Patent and Trademark Resource Center: US Trademarks

• Keep in mind that businesses aren't required to register their trademarks with the USPTO. If you want to identify your trademark on your product, go ahead and use the TM Symbol™, it's free for all to use! No registration required.
• Also, official USPTO registration is only available for businesses involved in interstate or international trade. If your business is limited to one state, you can't register a trademark, even if you want to. If your business is only conducted in one state, you may be able to register your trademark with the state. This link has information about registering your mark with the State of Maine.
• Registering a trademark with the USPTO can be time-consuming and expensive. Be sure you've got the resources available for the process.
• Trademarks can live forever. Some Trademarks have been registered for over 100 years! But they must be renewed every ten years, and that costs money too!
• Remember that a US Trademark is just that, a United States Trademark. It does not offer your protection in any other country. To get a trademark in another country, you'll have to apply for one with that country's government.

All Trademarks must have one or more Industrial Classification Codes. Some Trademarks have more than one code. 

Deciding which codes and how many codes to use is very important, but also kind of tricky. The USPTO charges an application fee for every code you use. If you apply for a lot of different codes it can cost a lot of money! 

On the other hand, if you get a trademark, and then later you expand your business to a different area, you may need to add a classification code, which in turn may require you to apply all over again for a trademark.

For example, if you get a registered trademark for your diner, with IC Code 043, but then later decide to sell T-Shirts with your trademark, you may have to apply all over again to apply a registered trademark under IC Code 025 for clothing. 

This link has the complete list of Industrial Classification Codes.

Having a registered trademark has advantages:

• Gives legal presumption that you own the trademark, and have the right to use it. So, in federal court, your registration certificate proves ownership, eliminating the need for copious amounts of evidence.
• Can use your registration as a basis for applying for trademark protection in foreign countries.
• Right to bring a lawsuit concerning the trademark in federal court.
• Record your registration with U.S. Customs and Border Protection. They can help stop the importation of goods with an infringing trademark.
• You can use the Circled R, the symbol that shows that you have a trademark officially registered with the USPTO. DO NOT use the Circled R without registering! You will incur massive fines!

Sometimes Trademarks are just words or phrases. But as you probably know, trademarks often incorporate drawings and other graphics. 

Consider this trademark:

This one has two different codes, one for Lighthouses and one for Sandwiches.

So when searching for trademarks on TESS, you'll want to consult the USPTO Design Search Code Manual, to find the right codes for your search.

If you've got your trademark all set, and chosen an industrial classification for it, that's a good place to start. But later on you'll probably want to search what the USPTO calls Coordinated Classes. Each industrial class has suggested coordinated classes, listed on the USPTO site. You should search those classes as well, to make sure there is no chance of confusion between your trademark and another one in any coordinated classes. 

For example, as stated by the USPTO, class 25 (clothing) has several coordinated or related classes, including:

• Class 14 (jewelry),
• class 18 (leather goods)
• class 35 (advertising and business services).

This is because many companies that offer clothing also offer jewelry from class 14, leather handbags from class 18, and retail store services from class 35. So if you sell clothing, a consumer could reasonably expect that you also sell goods from classes 14 or 18, or offer services from class 35.

When you look at Trademark records in TESS, you may notice that they are classified as either LIVE or DEAD. The illustration below shows an example. Click on the picture for a closer look.

You may naturally assume that if a Trademark is DEAD, that means no one is using it and you don't have to worry about it. 

That is not what DEAD means! 

DEAD means that this particular trademark is not currently registered with the the USPTO. It may still be out there in the marketplace being used by the company that registered it! They may have let the Trademark lapse either intentionally or by accident. And if it's still in use, it could be a source of confusion!

The USPTO doesn't register trademarks that are generic or descriptive. It's better for a trademark to be arbitrary, fanciful or suggestive. Not sure what those terms mean? The USPTO has a page with advice on making a strong trademark!

But there is one kind of trademark that cannot be registered...a trademark that is too similar to an existing registered trademark in the same business. 

To be clear, two identical trademarks can exist in the market place. There's a Delta Airlines and a Delta Faucet Company, and there's also Delta Dental Plans. They all use the word "Delta", and that's fine because they're very different business.

BUT...two companies in the same business cannot have officially registered trademarks that can be confused with each other.

You can search for trademarks in the USPTO database by using the Trademark Electronic Search System or TESS for short. 

You can have a look at the Tess Tips page of the USPTO for advice on searching. There is also a very detailed Help Page.

This search is important! If your mark has a chance of being confused with another mark in the same business as you, you'll probably get rejected! Better to find out there a conflicting mark before you apply! If you apply without a thorough search, and your mark gets rejected, that's a lot of application fees you won't get back!

Remember that you can ask for help in using TESS from us here at the PTRC! 

Suppose you want to Trademark the phrase "Cool Lead" for your business. 

You can't just search for that exact phrase! You have to search for different soundalikes, synonyms, and misspelled variations.

For example, for the word "Cool", you should also look for Qool, Kool, Kewl, Coool, Cold, and Kold, and anything else you can think of!

For the word "Lead", you'll need to consider that "Lead" can be pronounced two different ways, and plan the spellings accordingly; such as leed, led or ledd. 

So use your imagination and think of any possible permutations as possible. Because any trademark that seems close to your trademark might be a reason for rejection by the USPTO.