Statement of Use

One way to understand a trademark is that it is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of another party. A “service” mark distinguishes the source of a service, rather than a good, but the two are typically simply referred to as a “trademark” or “mark”. In more general terms, getting a trademark protects a brand. Many of the well-known brands, logos and slogans you love, know and trust have been registered with the United States Patent and Trademark Office.

Generally, the registration of a trademark entitles the registrant to a presumption of ownership of the brand on a national level and a presumed right to use the brand nationwide. It may help prevent someone from registering a confusingly similar mark later and may also help the registrant bring a case in federal court if someone infringes on the brand. Once registered, a registrant can typically start using the ® symbol after the name, logo or slogan.

After a mark is properly registered and used for a five-year period, Trademark File Help can also help file a “Declaration of Incontestability.” Considered by some the greatest protection under U.S. trademark law, this may help prevent others from contesting a trademark on the following grounds: (1) the mark is not inherently distinctive; (2) it is confusingly similar to another mark that someone else began using first; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.

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Under U.S. law, a “common law trademark” is generally established when someone uses a company name, logo or slogan in commerce, even if it is not registered. So, why pay to register a trademark when a common law trademark may already exist? Common law rights ordinarily are limited to the geographic area where the mark is used as opposed to the nationwide protection customarily obtained when a mark is registered with the USPTO. So, unless registered, the use of a mark can be geographically limited, which hampers the ability to expand the brand. On the other hand, a person using a mark in a limited geographic area could be boxed in by someone else who offensively registers a similar mark. In addition, registration of a trademark can give the person holding the registered trademark a leg up in court as to the validity of the mark and the date of usage in later trademark infringement litigation, if it comes to that. There are also favorable remedies available to registered trademark owners in the event of litigation. Finally, once a trademark is accepted by the USPTO, it will be maintained in the USPTO database, which can discourage others from using the mark in the future. Future companies should be on notice that the mark is already spoken for, which should in turn help avoid at least some disputes.

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There may be advantages to registering both a name and an associated logo. But bear in mind, each filing requires its own government filing fees and processing fees to Trademark File Help so registering both costs more than $600.

A more budget-friendly option could involve registering just a company name. Wrongful use of names seems to be more common than wrongful use of logos. Trademarking a name generally provides broader protection because it prevents any use of the name that causes confusion, even if someone tries to use the name within a unique logo.

A mark for a logo typically protects the shape, orientation, stylization and sometimes color in that particular logo. Registering ordinarily prevents others from using that logo or something confusingly similar to the logo. Even if a company name is in the logo, registering the logo may only protect the use of that name in the particular way it is used in the logo and not the use of the name more generally. Moreover, amended or redesigned logos usually require a new application for the new logo. As may be expected, logo changes seem to be more common than name changes.

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Much like how the availability of a corporate name in a given state does not necessarily provide superior trademark rights to use the name in commerce, the availability of the domain name is not an indication either. A company could have a trademark name on a product or service, but not have acquired the domain name.

The availability of the domain name should be one part of a comprehensive search, which Trademark File Help offers, to help evaluate the strength of a brand name or slogan and the likelihood of a trademark being approved.

Using a domain name as part of a brand that sells goods or services may establish common law trademark rights. A “common law” trademark can be established when a name, logo or slogan is used in commerce, even if it is not registered. Common law rights, however, are limited to the geographic area where the mark is actually used as opposed to the nationwide protection typically established by registration of a mark with the USPTO.

The geographic limitations of an unregistered mark can make it difficult to expand a business. On the other hand, a person using a mark in a limited geographic area could be boxed in by someone else who offensively registers a similar mark. In addition, registration of a trademark customarily gives the person holding the registered trademark a leg up in court as to the validity of the mark and the date of usage in later trademark infringement litigation, if it comes to that. There are also favorable remedies available to registered trademark owners in the event of litigation. Finally, once a trademark is accepted by the USPTO, it should be maintained in the USPTO database, which can discourage others from using the mark in the future. Future companies should be on notice that the mark is already spoken for, which should in turn help avoid at least some disputes.

General benefits to registering a mark:

• Nationwide protection
• Presumed right to the exclusive use of the mark nationwide
• Presumed validity of the mark in a lawsuit
• Additional remedies in court
• May increase the value of the company
• You can record the mark with the U.S. Customs and Border Protection, which may help stop importation of infringing or counterfeit goods into the U.S.
• The right to use the ® symbol

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Much like how the availability of a corporate name in a given state does not necessarily provide superior trademark rights to use the name in commerce, the availability of the domain name is not an in

If investing heavily in a marketing campaign with a slogan, a company might consider registering a slogan as well. Short catch phrases or sayings that are sold as part of merchandise (like shirts or hats) can also be registered. The same rules apply that are applicable to picking and registering a company name. Namely, the slogan should be inherently distinctive and creative or have developed a secondary meaning. In other words, “really good pizza” probably can’t be trademarked unless that saying has become so famous that most consumers associate it with a certain pizza brand.

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