Frequently Asked Questions About Trademarks and Service Marks for Not-for-Profit Organizations

 General Information 

What Is a Trademark or Service Mark? 

The terms "trademark" and "service mark" refer to words, designs or logos that are used to indicate the origin or source of goods or services.  

There is no difference in the legal protections afforded trademarks versus service marks. The distinction is only with respect to what they identify.  

When used to identify a tangible product (such as jewelry or glassware), the word, design or logo is considered a "trademark."  

When used to identify services (such as charitable services or educational services), the more appropriate term is "service mark."  

"Trademark" also may be used broadly to identify both types of marks. For example, we refer to "trademark rights" and the "Trademark Office." 

What Is a Common Law Mark versus a Registered Mark? 

In the United States, registration is not a prerequisite for using a mark or protecting a mark against infringement. Trademark rights can accrue simply through actual use of the mark in commerce, although there are significant benefits to registering a mark (see below). Those marks that are not registered but nonetheless are eligible for protection are called common law trademarks or service marks.  

We’ve Discovered Another Entity Using A Similar Name, Who Owns The Trademark? 

The determination of whether a trademark is being infringed can be quite fact specific and will often require the advice of trademark counsel.  

Broadly speaking, however, the entity that first uses a mark in connection with a particular good or service has trademark rights that supersede the rights of later users of a similar mark for the same or related goods or services. In other words, the mere fact that another entity is using a similar or identical name does not necessarily mean that there is  

a trademark conflict. Highly similar marks and even identical marks can often coexist peacefully so long as they are used on unrelated goods.  

Thus, in determining whether there is a true trademark conflict, one must consider not only whether the marks themselves are similar, but also whether the respective goods or services on which the marks are used are similar or otherwise related.

If your trademark counsel concludes that a genuine conflict exists, then the prescribed course of action will depend on which entity is found to have used the mark first.  

The Registration Process 

Should We Register Our Mark? 

Registration is not a prerequisite for using a mark or taking action against infringing uses of a mark. Unregistered marks can be protected under the common law, so long as priority of use can be established. Nevertheless, federal registration does provide benefits that are not available to those relying on common-law rights. Some of the primary benefits are: 

(a) Registration is evidence of ownership of a mark, and of the owner's exclusive rights to use the mark in commerce on the product(s) or service(s) identified in the registration. Only the owner of a registered mark may use the ® symbol to indicate its exclusive rights. After five years, a registration may become "incontestable," which limits the bases on which the registration can be challenged. 

(b) Registration confers nationwide trademark rights. 

(c) Registration provides "constructive notice" to others of the owner's rights to the mark; this means that anyone adopting the same mark after it has been registered cannot claim to have done so in good faith. 

(d) A prior registration or pending application may be cited by the Trademark Office as a bar to the registration of a later applicant's identical or similar mark. In addition, a registered mark or pending application will be disclosed on a trademark search, which may deter others from initially adopting the same or a very similar mark. 

But registration is not worthwhile in every case. It will take a year or more to obtain registration. Accordingly, registration may not be recommended for marks with a short life span, which will not be used again in the future. 

In addition, registration is not recommended unless the organization is confident that there are no other parties who can claim prior rights to a similar mark on related goods or services. As discussed below, the registration process involves publication of the mark and an opportunity for interested parties to object. The public nature of a trademark filing can potentially notify those parties whose mark the organization is unwittingly infringing. 


How Long Is the Registration Process? 

At a minimum, registration takes approximately one year, counting from the date the application is filed to the date a certificate of registration is issued. Registration will take longer if the application encounters substantive objections from the Examiner or is opposed by any third parties.  
 

What Are the Governmental Fees For Filing an Application? 

The basic application fee charged by the government is currently $325 per trademark class per application. A single trademark application can often entail 2 or more classes. 


What Are the General Steps of the Application Process? 

1. Filing - The application and one specimen showing the mark as used in commerce ( if the application is based on use) are provided to the Trademark Office. In approximately two months, the Office will assign a serial number to the application, and issue a filing receipt. 

2. Examination - Within approximately six months from the filing date (depending on the Office's workload), the application will be assigned to Trademark Examiner within the Office. The Examiner will review the application, and conduct a search of the Office's records to ensure that there are no prior registrations or pending applications that are confusingly similar to the applicant's mark. If the Examiner finds any defects in the application or specimen, or a confusingly similar mark is found, the Examiner will issue a written Office Action which identifies the problems. The applicant will have six months to respond to a written objection. Failure to respond within six months will cause the application to be abandoned. Additional office actions may be issued if the initial response does not sufficiently address all the outstanding objections. 

3. Publication - If the Examiner has no objections to the application, or once any objections are successfully overcome, the application will be published in the Trademark Office's Official Gazette. Any interested party will have thirty days from the publication date to  oppose the application, or to request an extension of time so that it consider whether to oppose. (The opposition term may be extended by up to 90 days, for a total of four months from the publication date). 

Can an Application Be Filed Before Use of a Mark Begins? 

An application may be filed before use of the mark is commenced. An application may be based simply on an applicant's bona fide intention to use the mark in interstate commerce in the future, in connection with particular goods or services. Such applications are called "intent-to-use" or ITU applications.  

Note: These applications cannot be filed merely to reserve or warehouse marks for later use without any actual intention to use the mark on specific goods/services. An ITU application may only be filed if there is a bona fide intention to use the mark and the applicant is in the process of developing the goods/services and/or otherwise engaged in making preparations for use, including market research, etc. The allegation of the applicant's bona fide intention to use the mark in commerce is made under oath in the application. Questions as to whether a legitimate bona fide intention to use a mark existed at the time of filing can be raised if an ITU application is opposed by a third party. 

What Information Is Needed to File the Application? 

1. Intent-to-use (ITU) Applications: 

For an ITU application, the following information is needed: 

(a) the mark and/or logo (the logo must be in rendered in black and white for the application);  

and 

(b) a general description of the good(s) or service(s) in connection with which the mark will be used. 

2. Use-based applications: 

For a used based application, the following information is needed: 

(a) the mark and/or logo (the logo must be in rendered in black and white for the application); 

(b) a general description of the good(s) or service(s) in connection with which the mark will be used.  

(c) date of first use of the mark in interstate commerce; and 

(d) a "specimen" showing use of the mark in commerce (A specimen often can be printed from the organization’s website.)

What Constitutes the Date of First Use of a Mark? 

For service marks, the date of first use of a mark in interstate commerce is the earliest date that the mark was used to advertise or market the services to prospective customers, i.e., (a) the services were available to the public as of this date; and (b) the mark was used in an advertisement, brochure, direct marketing piece, contract, etc. that was mailed or otherwise distributed to potential customers.  

For trademarks, the date of first use in interstate commerce would be the earliest date a product bearing the mark (on the product itself, or on a label or package for the product) was sold or distributed to the public.  
 

Why Is The Date of First Use of a Mark Important? 

As discussed above, under U.S. law the first to use a mark in connection with a particular good or service generally has trademark rights that supersede the rights of later users of a similar mark for the same or related goods or services, regardless of when or if that first user filed for a registration of that mark. For example, if The Meals On Wheels Association of America commences use of the mark MEALS ON WHEELS in connection with charitable food distribution services in 1995 but does not file an application for that mark until 2002, its rights trump that of any later users of the same or similar term for charitable services even if those later users filed for a trademark application before 2002.  

This general “first in time, first in right” rule is why the date of first use is so important and why the Trademark Office requires a trademark applicant to provide a sworn statement of this date. 

An exception to this rule is with respect to Intent To Use application, which allows applicants to date back their rights to the date of their Intent To Use application rather than the date of their actual use.

Post-Registration – Maintenance and Renewal of Registered Marks 

How Long Does a Registration Last? 

For registrations issued after November 16, 1989, the initial term of the registration is 10 years. For registrations issued prior to November 16, 1989, the initial term is 20 years. Subsequent renewal terms are 10 years. 

Trademark registration may be renewed indefinitely, provided that: (a) the mark remains in use in interstate commerce; (b) a Declaration of Use is filed during the sixth year after registration; and (c) renewal applications are filed at 10-year intervals. 
 

What Are the Requirements for Maintaining a Mark and Renewing? 

A. Continued Use of the Mark 

It may seem obvious, but the most important factor in maintaining a valid trademark registration is to continue to use the mark, in the form in which it is registered, and on the product(s) or service(s) for which the mark has been registered. 

If a mark is not used for three consecutive years after registration, it may be considered to have been abandoned, and the registration is then vulnerable to cancellation by third parties. 

B. Declaration of Use or Combined Declaration of Use and Incontestability 

A Declaration of Use (also known as an Affidavit of Use) is the first mandatory filing after registration of a mark on the principal register. Trademark law requires a Declaration of Use to be filed between the fifth and sixth anniversaries of the registration's date, attesting to the fact that the mark is still in use in interstate commerce on the product(s) or service(s) for which it's registered. A specimen showing the mark as currently used must accompany this declaration. The cost of filing the Declaration of Use is currently $100. 

Failure to file this declaration results in the automatic cancellation of the registration by the Trademark Office. The sixth year deadline cannot be extended. A registration, once cancelled, cannot be revived. 

A Combined Declaration of Use and Incontestability may be filed instead of the Declaration of Use, if the following statements can be made about the mark: (a) it has been in continuous use for the five years after registration, (b) it is not presently involved in litigation or administrative proceedings, and (c) the owner's rights in the mark have not been limited by a final decision of a court or administrative agency. The combined declaration, if accepted, significantly strengthens the protection for the mark, because it makes the registration "incontestable." Incontestablity limits the grounds on which the registration can be challenged and provides conclusive evidence of the registrant's rights in the mark. The cost of filing the Combined Declaration of Use and Incontestability is currently $300. 

C. Renewal of the Registration 

In the six months preceding the 10th anniversary of the registration date (or the 20th anniversary for marks registered before November 16, 1989), the registrant is required to file the first renewal application. As with the Declaration of Use, the renewal application attests to the fact that the mark is still in use in interstate commerce on the product(s) or service(s) named in the registration, and a specimen showing current use of the mark must accompany the application.  

Thereafter, all registrations may be renewed every 10 years during the six months preceding the anniversary of the registration date. The cost of filing the renewal is currently $500. 

Proper Use of Trademarks and Service Marks 

How Should An Organization’s Trademarks and Service Marks Be Identified? 

A. Distinguish trademarks from the surrounding text 

Showing that a word or logo is a trademark may be accomplished in several ways: by using a special or larger typeface, a different color, italicizing or CAPITALIZING the mark, by using quotation marks around the mark, or by using the mark in bold print.  

B. Use the appropriate symbol (®, TM or SM) 

1. ® (the registration symbol) 

The ® symbol may only be used when a mark has been registered with the U.S. Patent and Trademark Office. This limitation on use of the registration symbol is governed by federal law. Use of the ® symbol when a mark is not registered may be considered fraud, and may limit an organization’s ability to enforce its trademark rights. 

In addition, the ® symbol should only be used in connection with the goods or services for which the mark has been registered. For example, if a mark is registered for use only in connection with education services, it is improper to use the ® symbol when the mark is used in connection with different services, such as consulting services. Under those circumstances, the SM symbol should be used instead 

2. SM and TM Symbols 

TM and SM are informal symbols that indicate that the user claims trademark rights to that particular word(s), design or logo. The TM or SM symbols may be used with any unregistered marks. It is not necessary that a trademark application be filed in order to use an SM or TM symbol. However, the SM or TM symbol (as opposed to the ® symbol) is the appropriate symbol to use while an application to register the mark is pending at the Trademark Office. 

The TM symbol is appropriate when a mark is used in connection with the sale of goods,  e.g., furniture, jewelry, cookies. It should be placed directly on the item, or on a labels, tags, or packaging for the item. 

The SM symbol is appropriate when a mark is used in connection with services, such as charitable services. The SM symbol may be used on any documents which:

(1) promote or advertise the services (e.g. brochures, newspaper advertising, direct mail pieces, etc.); or (2) are used in connection with rendering the services (e.g. manuals, handouts). 

C. Properly Place the Symbols 

The ®, TM and SM symbols should be displayed to the right of the trademark, in superscript, and placed slightly above the mark, for example:  

Pro Bono Partnership^SM 

^{American Heart Association®} 

How Often Must I Use the ®, TM and SM Symbols? 

It is not necessary to add the ®, TM and SM symbols every time a mark is used in a particular ad, marketing piece, prospectus or policy. The purpose of using the symbols is to advise other parties viewing the materials that the organization claims trademark rights in the mark. The symbols should be used in the first and/or most prominent places a mark is featured, e.g. on the cover of a brochure or prospectus, in the headline of an advertisement, or in headings or subheadings in text pieces.  

The ®, TM and SM symbols should also be used the first time that the mark is used in the text itself. If the mark appears in several sections over a number of pages in a piece, it is advisable to repeat the particular symbol where it first appears in the text in each section.