INTELLECTUAL PROPERTY AND BUSINESS LAW

As obtaining a trademark is complex, anyone seeking one will have several questions. I am attorney Nadia Semerdjieva and I have nearly two decades of experience addressing trademark questions from those I represent. Below are some common questions clients bring to me.

Do I have to wait until my mark is registered to use ^TM after it?

No, you do not. You can start using the ™ after your mark as soon as you start using the mark. The ™ symbol is used to put customers, potential customers, and others on notice that this particular mark is taken and the owner asserts exclusive rights in that mark. Once a mark is registered with the USPTO, you can then use the ® symbol after the mark.

What is the difference between ^{SM, TM} and ®?

^SM is used after a mark representing a service – it is the service mark symbol. Having said that, many service providers use “™”. It is commonly accepted that trademarks identify sources of products or services.

^TM is used after a mark representing a good – it is the trademark symbol.

® is used after a federally registered mark – it is used for both service and trademarks. Please ensure your mark is fully registered with the USPTO before using the ® because it is a criminal offense to do otherwise.

Once I register a trademark with the USPTO, it is mine forever, correct?

Yes and no – it is yours for as long as you 1. Continue using it (no shelfing allowed here), and 2. pay the maintenance fees. The maintenance fees are due during the 5th-6th year after registration, during the 9th-10th year after registration, and every 10 years after that. If you stop using your mark or forgo its maintenance, it becomes abandoned – the UPTO will cancel the trademark’s federal registration. (You will continue to have a common law trademark.)

Once I register my mark with the USPTO, is it then protected worldwide?

No, it is not. Trademark law is country-based. If you intend to use your trademark in other countries, you need to register it in those other countries. Each country has its own laws. For instance, in the US, whoever first uses the mark has priority. In some other countries, whoever first registers the mark has priority.

Who should be the owner of the trademark – me or my company?

Though an individual can own a trademark, it is generally advisable that the company is the owner. A trademark is an asset – it brings value in and of itself. It is part of the intellectual property assets. Thus, having the company own the mark increases the company’s goodwill and brand value, resulting in becoming more attractive to investors. This is true for small companies seeking angel investors/venture capitalists and bigger companies looking to be publicly traded. When a company has intellectual property, it is valued higher by investors and buyers.

A trademark gives a company its brand value. The Apple brand, for example, is valued at $105.5 billion – just the name “Apple” and the recognition that comes with it, utterly exclusive of the product!

What do I need to send you to apply so you can submit a trademark application with the USPTO?

Filling a trademark application with the USPTO requires a few things:

• The owner’s name, address, email and place of business (as in, in which state does the owner do business most of the time).
• A JPG of the design of the trademark – just the trademark with nothing else on it, behind it, or around it.
• A PDF showing your desired trademark in connection with the products, or services, that you are selling and for which you are seeking registration. A trademark is a source identifier, so the PDF needs to connect the mark with the product/service.

I have to stay away from real words, correct? A trademark is supposed to be all made-up words, correct?

Not necessarily. This depends on several factors, such as the nature of the business and which “real word(s)” you are planning on using. This is actually where having a good trademark attorney becomes very important – the finesse of the trade.