Office of General Counsel

Trademarks

What is a trademark?

A trademark is a brand name. A trademark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a good (see https://www.uspto.gov/trademarks-getting-started/trademark-basics ).

There is protection both under federal law and state law for trademarks that are either registered with the United States Patent and Trademark Office (USPTO), a state trademark office, or unregistered marks used in commerce.

Who holds the rights to a trademark?

Generally, the person (or persons) who creates the trademark is the holder of the mark. There are some exceptions to this rule:

If a person creates the mark within the scope of his or her employment, the employer holds the mark.

If the mark was produced by an independent contractor and it qualifies as a “work made for hire,” then the trademark is owned by the person or entity for which the work was produced.

If the creator has sold the mark, the entity or person who purchased the mark becomes the owner (see https://www.uspto.gov/trademarks-getting-started/trademark-basics ).

Do I need to register my trademark for it to be protected?

No, you are not required to register the mark to obtain protectable rights. An individual can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration. However, registering the mark (either at the state level or federal level) has 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 use of the U.S. registration as a basis to obtain registration in foreign countries;
The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
The right to use the federal registration symbol ®; and
Listing in the United States Patent and Trademark Office’s online databases (see http://www.uspto.gov/faq/trademarks.jsp ).

You may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of a “common-law” mark. No registration is necessary to use a "TM" or "SM" symbol. You may only use the federal registration symbol "®" after the USPTO actually registers a mark. To register your mark with the USPTO, see http://www.uspto.gov/trademarks/teas/index.jsp .

To register your mark with the Office of the Wyoming Secretary of State, see http://soswy.state.wy.us/forms/default.aspx?root=Business .

How long does trademark protection last?

Rights in a trademark can last indefinitely if the owner of the trademark continues to protect the mark. The owner of the mark is responsible for enforcing his/her rights in the mark, regardless of whether the mark is registered or not. While the federal agency and state agencies attempt to ensure that no other party receives a federal or state registration for an identical or similar mark, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark (see https://www.uspto.gov/trademarks-getting-started/trademark-basics ).

If a mark is federally registered, to maintain registration the individual must file maintenance documents between the 5th and 6th year after the registration date as required by the USPTO. If the maintenance documents are not filed on time, the registration will be cancelled and cannot be revived or reinstated. The owner of the mark would be required to submit a whole new application to registrar the mark. Forms for filing the maintenance documents are available at https://www.uspto.gov/trademarks-application-process/filing-online .

If a mark is registered with the Office of the Wyoming Secretary of State, to maintain registration the individual must file a renewal form within six months prior to the expiration of the initial application (currently the initial registration is valid for five years). Renewal forms are mailed by the office of the Secretary of State to registrants whose trademark or service mark is up for renewal. For more information, see http://soswy.state.wy.us/forms/default.aspx?root=Business .