Trademarks FAQ
1. How long does a trademark registration last?
An new trademark registration lasts 10 years, and it can renewed every 10 years afterwards for as long as the trademark is still in use. However, for a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.
2. What is the difference between the SM (SM), TM (TM) and the R-in-a-circle (®)?
The above symbols are all used as notice of trademark rights. The SM (℠) and TM (™) marks are used by the owner to claim exclusive use over the associated service mark and trademark respectively, but they have not necessarily been registered with the United States Patent and Trademark Office. The R-in-a-circle (®) mark can only be used by owners which have been granted a federal registration for their trademark/service mark (and not just applied for one).
3. Do I have to begin using a trademark before I can apply for federal registration?
No. A trademark application can also be filed by applicant with a bona-fide intention to use the mark. A specimen showing actual use of the mark in commerce is required after the registration issues.
4. I recently received a cease and desist letter stating that my domain name infringes on another’s trademark. Can they really take away my domain name?
Yes, and you may also be sued for civil damages. It is always best to request your intellectual property attorney to perform a trademark search before purchasing a domain name (even an existing one) to ensure that you are not violating another’s trademark rights. It is not the responsibility of the trademark owner or the registration company to ensure that you are not purchasing a protected mark. If a trademark owner does discover that you are using his trademark in a domain name, he will likely file a UDRP (Universal Dispute Resolution Proceedings) action. It is cheap, fast, and if successful, the trademark owner may require you to transfer the domain to the trademark owner and you will not be reimbursed for any expenditures you may have made (including the cost of the domain itself, website development, etc.). In the alternative the trademark owner may file an action in federal court and, if successful, the court may order you to pay damages in the amount of i) your profits, ii) the trademark owner’s damages from the harm, and ii) the court costs. In extreme cases, the court may treble (triple) this award to the trademark owner. In the alternative, the trademark owner may request statutory damages which may range from $1000 -$100,000 per domain name without having to prove any actual damages.