A trademark is a branding device – a word, logo, phrase, sound and/or design that when used in conjunction with the sale of a good or service, allows a consumer to recognize the source-company of the product or service. So, when a prospective buyer sees an “Apple” design on a computer, the consumer understands that Apple Corporation made the computer.
The fundamental power of the trademark lies in the beliefs and assumptions assigned to the trademark and the subsequent transference of those beliefs and values to the product upon which the trademark is attached. In our example, merely seeing the apple logo on the computer indicates to consumers that the computer is a quality product, worthy of purchasing.
When an individual or company registers a trademark with the United States Patent and Trademark Office (USPTO), the applicant designates the nature of the trademark (name, logo, slogan etc.) and the goods/services to which the trademark will be used – the proprietary protections afforded by the trademark only extend to those goods/services delineated in the trademark application. Once registered, a trademark holder can and should send a cease and desist letter to any individual illicitly using his/her trademark. An obvious example of illicit trademark use, or trademark infringement, would be a startup company which sells laptop computers, calling itself, The Apple Co.
Trademarks Must be Used in Interstate Commerce
Perhaps one of the most misunderstood aspects of trademark law is the Use In Commerce requirement. Simply, while a trademark may be a name, logo, slogan etc., these branding items only rise to the level of a “trademark” when attached to a good or service sold in interstate commerce. If no sale has been made, the clever name you came up with is just that – a clever name. It is not a trademark.
To satisfy the Use in Commerce requirement, the trademark holder must make a bona fide number of sales (the exact number is not clear although a token sale of 1 does not cut it) across state lines. So, if your product is T-Shirts and your company is incorporated in New York, satisfying the Use in Commerce requirement could mean selling 1000 t-shirts to a customer that lives in California.
The USPTO Cares About the Details
The United States Patent and Trademark Office is a stickler for details; when applying for a trademark, you must dot all of your I’s and cross your T’s. The Examining Attorney who will be responsible for evaluating your trademark application will be looking for two types of compliance; Substantive compliance and Procedural Compliance. Make sure your trademark application satisfies both of these paradigms – if it does not, the USPTO will issue a Trademark Office Action outlining the barriers that must be overcome to register the mark.
Trademark Application Check List
When submitting your trademark application, you will need to :
1. Provide the name, address, and nationality of the Applicant along with the current business address.
2. Describe the nature of the mark (name, logo, slogan etc.)
3. Designate the International Class to which the trademark will be assigned
4. Draft a list of the goods/services to be covered
5. Submit a specimen proving the marks use in commerce along with the date of the marks first use and the first use in commerce