a Trademark and Service Mark?

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a trademark law firm representing trademark applicants, trademark registrants and those looking to enforce their intellectual property throughout the United States and the world.  Today, I will be answering the question:  What is the difference between a trademark and a service mark?  The short answer is not much.  However, let’s look at them individually.

A trademark identifies the goods that are associated with the particular mark, whereas a service mark identifies the services that are associated with a particular mark.  The requirements to acquire either a trademark or service mark are the same.  You have to use a distinctive mark in interstate commerce.  Those are two requirements.

What is the Difference between a Trade Name and a Trademark?

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a law firm representing small businesses and middle-sized businesses throughout the world in all matters related to trademarks and IP protection.  Today, I will be answering the question: What is the difference between a trade name and a trademark? 

Let’s start with a trade name.  A trade name is the name by which a company does business.  So, for example, if you register your trade name in the State of Michigan, you need to make sure that that trade name is, first, available, and then you need to use that trade name followed by the moniker LLC or limited liability company, or Inc. for corporation or whatever type of entity it is.  Similarly, you may even register what’s known as an assumed name, or DBA.  This is a name which differs from the name you provide with the state upon registration, but may also be registered with the state since that it is the name you go by.  So, for example, if your company is Company, LLC, you may go by Company XYZ as your assumed name.  Selecting a trade name is not very complicated so long as you ensure that that name is available within the state registry.  So, whether you’re registering your business in Delaware, Michigan, Florida or some other state, you can look up to identify whether that trade name is available when you are going to register your company.

What are the Benefits of Trademark Registration with the USPTO?

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a trademark law firm representing trademark applicants in pursuing trademark registrations throughout the world.  Today, I will be answering the question:  What are the benefits of a trademark registration with the USPTO, or United States Patent and Trademark Office?

The first benefit, and one of the best benefits, is that it provides constructive notice to the public of that particular registrant’s ownership in the mark.  And the reason behind this is because the USPTO maintains a database that shows all of the trademark registrations and who the owners are.  This database is searchable and allows someone that’s looking to register or use a mark to identify whether or not that mark has already been registered or applied for.  So, that notice that is provided to anyone out there is something that is critical when it comes time to establish ownership of the mark and possibly establish a claim for trademark infringement.

How to Respond to a USPTO Office Action

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a trademark law firm representing trademark applicants, those with trademark registrations and those looking to enforce their trademark rights throughout the United States and the world. 

Today, I will be answering the question, “how to respond to a USPTO office action.”  Let’s first begin by identifying what a USPTO Office Action is.  Once an applicant applies for trademark registration, an examining attorney is assigned to that particular trademark application.  The examining attorney’s role is to identify any deficiencies with that application.  These deficiencies can be small, such as the need to file an additional specimen showing use of the trademark in commerce, or they might be more substantial, such as refusing, initially, the trademark application from registration because it creates a likelihood of confusion with another existing application or registration.  Regardless of the substance of the office action, the applicant needs to respond to that office action.  If they applicant fails to respond to an office action, the application will be deemed dead.  Put another way, the application will no longer be able to proceed to registration.

How to Trademark a Logo, Image or Design

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a trademark law firm specializing in representation of trademark owners throughout the world.  Today, will be answering the question of how to trademark a logo, image or design.

When looking to acquire trademark registration for a logo, image or design, much of the same steps are followed as when you’re trying to acquire a trademark registration for a word or phrase.  You first need to do a trademark availability assessment, sometimes known as a trademark clearance.  This allows a trademark attorney to go out and see what has been registered and/or filed with the United States Patent and Trademark Office (USPTO).  This is critically important in order to make sure that the logo, design or image that you are looking to register has not already been registered.   And it’s important to recognize that it’s not only an exact replication that hasn’t been registered or applied for, but also something that is confusingly similar, which is the test for trademark infringement.  Just as you can search for words to make sure that those haven’t been registered, there is a design manual that allows you to search for designs, images and logos to ensure that what you are applying for will entitle you to protection as a registered trademark.