Registration or Licensing Part One

John Hunter



TradeMark Registration

A trademark (also spelled as "trade mark" in some regions) is a distinctive sign, symbol, logo, word, phrase, or combination thereof that is used by businesses and individuals to identify and distinguish their goods or services from those of others in the marketplace. Trademarks are an important part of intellectual property and serve several key functions, including:

1. Brand Identification: Trademarks help consumers identify and recognize specific brands and products. For example, the Apple logo or the Nike swoosh are well-known trademarks that instantly convey the identity of the companies and their products.

2. Brand Protection: Trademarks provide legal protection to the owner by granting exclusive rights to use the mark for their goods or services. This protection helps prevent others from using a similar mark that could confuse consumers or dilute the brand's reputation.

3. Consumer Confidence: Trademarks help build trust and confidence among consumers. When a consumer sees a recognized trademark on a product, they often associate it with a certain level of quality, reliability, and reputation.

4. Marketing and Advertising: Trademarks can be powerful marketing tools. They can be used in advertising and promotional materials to create brand recognition and loyalty among consumers.

5. Business Asset: Trademarks can have significant financial value and are considered valuable assets for businesses. They can be bought, sold, licensed, and used as collateral for loans.

To obtain trademark protection, individuals and businesses typically need to register their trademark with the relevant government agency or trademark office in their jurisdiction. The specific requirements and processes for trademark registration can vary from country to country, but generally involve submitting an application that includes a description of the mark and the goods or services it will be used with. Once registered, the trademark owner has exclusive rights to use the mark in connection with those goods or services within the jurisdiction where it's registered.

TradeMark Registration

Trademark protection is limited in scope and duration, and it must be actively enforced by the trademark owner to maintain its rights. Failure to enforce a trademark can result in a loss of protection. Additionally, trademarks can be challenged or invalidated by third parties if they believe the mark does not meet the legal requirements or if it conflicts with their own trademark rights.

The United States Patent and Trademark Office (USPTO) plays a central role in the administration and protection of intellectual property rights in the United States. Its primary functions and roles include:

1. Trademark Registration:

- The USPTO is responsible for receiving and processing trademark applications from individuals and businesses seeking to register their trademarks in the United States. This includes conducting examinations to ensure that trademarks meet the legal requirements for registration.

2. Patent Granting:

- The USPTO grants patents to inventors and businesses for new and useful inventions. This involves evaluating patent applications, conducting examinations to determine patentability, and issuing patents to those who meet the requirements.

3. Maintenance of Intellectual Property Records:

- The USPTO maintains a comprehensive database of registered trademarks and granted patents. This database is publicly accessible and serves as a valuable resource for businesses, inventors, and the legal community.

4. Intellectual Property Education:

- The USPTO provides educational resources and information to help individuals and businesses understand the basics of intellectual property, including patents, trademarks, and copyrights. This includes offering guidance on the application process and intellectual property law.

TradeMark Registration

5. Examination and Review of Trademark Applications:

- For trademark applications, the USPTO examines the applications to ensure that the proposed trademarks meet the necessary legal criteria, including distinctiveness and non-confusion with existing trademarks. The USPTO may issue Office Actions requesting corrections or additional information as needed.

6. Issuance of Patents and Trademark Registrations:

- Once a trademark application or patent application is approved, the USPTO issues a trademark registration certificate or a patent grant. These documents serve as official proof of ownership and exclusive rights to the intellectual property.

7. Trademark and Patent Maintenance:

- The USPTO oversees the maintenance of trademarks and patents, including renewal and payment of maintenance fees, to ensure that owners continue to protect their intellectual property rights.

8. Resolution of Intellectual Property Disputes:

- While the USPTO itself does not handle litigation, it plays a role in the resolution of intellectual property disputes by granting patents and registering trademarks. Disputes over intellectual property rights are typically resolved through legal action in the courts, but having a registered trademark or patent from the USPTO can be crucial evidence in such cases.

9. International Cooperation:

- The USPTO works with international organizations and foreign intellectual property offices to promote consistency and cooperation in the protection of intellectual property rights on a global scale.

TradeMark Registration

The "TM" (trademark) symbol is used to indicate that a particular word, phrase, symbol, or logo is being claimed as a trademark by a person or business, even if the trademark has not been officially registered with a government trademark office, such as the United States Patent and Trademark Office (USPTO) in the United States. Here's how the "TM" designation can help protect trademarks:

1. Notice of Trademark Rights: By using the "TM" symbol, a person or business puts others on notice that they are claiming certain words, symbols, or logos as their trademarks. This serves as a warning to potential infringers that the mark is being used in a trademark sense and that the owner intends to protect it.

2. Common Law Rights: In many jurisdictions, including the United States, the use of the "TM" symbol establishes common law trademark rights. Common law rights provide some level of protection to the trademark owner, even without formal registration. These rights generally extend to the geographic areas where the mark is being used in commerce.

3. Deterrence: The use of the "TM" symbol can deter potential infringers from using a similar mark because it signals the owner's intention to protect their trademark. Knowing that a mark is claimed as a trademark may discourage others from attempting to use it in a way that could lead to confusion or infringement claims.

4. Documentation: Using the "TM" symbol helps in documenting the date of first use of the trademark in commerce. In trademark disputes or registration applications, demonstrating prior use can be important in establishing ownership and priority.

5. Building Brand Recognition: Consistent use of the "TM" symbol with a brand name or logo can help build brand recognition and consumer awareness. This is especially important for businesses that are in the process of seeking formal trademark registration or are operating in jurisdictions where registration is not required for trademark protection.

TradeMark Registration

It's important to note that while using the "TM" symbol provides some level of protection and notice, it does not provide the same legal benefits and protections as a registered trademark. Registered trademarks, denoted by the ® symbol, offer stronger protection and several advantages, including:

1. Presumption of Validity: A registered trademark is presumed to be valid, making it easier for the owner to enforce and protect their rights.

2. Nationwide Support: Registered trademarks provide support throughout the entire country where the trademark is registered.

3. Enhanced Remedies: In the event of trademark infringement, registered trademark owners may be entitled to enhanced remedies, including statutory damages and attorneys' fees.

4. Easier Enforcement: Enforcement of registered trademarks is typically more straightforward because the ownership and scope of rights are well-documented.

The "TM" symbol can still be a valuable tool for protecting unregistered trademarks and establishing trademark rights in the absence of registration.

The United States Patent and Trademark Office (USPTO) does not have the authority to stop others from using your trademark. Instead, the USPTO's primary role is to grant trademark registrations and maintain a record of registered trademarks. It is up to the trademark owner to enforce their rights and prevent others from using their trademark without permission.

Here's how the process generally works:

1. Trademark Registration: When you successfully register your trademark with the USPTO, you gain certain legal rights and protections associated with that trademark. These rights include the exclusive right to use the trademark for the goods or services specified in your registration.

2. Enforcement: If someone else uses your registered trademark without your permission in a way that could lead to confusion among consumers, you have the legal right to enforce your trademark rights.

TradeMark Registration

3. Legal Action: To stop others from using your trademark, you typically need to take legal action. This may involve sending cease and desist letters, negotiating settlements, or filing a trademark infringement lawsuit in a court of law.

4. Injunction: In a trademark infringement lawsuit, you can seek a court-issued injunction to stop the infringing party from using your trademark.

5. Damages and Remedies: If you succeed in your trademark infringement case, you may be entitled to damages, including monetary compensation, and other remedies as determined by the court.

It's important to note that enforcing trademark rights can be a complex and often costly process, and the outcome of legal action can vary depending on the specifics of the case. Additionally, trademark owners have the responsibility to actively police and protect their trademarks; failure to do so can weaken their rights over time.

While the USPTO does not actively police or enforce trademark rights on behalf of trademark owners, it does provide valuable resources and information to help trademark owners understand and protect their rights. The USPTO's role primarily involves the registration and maintenance of trademarks, and it provides guidance on the legal process for enforcing those rights. Trademark owners should consult with legal counsel experienced in intellectual property law to effectively enforce their trademark rights when necessary.

Trademark registration and trademark licensing are two distinct legal concepts in the context of intellectual property, specifically trademarks. Here's an explanation of each:

1. Trademark Registration:

- Trademark registration refers to the process of formally applying for and obtaining a trademark from a government trademark office, such as the United States Patent and Trademark Office (USPTO) in the United States or similar offices in other countries.

TradeMark Registration

- When you register a trademark, you are establishing your exclusive rights to use that trademark in connection with specific goods or services within the jurisdiction where it is registered. These exclusive rights generally include the right to prevent others from using a confusingly similar trademark for similar goods or services.

- Trademark registration provides legal benefits, including:

- Presumption of ownership and validity.

- Nationwide or jurisdictional protection, depending on the registration.

- The ability to bring legal action for infringement and seek remedies such as damages and injunctive relief.

- A registered trademark is typically indicated by the ® symbol.

- Registration requires filing an application with the relevant trademark office, paying fees, and meeting the legal requirements for trademark protection, including distinctiveness and non-confusion with existing marks.

2. Trademark Licensing:

- Trademark licensing involves granting permission to another party (the licensee) to use your registered trademark for specific purposes, under certain conditions, and for a defined period of time. This is typically done through a legally binding agreement known as a trademark license agreement.

- A trademark license allows the licensee to use the trademark while the trademark owner (licensor) retains ownership and control over the trademark.

- Key points in a trademark license agreement may include:

- Scope of the license: What products or services the licensee is allowed to use the trademark for.

TradeMark Registration

- Quality control: Provisions ensuring that the licensee maintains the quality and standards associated with the trademark.

- Duration: The length of time the license is valid.

- Royalties: Any payments, royalties, or fees the licensee must pay to the licensor.

- Termination: Conditions under which the license can be terminated.

- Trademark licensing can be an effective way for trademark owners to expand their brand, generate additional revenue, or enter new markets without directly operating those businesses themselves.

In summary, trademark registration establishes and secures the exclusive rights to a trademark, while trademark licensing involves granting permission for others to use that registered trademark under specified terms and conditions. Registration provides the notification from an authoritative agency and ownership rights, while licensing allows controlled use of the trademark by third parties while maintaining the trademark owner's ownership and control. Trademark owners should carefully manage and monitor the use of their marks through licensing agreements to ensure that their brand's quality and reputation are upheld.

The United States Patent and Trademark Office (USPTO) is a government agency responsible for administering trademark registrations and maintaining a record of registered trademarks. While the USPTO does not have the authority to sue or enforce trademark rights on behalf of trademark owners, it does play an important role in the trademark registration process and can assist trademark owners in certain ways:

1. Examination and Registration: The USPTO examines trademark applications to ensure they meet the legal requirements for registration, such as distinctiveness and non-confusion with existing marks. If a trademark application is approved, the USPTO grants a trademark registration.

TradeMark Registration

2. Database Maintenance: The USPTO maintains a comprehensive database of registered trademarks. This database is publicly accessible and serves as a valuable resource for trademark owners, businesses, and the legal community.

3. Resources and Guidance: The USPTO provides resources, guidance, and educational materials to help trademark owners understand and protect their rights. These resources include information on trademark law, the application process, and enforcement options.

4. Trademark Disputes: In some cases, the USPTO may be involved in trademark disputes when trademark registrations are challenged or opposed by third parties. However, the USPTO's role is typically administrative, and disputes are resolved through legal proceedings in the courts or through administrative processes within the USPTO.

5. Trademark Opposition and Cancellation Proceedings: The USPTO provides mechanisms for third parties to oppose or seek the cancellation of trademark registrations if they believe the marks should not have been registered. These proceedings are conducted within the USPTO, but they involve disputes between private parties.

Enforcing trademark rights, including stopping others from using your trademark, typically requires action by the trademark owner, not the USPTO. Trademark owners have the responsibility to actively police and protect their trademarks through cease and desist letters, negotiations, and, if necessary, legal action in a court of law. The USPTO's primary role is to grant and maintain trademark registrations, but it does not engage in litigation or enforcement on behalf of trademark owners.

If you believe someone is infringing on your registered trademark, it is advisable to consult with an experienced intellectual property attorney to explore your legal options and take appropriate action to protect your rights.

TradeMark Registration

Proving the use of an unregistered trademark, often referred to as a common law trademark, can be essential in establishing your rights to the mark and protecting it from potential infringement. While registered trademarks provide stronger legal protections, unregistered trademarks can still be enforceable under certain circumstances. Here are some steps you can take to demonstrate your use of an unregistered trademark:

1. Maintain Detailed Records:

- Keep comprehensive records of your use of the trademark, including the date of first use, locations where it has been used, and the specific goods or services with which it is associated.

2. Gather Evidence of Use:

- Collect evidence that demonstrates your use of the trademark in commerce. This evidence may include photographs, product packaging, marketing materials, advertisements, invoices, sales records, and any other documentation that shows the mark being used in connection with your goods or services.

3. Document Sales and Customer Interactions:

- Maintain records of sales, transactions, and customer interactions that involve the trademark. This can help establish that the mark is associated with your business and products or services.

4. Monitor and Document Third-Party Use:

- Keep an eye on the marketplace to identify any potential infringing uses of your trademark by others. Document instances of third parties using similar marks that may cause confusion.

5. Affix the "TM" Symbol:

- Use the "TM" symbol with your trademark to indicate that you are claiming it as a trademark, even if it is unregistered. This symbol puts others on notice of your claim to the mark.

TradeMark Registration

6. Maintain a Strong Online Presence:

- If your trademark is associated with a website or online presence, regularly update and maintain your online presence to show ongoing use of the mark.

7. Use the Mark Consistently:

- Consistency in the use of your trademark is crucial. Ensure that you use the mark consistently on all relevant products, services, and marketing materials.

8. Preserve Samples and Examples:

- Preserve physical samples and examples of the products, packaging, and materials bearing the trademark. These physical samples can serve as tangible evidence of your use.

9. Seek Witness Statements:

- If possible, obtain statements or affidavits from individuals who can attest to your use of the trademark, the date of first use, and its association with your business.

10. Consult with Legal Counsel:

- It's advisable to consult with a trademark attorney experienced in intellectual property law. They can provide guidance on maintaining and documenting your unregistered trademark and advise you on the best strategies for protecting your rights.

Proving the use of an unregistered trademark may be necessary if you need to assert your rights in a dispute, but it's important to note that registered trademarks generally offer stronger legal protections and are easier to enforce. Therefore, if you anticipate significant value in your trademark or foresee potential disputes, consider seeking federal trademark registration with the United States Patent and Trademark Office (USPTO) or the relevant trademark authority in your jurisdiction.

TradeMark Registration

A common law trademark, also known as an unregistered trademark, is a type of trademark protection that arises from the actual use of a distinctive sign, symbol, logo, word, phrase, or combination thereof in commerce to identify and distinguish specific goods or services. Common law trademark rights are established through ongoing, legitimate, and continuous use of the mark in the marketplace, rather than through formal registration with a government trademark office, such as the United States Patent and Trademark Office (USPTO) in the United States.

Here are some key characteristics and aspects of common law trademarks:

1. Creation of Rights: Common law trademark rights are created by using a mark in commerce to identify goods or services. Registration with a government agency is not required to establish these rights.

2. Geographic Scope: Common law trademark rights are typically limited to the geographic areas where the mark is used. In contrast, registered trademarks offer broader protection, including nationwide protection in the United States.

3. Protection Against Infringement: Owners of common law trademarks have the right to enforce their trademark against others who use similar marks in a way that may cause consumer confusion or dilution of the mark's distinctiveness.

4. Use of "TM": Owners of common law trademarks often use the "TM" symbol to indicate their claim to the mark, even though it is unregistered. This symbol serves as a notice to others that the mark is being used as a trademark.

5. Proof of Use: In legal disputes or enforcement actions, owners of common law trademarks may need to provide evidence of their continuous and bona fide use of the mark to establish their rights.

6. Limited Protection: Common law trademark rights can be less robust and harder to enforce than registered trademarks because they rely on proof of use and may be subject to the limitations of geographic scope.

TradeMark Registration

7. Priority of Use: Common law trademark rights are generally based on the principle of "first to use," meaning that the first party to use a mark in commerce to identify specific goods or services has priority over later users in the same geographic area.

It's important to note that while common law trademarks provide some level of protection, they may not offer the same level of legal benefits and nationwide or international recognition as registered trademarks. Therefore, businesses and individuals often seek federal or international trademark registration to obtain stronger protection, legal advantages, and the ability to enforce their trademark rights more effectively. Common law trademarks are a fallback option for those who have not registered their marks but still have valid rights based on their use.

Usual Information Needed To file application:

What is a drawing page?

A drawing page is a visual representation of your mark on an 8 1/2" x 11" sheet of paper that must be submitted with your Trademark / Service Mark Application for Registration (Form TM-100). The drawing may be hand-written, hand-drawn, or computer-generated. A photocopy of the mark is not acceptable. If your mark contains only words, list only those words on the 8 1/2" x 11" sheet of paper.

Does your Trademark have a design code?

A design code is a six-digit numeric code that is used to describe a design element of a Trademark or Service Mark. If your mark includes a design element, using the Design Search Code Manual developed by the U.S. Patent and Trademark Office available at, include the appropriate design code(s) that describes the significant element(s) of your mark to help distinguish your mark from other marks registered with the California Secretary of State. If you do not include a design code, one or more design codes will be selected by the Secretary of State's office upon review and filing.

TradeMark Registration

What is a specimen?

A specimen is an item that displays how the mark is currently used in commerce. Include with your Trademark / Service Mark Application three (3) identical (three of the same) original specimens that show the mark in use in commerce on the goods or in connection with services provided in California.

What is a classification code?

A classification code is a three-digit numeric number used to identify the goods or services to which the mark applies. The list of classifications of goods and services can be found through the United States Patent and Trademark Office website at or at Title 37 of the Code of Federal Regulations, part 6, section 6.1.

Registration in and of itself does not guarantee exclusive ownership of a mark. 

How long is a trade Mark active?

A Trademark or Service Mark registration is active for five (5) years from the date the mark was filed with the California Secretary of State's office. Within six (6) months of expiration of the five (5) years, the mark may be renewed for another five (5) years. The mark may be renewed every five (5) years as long as the mark is in continual use.