FREQUENTLY ASKED QUESTIONS

What is the difference between a trademark, copyright and patent?
A trademark registration protects a word, phrase or design–such as your business name, brand name, slogan or logo–that identifies you to the public as the source of your products or services.

A copyright registration protects a work of authorship–such as a book, piece of music or a work or art.

A patent registration protects an invention.

What kind of matters can you assist me with?
Our office focuses on trademark and copyright matters, and does not handle patents.

TRADEMARKS

What is the process for registering a trademark?
To obtain a federal trademark registration, you must first file an application with the U.S. Patent and Trademark Office (PTO). You can file an application for a trademark you are currently using, or for one that you plan to use in the near future (though you will be required to show use of the mark before the application process is complete, and this will involve additional fees).

After the application is filed, it is reviewed by one of the PTO's examining attorneys. During the examination phase, they will investigate whether any other prior-registered marks might prevent your registration, as well as whether any technical issues need to be dealt with before your application can proceed.

Some applications achieve approval from the examining attorney without the need for further action. In many cases, however, the PTO will raise issues that need to be dealt with before the application can proceed in a letter referred to as an "office action". If no response is made to that office action (or the issues are not satisfactorily dealt with), the application will not receive approval from the examining attorney and will be deemed abandoned.

When an application is approved by the examining attorney, it is then published in the PTO's Official Gazette, to give others the opportunity to file any opposition to the trademark becoming registered. This is referred to as the "publication phase".

If no objection was filed during the publication phase and the application was originally filed as intent-to-use, the PTO will then issue a Notice of Allowance. This means that you have six months in which you need to prove use of your trademark in commerce, though you can request an extension of this deadline.

After you file proof of use in commerce (or if you have already shown your use of the trademark earlier in the process), then assuming the PTO has no further issues that need to be dealt with, they will then issue a Certificate of Registration for your trademark.

How long does the trademark registration process take to complete?
Typically, the registration process will take 12-18 months, though issues raised during examination may cause it to take longer.

If an opposition to your trademark is filed during the publication phase or there are pending trademark applications that the PTO wants to have resolved before ruling on your application, the timeframe can be significantly longer.

What are the benefits of obtaining a federal trademark registration?
Owning a federal trademark registration on the Principal Register provides several advantages, including:
  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the registration as a basis to obtain registration in foreign countries;
  • The ability to record the registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; and
  • The right to use the federal registration symbol ®.
Does a trademark registration need to be maintained?
Yes. You will need to file proof of continued use of the trademark between the 5th and 6th anniversary of your registration date, and a renewal request between the 9th and 10th anniversary, and every 10 years thereafter.

COPYRIGHTS

What is the process for registering a copyright?
To obtain a federal copyright registration, you must file an application with the U.S. Copyright Office, along with a copy of the material for which registration is being sought.

An examiner from the Copyright Office will then review the application, and contact the applicant if there are issues that need to be dealt with. Otherwise, if everything is in order, a certificate of registration will be issued.

The copyright application process typically takes 12-18 months.

What are the benefits of obtaining a federal copyright registration?
Owning a federal copyright registration provides several advantages, including:
  • Public notice of your copyright claim;
  • The ability to file a copyright infringement lawsuit in federal court;
  • If filed before or within five years of publication, a legal presumption as to the validity of the copyright and the facts stated in the certificate;
  • If filed within three months after publication of the work or prior to the infringement of the work, the ability to seek statutory damages and attorney's fees in a copyright infringement lawsuit; and
  • The ability to record the registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods.
How long does copyright protection last?
For works created after January 1, 1978, copyright protection will generally last for the lifetime of the author, plus an additional 70 years. For anonymous or pseudonymous works, or works made for hire, the copyright lasts for 95 years from the year of first publication or 120 years from the year of creation, whichever expires first.

Copyright registrations for these works do not need to be (and cannot be) renewed.

For works created prior to 1978, the term will vary based on a number of factors.

GENERAL

Do I have to be a U.S. citizen to file a trademark or copyright application?
No. While the application needs to list the national citizenship of the applicant (an applicant with dual citizenship can choose which one is listed), you do not need to be a U.S. citizen to register a trademark which is used in the United States or register a copyright for a work published in the United States.

What do the symbols TM, SM, ® and © mean?
Trademarks can be identified with the symbols TM, SM, or ®.

TM and SM mean simply that the owner is declaring the mark to be a trademark or service mark (a service mark is simply a type of trademark, so the SM symbol can be used on either). ® means that the mark is a federally registered trademark, and can only be used on marks which are registered with the U.S. Patent and Trademark Office.

© indicates the owner is claiming copyright in a work of authorship, and should always also list the year of first publication and (for additional protection outside the U.S.) the phrase "All Rights Reserved." You can see the bottom of this page for an example of the correct format for a copyright notice.

What should I do if I find someone else using my trademark or copyrighted work?
If another person or company is using your registered trademark or copyrighted work without your permission, you can bring an action against them for trademark or copyright infringement. Before doing so, in some circumstances, you may first wish to send them a cease and desist letter, putting them on notice and demanding they stop the infringement.

If you would like assistance in enforcing your intellectual property rights, please contact us to discuss the matter further.