Registered Trademark vs. TM

Posted on 19. Oct, 2009 by larspk in Trademark

Registered Trademark vs. Trademark

“Protect Your Brand”

Smart entrepreneurs use a federally registered trademark to protect their brand identity from unauthorized use. A registered trademark offers maximum protection on a national scale and serves as a cornerstone for building brand equity. A trademark is a word, phrase, symbol, design, or any combination thereof that clearly identifies and distinguishes the source of one parties goods from other competing parties goods. A service mark is another type of mark distinguishing one parties services from other competing parties services. A registered trademark encompasses both goods and services.

Entrepreneurs have the option of registering a character mark or a special form mark. Character marks can only be composed of words, letters and numbers and offer the greatest depth of protection for your brand name. A special form mark, commonly called a design plus words mark, should be used for any stylized piece you are wishing to protect such as a logo. Be aware that special form marks protect only the exact mark that is registered. Any deviation from the original registered trademark will loose its enforceability. This is why it is commonly recommended that entrepreneurs register a character mark for words and a special form mark for design related components; this way your brand name is always protected under law.

Reasons to apply for a registered trademark:

Owning a registered trademark is the only way for an entrepreneur to gain the exclusive right to use their mark in all states and should be an essential task for any serious entrepreneur dealing in intrastate commerce.
Registered trademarks provide notice to the public regarding ownership so there is no confusion as to what marks are registered and what marks may still be available for use in commerce.
Sinse this is the case; federal courts rule in favor of the owner of a registered trademark.
After a registered trademark is issued the owner can then file with the U.S. Customs and Border Protection to put an end to fraudulent importation of knock off goods.

Steps to successfully register a trademark:

Research

1. Define the product class you wish to trademark.

You can find this info @ http://www.uspto.gov
Perform a basic search for similar marks Using TESS.
Alternately use a service like http://www.mrtrademark.com/

2. Submit proposed mark

Look for similar marks in the same class
If there are no confusingly similar marks within the same class you have passed the first hurdle; you may proceed to step 3.

3. Check for state registered filings with each Secretary of State Office.

Click here for links to each Secretary of State.

If there are no confusingly similar marks within the same class you have passed the second hurdle; you may proceed to step 4.

4. Search for “common law” use of proposed trademark.

There is no exact science to this step, but you want to be as thorough as possible.
Search trade directories, search engines, newspapers , magazines, etc.
If no similar marks have shown up so far it should be safe to use in commerce.

Claim your mark

5. Use the TM or SM symbol next to your mark to acquire common law trademark rights

TM for products
SM for services

6. Use mark with trademark symbol in ordinary course of trade.

This is referred to as “first use.”

7. Use mark in ordinary course of trade resulting in federally regulated commerce.

This is referred to as “first use in commerce.
Marks must be used in commerce to apply for a registered trademark.

Apply for a registered trademark

8. Visit the United States Patent and Trademark Office and apply for a registered trademark.

Go to http://uspto.gov/
Click trademarks – File on line forms
Under Forms read TEAS Tutorial & Electronic filing tips
Under Forms click “File new application”
Choose “Trademark/Servicemark application, Principal Register”
Unless you are an attorney choose the “TEAS Form” (it is easier to use)
Follow directions and enter correct information.
If the proposed mark is consists of words only a character mark will give the broadest protection. For instance registering your brand name as a character mark allows you the flexibility to use your mark in different designs without loosing trademark protection.
If the proposed mark is a logo, has a specific design, or uses color it is required to submit a drawing along with the application for a registered trademark.

9. Submit application with proper payment, cross your figures, and wait patiently.

10. Once you receive your Certificate of Registration you may now use the “R” symbol.

Congratulations!

You now have a registered trademark.

Now get out there and make some money!

Need Help? Visit LegalZoom.com File Your Trademark Online in 3 Easy Steps