TRADEMARK AND SERVICEMARK REGISTRATION

What is a trademark or Servicemark?

A trademark is any word, name, symbol, figure, letter or device used to identify or to distinguish a product from those of other businesses. Servicemark is when the mark is used as a service of the business. To be protected, the trademark (mark) must be distinctive, such as being a coined term, fanciful, arbitrary or suggestive. Marks that are simply descriptive or laudatory are not protected. There are many cases and issues surrounding whether a mark is distinctive enough to be protected. Trademarks should not be confused with copyrights which are different areas of intellectual law but can be similar. For example, slogans can appear to be either a trademark or a copyright and it is important to distinguish between the two.

Trademark Rights

Trademark rights are established through actual use on a first and continuous basis in commerce and in connection with goods or services. Actual first use, even without registration, does provide mark protection within a limited geographic area even against a subsequent mark registration.

Because of the important first use rule of a mark, you should conduct a search to see if the mark is already in use, registered or pending registration. Both the Secretary of State of Illinois and the United States Patent and Trademark Office maintain a data base that can be self-searched or there are private search companies that will conduct more comprehensive searches of not only the data base of States and Federal registration but also common law usages. Their costs vary on how extensive you want the search and how fast. You should expect a fairly comprehensive private company search to cost around $500. Companies also offer trademark infringement monitoring for a yearly fee.

The use of the smaller font "TM" or "SM" following the mark is not required but does give notice to others of a claim to the mark. The use of the "R" within a circle following the mark may only be used is the mark is Federally registered.

Trademark Registration

Registration is not required to enforce your rights to a mark but registration makes protection of a mark much more likely by clearly establishing the ownership and date of ownership. Registration also provides additional remedies under Federal statutes and protection against a claim of dilution under State or common law, and also provides that continuous use of a trademark after five years from registration becomes incontestable. 

Federal registration is started with filing a written application with the Trademark Division of the United States Patent and Trademark Office with filing fee. The application can be based on existing actual use, or unlike the State of Illinois registration requirements, can be filed on your intent to use the mark followed by a statement of use within 6 months of allowance by the Trademark Office. Trademark registration is effective for an initial of 10 years as long as the owner files an affidavit of continued use prior to the sixth year anniversary. The owner can apply for successive periods of 10 years.

While State registration of a trademark or servicemark provides little of the benefits of Federal Registration, it does provide notice to third parties of the mark ownership. Registration is done through the Illinois Secretary of State’s office as part of their business services. Illinois law also does not require registration of a mark. Form TM/SM-15 is submitted along with currently a $10.00 filing fee. The form identifies the person or entity using the mark, identifies the mark and its use, classifies the mark and sets forth its existing use. Illinois does require that the mark be in use prior to application with 3 specimens of its use submitted with each classification. Each different classification requires a separate application with filing fee and specimens. Illinois registrations currently are effective for 5 years. Renewals can be submitted no more than 60 days prior to their expiration. The Secretary of States website also a search tool to see if the same or similar mark is already on file. Searches may also be requested by phone or email. 

Federal or State registration may also help to forestall infringement or to convince someone to cease actual infringement by its mere presentation to the offending party of the fact of registration.

Protection of a Mark

Federal or State registration of a mark does not provide automatic protection. Legal action to protect a mark is needed and these actions are complicated and costly. Trademark infringement claims can be brought as Federal, state or common law claims. The great majority of cases are however brought under Federal law especially if the trademark is Federally registered. Most states have statutes dealing with trademarks, such as an area of law called "dilution", or unfair competition or deceptive trade practices, under which a trademark infringement action can be based. A trademark owner may also oppose or seek cancellation of a trademark of another though the Trademark Trial and Appeal Board if it is a confusingly similar mark or would dilute the owner’s trademark.


What an Attorney can do for your Trademark

What I do for you as an attorney:

1. Discuss and work with you on your trademark choice. The trademark must be distinctive enough to be protected. However, I cannot guarantee that your trademark will be acceptable to the Federal Trademark office.

2. Conduct search of Illinois and Federal data basis for same or similar trademarks and discuss this with you.

3. Complete and submit the Federal and State of Illinois trademark registration forms

4. Follow up submission of amendments or changes required by the Federal Trademark office for acceptance.

You pay the filing fee (currently $375 for Federal registration and $10 for State of Illinois registration) and the cost of a private company search fee you decide on, if any. I charge a flat rate attorney fee charge of $475.00. This fee does not include any infringement monitoring or legal work for any subsequent infringement.

COPYRIGHT

What is Copyright?

Copyright is the protection allowed to an author to control the use of that author’s original work including its reproduction, adaptation, performance, display and distribution. Copyright protection is strictly a Federal right that offers protection, whether published or unpublished, once the work is fixed in a tangible medium of expression. This medium may be almost anything from the obvious literary work on paper to a CD-ROM or webpage. The work does not have to be more than a slogan in length and in some cases is difficult to distinguish from a trademark. Currently, the term of protection is the life of the author plus 70 years. Other time periods apply to certain situations where there is no "life the author" to measure against or joint authors.

Federal regulations deal with what works can be subject to copyright, with the rights of the copyright owner, the limitations including the fair use doctrine, transfers of copyright ownership and remedies for infringement.

Copyright Protection and Registration

Copyright protection starts from the moment the work is fixed in a tangible medium of expression whether the work is registered or not, or published or not. Registration is not required unless the owner wants to conduct an infringement action and to be eligible for Federal statutory damages including attorney fees. Registration of course also establishes areas subject to possible dispute such as the duration date and establishes a clear public record of the work and of ownership by the deposit of two copies with the registration. If registered within 5 years of publication, registration will establish as valid the copyright and facts stated in the Certificate of Registration. The Certificate of Registration may also help to forestall infringement or to convince someone to cease actual infringement by its mere presentation to the offending party.

It is no longer necessary to include a notice on new works as of March 1, 1989 that indicate copyright. However, the notice can be used and generally consist of 3 elements: the symbol © followed by the year of publication and the name of the copyright owner.

What an Attorney can do for you

An attorney can help you with deciding if your work is subject to copyright, to distinguish between trademark and copyright and to prepare and file the application for copyright registration. For literary works I charge a flat rate of $275.00 for consultation and registration. The current filing fee is $35 for online registration and $45 for paper registration which is your costs as well as any express service shipping costs. Other mediums such as visual art works, sound recording or audiovisual work will require more work so that a fee will need to be separately established.