Patents and Trademarks

A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. Some trademarks are based on identifying shapes (such as a bottle), textures, sounds, colors or smells.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are often used informally to refer to both trademarks and service marks.

Registered trademarks are trademarks granted additional legitimacy by the appropriate government agency. U.S. business names are protected under other legislative laws. State governments also register trade and service marks. In most countries, but not all, registration of a mark is not required to gain legal protection. Most marks are not registered, and may be legally protected by common law, to a lesser degree. All of these types of marks can be used to stop others from using identical or similar marks.

Searching Existing Registered Trademarks:Although not required, we recommend that you conduct a search in the USPTO TESS (Trademark Electronic Search System) for any mark for which you may want to seek federal trademark registration. The purpose of the search is to help determine whether any mark has already been registered or applied for that is similar to your mark AND used on related products or for related services. The USPTO cannot provide guidance as to how you should search, beyond the HELP provided within the TESS site. However, at a minimum, please understand that a complete search is one that will uncover ALLsimilar marks, NOT just those that are identical.

Differences Between Trademarks and Domain Names (Web Sites).Searching for trademark availability is NOT the same as searching to register a ".com" address. A ".com" address search may focus on exact or "dead on" hits, with no consideration given to similar names or use with related products and services. Basically, a ".com" address is either available or it is not. Also, if available, you can register a ".com" address on the same day as your search. The trademark process, on the other hand, is more complex. As part of the overall examination process, the USPTO will search its database to determine whether registration must be refused because a similar mark is already registered for related products or services.

A domain name is part of a web address that links to the internet protocol address (IP address) of a particular website. For example, in the web address “http://www.uspto.gov,” the domain name is “uspto.gov.” You register your domain name with an accredited domain name registrar, not through the USPTO. A domain name and a trademark differ. A trademark identifies goods or services as being from a particular source. Use of a domain name only as part of a web address does not qualify as source-indicating trademark use, though other prominent use apart from the web address may qualify as trademark use. Registration of a domain name with a domain name registrar does not give you any trademark rights. For example, even if you register a certain domain name with a domain name registrar, you could later be required to surrender it if it infringes someone else’s trademark rights.

Neither we nor the USPTO offer advisory opinions on the availability of a mark prior to the filing of an actual application. For the guidelines used to examine applications, see the Trademark Manual of Examining Procedures (TMEP).

Applying for Registration: Online forms are available for registration (TEAS), with lower fees than for paper applications. Once you submit an initial application, either electronically or through the mail, the USPTO will not cancel the filing nor refund your fee, unless the application fails to satisfy minimum filing requirements. Filing an application does not guarantee registration. The filing fee is a processing fee, which we do not refund even if we cannot issue a registration after our review of the application.

Library staff cannot offer legal advice, conduct searches, assist in writing applications, guarantee completeness of searches, or advise on ideas.

• No matter how your search goes, keep in mind that trade and service mark registration is a legal procedure and can involve significant intellectual property and business operating investments.
• Our services are designed to support the individual or corporate/legal researcher's efforts to conduct self-directed and preliminary research.
• All final research, regarding intellectual property determinations, should be done in consultation with proper intellectual property legal professionals.
• We will make every effort to protect the confidentiality and privacy of researchers.

More information about trademark requirements, registration, and maintenance are available on the USPTO website:

• Trademark Basics online guide
• Trademark Information Network video guides
• Basic Facts about Trademarks animated series

The USPTO may refuse to register your mark on numerous grounds.

The most common are:

Likelihood of Confusion

The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks do not have to be identical, or the goods and services the same; instead, it is sufficient if the marks are similar and the goods and or services related. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.

When a conflict exists between the applicant’s mark and a registered mark, the examining attorney will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.

Merely Descriptive and Deceptively Misdescriptive

The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. A mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.

Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive

The examining attorney will refuse registration of a mark as primarily geographically descriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the mark identifies the geographic origin of the goods or services.

A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the goods or services do not originate in the place identified in the mark.

Primarily Merely a Surname

The examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a surname.

Ornamentation

In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the "dress" of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant's goods from those of others.

NOTE: For a complete list of the substantive grounds of refusal and a detailed explanation of each, see Chapter 1200, Trademark Manual of Examining Procedure (TMEP). The various sections include examples and evidence used to decide whether a proposed mark violates a policy. The USPTO cannot provide preliminary legal advice as to whether we will register a particular mark; filing an application is the only way to obtain a decision on whether the USPTO will refuse registration.

A strong mark is more likely to be registerable with the USPTO and enforceable against others who infringe on your mark. It makes a unique association between goods or services and their source. In decreasing order of strength, words used in marks can be:

1. Fanciful: invented words with no other know meaning (e.g. Zyppah(R) - anti-snoring product; Nutella (R) - hazelnut spread)
2. Arbitrary: actual words with known meaning but not generally associated with the goods or services in question (e.g.: Mustang(R) - automobile)
3. Suggestive: suggest qualities or characteristics without actually describing them (BIC(R)  Clic(R) - retractable ballpoint pen; Black Flag(R) - insecticide)
4. Descriptive: merely describe a feature or quality of a good or service (e.g. "super-size", "world's best"; "natural")
5. Generic: word for general class of product or service (e.g. toaster, paintbrush, cola, landscaping)

Caution: Words can lose their trademark status over time, if the owner fails to limit its use to the trademarked products. For example, the words cellophane, aspirin, escalator, zipper, and yo-yo were once trademarked but are now considered generic names for similar goods.