A trademark is either a word, phrase, symbol or design or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A Service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Throughout this report the terms "trademark" and "mark" are used to refer to both trade marks and service marks whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.

Trademark rights arise from either actual use of the mark, or the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U. S. Congress. Federal registration is not required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled us use the mark nationwide.

There are two related by distinct type of rights in a mark: (1) the right to register and (2) the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. Obviously federal registration can provide significant advantages to a party involved in a proceeding.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10 year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed the registration is canceled.

Use of the "TM", "SM" AND "â" Symbols

Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application to use the designations. The claim may or may not be valid. The registration symbol, â may only be used when the mark is registered with the Patent and Trademark Office. No matter which of the three symbols you may use the symbol itself is not considered a part of the mark.

If you should proceed with the use of either the "TM" mark or the "SM" mark without filing for registration you should mail correspondence to yourself by registered mail which contains printed material that shows the mark and your intentions. Mail at least two separate copies of the correspondence. Place the correspondence in safe

keeping and DO NOT OPEN the letters. This will establish when you began use of the mark if you become involved with another unregistered claimant to the mark.

Who May File an Application?

The application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of the mark control the nature and quality of the good or services identified by the mark. The owner may submit and prosecute its own application for registration, or may be represented by an attorney.

Applicants not living in the United States must designate in writing the name and address of a domestic representative--a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." The applicant may do so by submitting a statement that the named person at the address indicated is appointed as the applicant's domestic representative.

Law & Rules Governing Federal Registration of a Mark

The federal Registration of Trademarks is governed by the Trademark Act of 1946, as amended, 15 U.S.C. #1051 et seq.; the Trademark Rules, 37 C.F.R. Part 2; and the Trademark Manual of Examining Procedure (2nd edition 1993)

An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO. However, some people find it useful. In evaluating an application, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing search costs, will not be refunded even if a conflict is found and the mark cannot be registered.

Publication for Opposition

If the are no objections to your application by the PTO or if you satisfy all objections, the examining attorney will approve the mark for publication in the Official Gazette, A weekly publication of the PTO. The PTO will send you a Notice of Publication indicating the date of publication. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to the registration.

Issuance of Certificate of Registration or Notice of Allowance

If your application was based upon the actual use of the mark in commerce prior to approval for publication, the PTO will register the mark and issue a registration certificate about 12 weeks after the date of the mark was published provided no opposition was filed.

If your mark was published based upon your statement of have a bona fide intention to use the mark in commerce, the PTO will issue a "Notice of Allowance" about 12 weeks after the date the mark was published provided no opposition was filed. You then have six months from the issuance of the date of the "Notice of Allowance" to use the mark in commerce or to request a six month extension.

Filing Requirements

To receive a filing date, you must provide all of the following:

1. A written application form.
2. A drawing of the mark on a separate piece of paper.
3. The required filing fee.
4. Three specimens for each class of goods or services.

INFORMATION NUMBERS

General Trademark or Patent Information 703-308-HELP
Automated (Recorded) General Trademark or Patent Information 703-557-INFO
Automated Line for Status Information on Trademark Applicants 703-305-8747
Assignment & Certification Branch 703-308-9723
Trademark Assistance Center 703-308-9000
Information Regarding Renewals or Correcting a Mistake 703-308-9500
Trademark Trial and Appeal Board 703-308-9300
Assistant Commissioner for Trademarks 703-308-8900

For an information packed booklet concerning trademarks contact the U. S. Government Printing Office, Superintendent of Documents, Mail Stop: SSOP, Washington, D. C. 20302-9328. Ask for the publication named "Basic Facts About Registering a Trademark" At last notice this publication cost $2.50. This publication has all definitions, regulations, telephone numbers, forms and instructions you will need to file your application.