Intellectual Property - Trademarks

collection of car-related company stickers representing trademarks

What is a trademark?

  • Any Word, Name, Symbol, Sound, Color, Design (or any combination thereof) used to identify and distinguish goods or services and to indicate their source.
  • A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.
  • Trademark registrations can be owned indefinitely. However, proper post-registration maintenance. Documents must be timely and accurately filed.
  • Trademark Basics: Where to Start (PDF)
  • Frequently Asked Questions About Trademarks

Trademark Searching

Conduct a trademark search to determine whether a conflict exists with registered federal marks or pending applied-for marks

Steps to Conducting a Trademark Search

If there is a registered U.S. trademark or prior-filed application for a mark that is not spelled exactly like your mark but is similar in sound, appearance, meaning or commercial impression, and used in connection with related goods and/or services, then the trademark will be refused registration. It is likely that consumers would be confused by similar trademarks for the same or related goods and/or services.

See the USPTO's page on the most frequently cited trademark registration refusals

The most common reason for refusal of a trademark registration is likelihood of confusion with other marks. Additionally, a trademark may also be refused if it lacks distinctiveness. In other words, it may be refused if the trademark is

  • Merely descriptive for the goods/services
  • A geographic term
  • A surname
  • Ornamental as applied to the goods

Useful links in Trademark Searching

Trademark Application Process

Trademark Protection Options Outside of the United States

  • File a trademark internationally under the Madrid Protocol through the U.S. Patent and Trademark Office. Also see the World Intellectual Property Organization (WIPO) page on the Madrid system for the international registration of marks, which functions under two international treaties. For international marks currently in force and recorded under the Madrid System, search the Global Brand Database.
  • Community Trademark (CTM) registrations File a trademark valid in the European Union countries.
  • You can also file for separate trademark registrations with each country.

State Trademarks

If you are not conducting and do not plan to conduct interstate commerce, you may consider applying for a state trademark through the California Secretary of State's office rather than a federal trademark.

Common Law Trademarks

Even if a trademark is not registered federally, the owner may have common law rights resulting from the use of it. The owners of unregistered trademarks may indicate their claim to common law rights to the trademark by using "TM" with it.

Read more about Common Law Trademarks from San Francisco Public Library.

Common law marks may be found in:

  • Telephone, business and manufacturing directories
  • Print and on-line catalogs
  • Trade journals and magazines
  • Web search engines and portals
  • Newspapers, press releases, and new product announcements