Trademark FAQ

What is a trademark?

Trademarks and service marks may include business names, names of products and services, slogans, designs, symbols and logos.  They can even include sounds, fragrances, colors, and package designs in some cases.  Trademarks and service marks differentiate your goods and services from those of your competitors.

Why should I register my trademark?

Your trademarks and service marks (more simply referred to as “marks”) represent your investment in your goodwill.  If you were to sell your business, your marks could be a key asset.  It is therefore important to protect your marks and take steps to prevent others from using the same or confusingly similar marks.  For example, you may wish to protect your business name or any slogans or other marks you may be using.

Although you have established common law rights in your existing trademarks merely by using them, your common law rights are limited.  You can obtain more expansive rights by registering your trademarks with the United States Patent and Trademark Office (or with the Secretary of State, if you don’t qualify for federal registration).  

What are the benefits of Federal trademark registration?

Federal registration gives you a number of benefits including:

• Right to use ®
• Third parties cannot register a confusingly similar trademark on the Principal or Supplemental register
• Availability of federal court jurisdiction for trademark infringement lawsuits
• Use of the federal registration as a basis for obtaining registration in foreign countries and
• Presumption of validity of mark
• Presumption of ownership - constructive notice nationwide of your claim of ownership of the mark to eliminate good faith defense
• Can become incontestable by filing Section 15 affidavit during the 5 year renewal period
• Filing of the federal registration with the US Customs Service to prevent importation of infringing foreign goods
• Use of the federal registration to file UDRP complaints against cybersquatters
• It puts the public on notice that the trademark is owned by the registrant.  USPTO trademark records are publicly available and can be searched for free.

Can descriptive marks be registered?

Some names of businesses, products or services may be too descriptive to register on the Principal Register of the United States Patent and Trademark Office.  However, these descriptive marks often qualify for the Supplemental Register.  The Supplemental Register provides less protection than the Principal Register, but sill offers important benefits including:

• Right to use ®
• Third parties cannot register a confusingly similar trademark on the Principal or Supplemental Register
• Availability of federal court jurisdiction for trademark infringement lawsuits
• Use of the federal registration as a basis for obtaining registration in foreign countries and
• After the trademark has been used and registered on the Supplemental Register for five years, the registrant may reapply on the Principal Register on grounds of acquired distinctiveness.

How long do trademarks last?

Trademarks can last as long as they are in use.  However, to maintain registration of a US trademark, it is necessary to file an Affidavit of Continued Use between the fifth and sixth year after the date of registration and a Renewal of Registration before the end of the tenth years after registration, and every ten years thereafter.

What trademark services are available?

HERRANENLAW trademark services include:

• Trademark Interview:    By means of a telephone interview and questionnaires, we help you establish a plan to protect your trademark assets.
• Trademark Review:    We review all marketing materials, websites, product packaging and more to identify trademarks that are currently in use by your company.
• Advice:    We provide feedback regarding the trademarks that should be considered for protection and the proper use of registered and unregistered trademarks.
• Trademark Conflict Search:    We perform a conflict search to determine if your proposed trademark is available.  We provide feedback regarding the likelihood of attaining registration of the proposed mark trademark
• State, Federal and International trademarks:    We prosecute applications for state registration for the trademarks used only within one state, federal registration for trademarks used in connection with sales across state lines or internationally, and international registration for trademarks used internationally.  We facilitate and coordinate the hiring of foreign attorneys to assist with international trademark registrations that require local counsel.
• Infringement:    We provide advise regarding intellectual property issues, and we assist with resolving trademark infringement issues.
• Opposing and Cancelling Conflicting Marks:    We file oppositions and petitions to cancel existing pending and registered federal trademarks, and responses to oppositions and petitions to cancel.
• Change of Ownership:    We prepare agreements for the transfer or sale of trademarks, and we record the change of ownership.
• US Customs and Border Protection:    We register federal trademarks with the United States Customs and Border Protection when necessary to prevent the importation of infringing goods.
• Management of trademark portfolios:    Companies with multiple trademarks may benefit from trademark management services.  We create tracking spreadsheets to monitor the status of your trademarks worldwide and to track deadlines for renewals, disputes, licenses and other factors.  We also coordinate international legal support and litigation services.
• ICANN domain name disputes:    We file UDRP complaints to assist you in acquiring a domain name that utilizes your trademark in bad faith.

What are the International Classes of Goods and Services?

There are 45 International Classes of goods and services which are summarized in the Trademark Questionnaire. We will help determine the proper International Class(es) for your goods or services, and we will draft an appropriate identification of services under the selected classes.

How can I register my trademark internationally?

Trademark owners in the United States may protect trademarks abroad by filing an international application with the US Patent and Trademark Office via the Madrid Protocol, or by filing national applications directly in each country.

What is the Madrid Protocol?

The United States is party to the Madrid Protocol, an international treaty, that permits the prosecution of trademarks in up to 122 countries with one application.  Engagement of foreign attorneys is generally not necessary for these countries unless the trademark examiner member of the public raises an objection to the application.

What if the country I am interested in is not part of the Madrid Protocol?

If the country of interest is not a member of the Madrid Protocol, HERRANENLAW will engage foreign attorneys to file national applications in those countries.  In the event that we need to engage foreign attorneys, HERRANENLAW has an established network of qualified professionals.  In most cases, we will seek a quote for the services to be provided prior to incurring the expense.  Clients have the opportunity to decline services before incurring further expense.

What is the Paris Convention?

The US is a party to the Paris Convention for the Protection of Industrial Property. Under the terms of the Paris Convention, if you file a trademark application in the US, you will have up to six months to file an application for the same trademark, claiming the priority date of your US application, in one or more of the Convention countries.  This can be a useful strategy in that clients may defer the timing of costs of international applications for up to six months while the priority date.

In which countries can I register my trademarks?

HERRANENLAW can apply directly for registration in 106 regions covering 122 countries.  These countries are listed in the Trademark Questionnaire. For countries not listed, we will engage local counsel to prosecute your trademark application.