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Legal Advice at the Speed of BusinesSTM from a Licensed Attorney – Right here in Colorado

FREQUENTLY ASKED QUESTIONS : Trademark FAQs

Q

What is a Trademark?

A

A trademark is a distinctive design, symbol, word, or phrase that a seller affixes to their products in order to distinguish their goods or services from those of other competitors in the marketplace. Examples of famous trademarks include: Dell®, Nike®, Gatorade®, and Lexus®. The owner of a trademark has exclusive rights to us it on the product it was intended to identify. Service marks receive the same legal protection as trademarks but are meant to distinguish services rather than goods. A strong trademark can become a very valuable asset of your business because it helps to identify you and separate you from your competitors, and your customers may continue to buy from you based purely on the strength of your mark. A few examples of businesses that would use a Trademark include soft drink companies, automobile manufacturers, clothing companies, and pharmaceutical companies.

In the United States, trademarks may be protected by both Federal Statute under the Lanham Act and by state statutory laws. A trademark successfully registered with the United States Patent and Trademark Office enjoys nationwide protection. If the trademark is initially approved by an examiner, it is published in the Official Gazette of the Trademark Office to notify other parties of the pending approval so that it may be opposed. In the event that a trademark is rejected, the Trademark Office provides an appeals process.

Q

What is a Service Mark?

A

A Service Mark is the same as a Trademark, except that a service mark is used to identify and distinguish services rendered or offered in the marketplace. The Trademark designation (“TM”) and Service Mark designation (“SM”) are often used interchangeably. A few examples of businesses that would use a Service Mark include law firms, medical practices, restaurants, and auto repair shops.

Q

Do I Have to Register My Trademark/Service Mark?

A

Trademark or Service Mark protection is acquired through a person or entity’s legitimate use of the mark in connection with the sale of goods or services and through enforcement actions brought by the owner in civil legal proceedings. Registration is not necessary, however, registration offers the owner of the mark the opportunity to place others in the marketplace on notice that the owner is in fact using a particular mark in commerce. Furthermore, successful federal Registration allows the owner of the mark the exclusive right to use the mark in all 50 states.

Q

When Can I Use the Trademark Symbols TM, SM and ®?

A

Any time you claim rights in a mark you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the state or USPTO. However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration database. The successful registration of a mark with the Colorado Secretary of State does not allow the owner of the mark to use the “®” designation.

Q

Why Should I Obtain a Colorado Trademark/Service Mark?

A

Trademarks may be registered with the Colorado Secretary of State. A state trademark does not prevent someone from using your mark outside of Colorado. However, a state trademark is a relatively inexpensive way to put everyone across the state on public notice that you are using your mark in commerce and makes the mark available for public viewing. Such registration benefits the owner who seeks exclusive use of a mark and a potential registrant who seeks to ensure that his or her mark does not conflict with a mark already in use. Additionally, once your mark is registered with the state, anyone who attempts to register a confusingly similar mark (i.e., a mark that creates a likelihood of confusion between your mark and another’s mark) in Colorado will be denied from doing so. State registration also may be used as evidence in the event that an infringement action is pursued by the registrant in civil court. A state Trademark/Service Mark lasts for a period of 5 years, but with the filing of a renewal application may be held in perpetuity by the owner.

Q

Why Should I Obtain a Federal Trademark?

A

There are many reasons why an owner of a trademark or service mark would want to register the mark with the United States Patent and Trademark office, including:


  • Registering a trademark gives the owner of the registration nationwide priority to use the mark.

  • Registration puts everyone across the country on notice that you are using your mark in commerce.

  • The owner of a registered mark enjoys a legal presumption that the registrant is the owner of a particular mark.

  • Persons attempting to use or register a confusingly similar mark after you have filed your registration can be stopped.

  • The ability to bring an action concerning the mark in federal court.

  • The owner may use the U.S. Registration as a basis to obtain registration in a foreign country.
    Your exclusive use of the mark will extend to all 50 states.

  • A successful Federal Registration allows the owner of the mark to use the registered trademark symbol® alongside their name or logo.
  • Q

    How Long Will A Federal Trademark Registration Last?

    A

    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 Section 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. Assuming that affidavit of use is timely filed, registrations granted on or after November 16, 1989 have a 10-year term. Essentially, the mark may be renewed in perpetuity by the owner.

    What is a Federal Copyright?

    A

    Copyright is a form of protection provided by U.S. law to the authors of “original works of authorship” fixed in any tangible medium of expression. The manner and medium of fixation are virtually unlimited. Creative expression may be captured in words, numbers, notes, sounds, pictures, or any other graphic or symbolic media. The subject matter of copyright is extremely broad, including literary, dramatic, musical, artistic, audiovisual, and architectural works. Copyright protection is available to both published and unpublished works. Under the 1976 Copyright Act, the copyright owner has the exclusive right to reproduce, adapt, distribute, publicly perform, and publicly display the work. These exclusive rights are freely transferable, and may be licensed, sold, donated to charity, or bequeathed to your heirs. It is illegal for anyone to violate any of the exclusive rights of the copyright owner and infringement remedies include court orders to stop current or prevent future infringements.

    Why Should I Obtain a Federal Copyright?

    A

    Many people believe that you must register your work before you can claim copyright. However, no publication, registration or other action in the Copyright Office is required to secure copyright. Copyright is secured automatically when the work is created, and a work is “created” when it is fixed in a “copy or a phonorecord for the first time.” For example, a song can be fixed in sheet music or on a CD, or both. Although registration with the Copyright Office is not required to secure protection, it is highly recommended for the following reasons:

    Registration establishes a public record of the copyright claim.


    Registration is necessary before an infringement suit may be filed in court (for works of U. S. origin).


    If made before or within 5 years of publication, registration establishes prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.


    If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.


    Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies.


    Copyright protection lasts from the moment of creation until 70 years after the author’s death.

    Q

    Does RockyMountainStartUp™.com Provide Federal Trademark or Copyright Services?

    A

    RockyMountainStartUp™.com only provides Colorado Trademark/Service Mark registration. For more information regarding federal trademark or copyright registrations please e-mail: advancedservices@RockyMountainStartUp.com.

    Q

    Isn’t My Business Name Already Protected?

    A

    Clients often ask, “Why do I need a state trademark when my business name is already registered with the state?”. Answer: because when a business name is registered with the state, the Secretary of State’s office does not check the Trademark database for conflicting names. They only check the business names database for conflicts. The state treats each database system individually, without regard for the other. Clients should do the same. Therefore, by registering the name in both the Business Name database and the Trademark database, the business owner has essentially placed a no trespassing sign next to their business name in both of the separate state systems.

    Q

    What Is the Process and How Long Does It Take?

    A

    1. You Complete the Colorado TM/SM Questionnaire: Answer a few questions regarding your trademark/service mark, upload a specimen, e-sign the attorney-client agreement, and pay the appropriate legal and filing fees.

    2. We Prepare the Application for Registration: The application is prepared based upon the information provided in the questionnaire and filed with the Secretary of State.

    3. We Send the Certificate of Registration to You: The Certificate of Registration is mailed to your address.

    From start to finish, the application process takes about 10-20 business days, depending on the Secretary of State’s current trademark application workload.

    Q

    What is the Registration Fee?

    A

    For State Trademark Registration the fees are as follows:
    Legal Fees: $199
    State Filing Fees: $30
    Total Flat Fee: $229

    Q

    What Do I Get For The Money?

    A

    In connection with the filing of a state Trademark/ Service Mark application, we will perform the following services:

    1. Trademark/Service Mark Availability Search: We will conduct a search of the Colorado Business Database, the Colorado Trademarks Database, and the Colorado Yellow Pages for conflicting marks. If your mark is not available, we will give you a full refund of your trademark/service mark fees.

    2. Prepare the Application for Registration: We prepare and file the application with the Colorado Secretary of State- Trademarks Division.

    3. Correspondence with the Secretary of State: We communicate with the Secretary of State’s office during the entire application process which includes any letters, responses to office inquiries, phone calls, or other replies if necessary.

    4. Certificate of Registration: We review the certificate of registration provided by the Colorado Secretary of State and forward it to you.

    Q

    What Services Are Not Included With The Fee?

    A

    Fees do not include any actions regarding application rejections, resubmission of rejected applications, oppositions to rejections, appeals, infringement actions, judicial action regarding the mark, or renewal applications.

    Q

    Can a Trademark or Service Mark Be Reserved Before It Is Used?

    A

    No. A mark cannot be registered unless and until goods or services identified by the mark have actually been sold or offered in Colorado.

    Q

    What Is A Specimen?

    A

    A specimen is an actual example of the use of the mark in commerce. It is the means by which the public would view your mark and be aware of the specific goods or services offered. Examples of specimens include: stationery, business cards, brochures, and product labels. On the questionnaire, you will be required to upload your business stationery/letterhead with the mark clearly displayed. If you do not currently have business stationery/letterhead you will need to create the document with your word processing software. The stationery/letterhead must be provided in one of the following formats: Word, JPG, GIF, or PNG.

    If you need professional assistance with your logo or stationery before filing, please visit www.level2d.com. Level 2 Design™ is a full service web and print design company with a wealth of experience with creating trademark logos. Level 2 Design™ can help you put your best foot forward and help your business gain the most exposure possible.

    Q

    How Many Classes of Registration Does My Application Include?

    A

    One application should be filed for each class of goods or services associated with the mark. For example, a mark for a new sports drink could be registered in class 32 (Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages) and also in class 25 (clothing and footwear) if the mark was going to be placed on t-shirts. However, 2 separate applications would need to be filed, one for each class of registration.

    Q

    Does Registration of a Mark Prevent Others From Registering A Similar Mark In Other States?

    A

    No. Registration of a mark with the Secretary of State only applies to the State of Colorado. There is no cross-referencing between states or between state and federal registrations.

    Q

    Can RockyMountainStartUp™.com Guarantee the Successful Registration of My Mark?

    A

    RockyMountainStartUp™.com makes no guarantees regarding the success of our efforts to achieve registration of a state trademark or service mark. However, we will use our best efforts to achieve successful registration of your mark. The decision to register a mark is made at the discretion of the Colorado Secretary of State, and we have no control over such decisions. However, registrations are rarely rejected.