Hello, I want to register a trademark but was wondering about the type. They have the regular just the text and the design / color text and so on. About the desigh and color one, say my trademark is a name with different colors and shaped letters and i register the trademark as a design / color trademark, will this trademark registration cover the security of someone just useing the name regularly without say the design. For example is have a logo in red and blue of this hjk and i register it as a design will it cover the use of it when written in plain "hjk" or do i have to get 2 separate trademarks for each type??
Trademark law has a lot of grey areas and is a complicated process, but in basic terms, when you trademark a design, it is the "look" of the logo that you are protecting. It does not give you the same protection as a trademark on the just the term. Say the term was "Apple Pie" and your logo was a red and brown illustration with 5 apples above the pie. A trademark on the logo would protect the "look" so that someone else couldn't have a similar looking logo. A trademark on the term "Apple Pie" is much stronger as it would prevent any use of the term, regardless of how it was used in a logo. Getting a trademark on just the letters is much harder because you must have been the first person to use the term "Apple Pie" for the particular usage. Trademarks are granted by usage (classification) and you couldn't get a trademark on the term for baked goods, but you might be able to get a trademark for "apple pie" in the jewelry classification if no one else has used it for jewelry. It wouldn't protect against someone using "Apple Pie" for a non-related usage - say a perfume line. In order to have broad protection against any usage of the term, you would need to file in more than one or all forty plus classifications - which is very expensive, and you would also have to be using it in those classifications. You can't get a trademark for something you aren't using it for or even intend to use it for - if you wanted a trademark in the for "apple pie" in the jewelry classification, you must already have a line of jewelry marketed as "apple pie". It is a lot more difficult to find a term that doesn't have prior usage vs. a logo you designed. US has common law trademarks and that means usage rights are established by the first person to use it, continue to use, in that particular usage. Just because a term doesn't have a Federal Trademark, they still have protected rights established by their usage. So if you search the USPTO and don't see a trademark for "Apple Pie" in the jewelry classfication, is dosen't mean you can trademark it. You are responsible for checking for any prior usage. If some guy already has a jewelry line that he sells out of his house under the name "Apple Pie" he has rights established even though he never applied for a trademark. Trademark search services charge several hundred dollars to search for prior usage. While they check a lot of sources, it still isn't a guarantee that the term doesn't have prior usage. If you apply for a trademark, the USPTO examiner will look for conflicts with existing Federal Registrations, but no where else. If they accept your application, it goes out for publication. This takes about a year. Then a 5 year period starts where anyone can come forward and contest your trademark application. If they can prove they were using the term before you, and the usage is the same, you won't get the trademark. If another person was using "Apple Cakes" they can also contest your trademark filing. Similar spellings, foreign spellings, etc., can all be potential people who will contest your filing. This is why have a professional trademark search is so important. It will alert you to potential problems and save you a lot of money in the long run. It takes 6 years, assuming you application is accepted, before your trademark will become "uncontestable". At that point, even if someone comes forward and proves they were using the term before you, they cannot prevent your usage, but you couldn't prevent their continued usage of the term either. Trying to get a trademark on a term that someone else has used before you is very risky. You can build the business for six years only to lose it to the person who has established prior rights. To get a trademark, I would suggest: Search google and other records for prior usage in the classification (or overlaping) you intend to file. If you don't find any, then pay for a professional trademark search. If you still want to proceed, then you can either do the application yourself, or pay an an intellectual property rights attorney to handle it. If you do it yourself, make sure you fully understand how to do it because if you make just one mistake, your application will be rejected and you'll lose your filing fee and have to start over again. A large percentage of trademark filings are contested by someone who thinks your trademark filing is conflicting with theirs. That doesn't mean they will win, but you will need an attorney to file a response. Once you have a trademark, you are required to protect it. That means you need to go after people who are infringing upon in order to prevent losing the trademark by it becoming genericized. This is why you see large companies going after the "little guy" - they aren't usually worried about a loss of income, but loss of their trademark. While you can potentially be awarded treble attorney fees with a Federal Trademark infringement, collecting is another story. The large companies with money are never the ones who infringe, it's always some small-time operation that you probably won't be able to collect from.
Wow thanks man, that was a very informative response. I am in Canada but want to register a trademark in the USA, i went to the site you listed above. I have conflicting information about international users registering trademarks in the usa. Do i need to have someone who lives in the usa and you their address or can i do everything from Canada and from my address? Also about the attorney to do help with the trademark, where do you find one, is there any companies that do it. I have a site that does something like this for Canada, just fill out a form online and voila. I read the requirments on the site and yes it's pretty confusing. You have mentioned in your post: I have read on the US trademark site that the Trademark is listed in the journal for 3 months, then your application is either accepted or denied. Btw where can i view this journal with the pending trademarks? Thanks