FAQ's

Trade Names, Trade Marks & Service Marks

1. How can I protect the name of my business, goods and services from use by competitors?

   (a) Definitions. A "trade name" is defined as "a word, name, symbol, device or any combination thereof used by a person to identify the person’s business, vocation or occupation and to distinguish it from the business, vocation or occupation of others." A "trademark" is defined as "any word, name, symbol, device or any combination thereof adopted and used by a person to identify goods made or sold by the person and to distinguish them from goods made or sold by others." A "service mark" is defined as "any word, name, symbol, device or any combination thereof used by a person in the sale or advertising of services to identify the person’s services and to distinguish them form the services of others."

   (b) Registration in Oregon. Any person who adopts and uses a mark or trade name in Oregon may submit the proper form and filing fee to the Secretary of State. Registrations are accepted unless the mark is likely to cause confusion, mistake, or deception when applied to the goods or services of the applicant. However, the fact that the Secretary of State processes the registration form does not create any rights in the name or mark superior to those common-law rights of another person in the trademark or service mark in question. The Secretary of State does not make any independent investigation or search for potential conflicts – that burden and duty remains with the applicant. The certificate of registration issued by the Secretary of State provides the registrant with prima facie evidence in Oregon of the validity and ownership of the mark in question. Consequently, the registrant will be able to bring a civil action for infringement and to recover either monetary damages or seek injunctive relief.

   A registration of trademarks and service marks with the Secretary of State remains in force for five years (at which time renewal is required). A mark will be considered "abandoned" however (regardless of the current status of registration) if either: (1) its use is discontinued with the intent not to resume, or (2) by an act or omission of the registrant it becomes the generic name for the goods or services provides (for example, the use of Kleenex for tissue, or Xerox for photocopies). Not using a mark for two years is considered prima facie evidence of "abandonment."

   (b) Federal Registration. Federal registration is not required to establish rights in a trademark. Certain common law rights arise from actual use of a mark. Generally speaking, the first party that either uses a mark in commerce or files an intent to use application with the USPTO has the ultimate right to use and registration of the mark. However, federal registration of trademarks or service marks through the United States Patent and Trademark Office ("USPTO") has several important advantages including notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services as set forth in the registration application. You do not need an attorney to file a trademark application, however it may be desirable to employ an attorney who is familiar with trademark matters to comply with all substantive and procedural issues and requirements.

   As a starting point, you must determine whether any other person or company is using a particular trademark. or service mark. Searches may be done on-line over the Internet through the USPTO website (TESS database) or in person at certain Patent and Trademark Depository Libraries (Louis and Clark Law School Library in Portland). Common law searches should also be done which involve searching records other than the federal register and pending application records. Such searches may include checking telephone directories, yellow pages, state trademark registrations, domain name registrations on the Internet, etc. There are numerous commercial firms that provide such search services for a fee. The application is filed on the form provided by the USPTO on its website. In addition, a specimen must be included that shows how the mark is actually used on the goods or in the offer of services. Generally, labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. One specimen is required for each class of goods or services specified in the application. In addition to the specimen, a drawing must be included which depicts the mark the applicant seeks to register.

   The USPTO will refuse registration if all legal requirements are not met. Common grounds for refusing registration include that the proposed mark so resembles a mark already registered that use of the mark on the applicant’s goods or services is likely to cause confusion, mistake, or deception and the proposed mark is merely descriptive or deceptively misdescriptive of the applicant’s goods or services.

   (c) Length of time for registration. Generally, an applicant will receive a filing receipt approximately six months after filing and a response from the USPTO within six to seven months. However, the total processing time for an application can be anywhere from nearly a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.

   (d) How long does a trademark registration last? Trademark registrations have a 10-year term but for a trademark registration to remain valid, an Affidavit of Use must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every 10-year period after the date of registration. The registrant may file the affidavit within a six-month grace period after the end of the sixth or tenth year, with payment of an additional fee.