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Frequently Asked Questions about Trademark Protection

Law Offices of Yu & Associates

Question: Ms. Yu, our company is already using a trademark in the US. Do we still need to register it?

Attorney Yu: The US uses the "first to use" rule, but if you want to completely protect the trademark that you're using, you should still register with the US Patent and Trademark Office (USPTO). This way, if someone infringes on your trademark, you can bring suit in Federal court.

Question: Can we use the company's trademark as a logo on business cards and the company website?

Attorney Yu: You can use the company trademark on business cards, letterheads, your website, etc. Usually, the proper use of a commercial trademark is on products or product packaging. If you use your trademark in this way, then you can seek legal remedies if your trademark is infringed.

Question: Is it possible to register a short slogan as a trademark?

Attorney Yu: Absolutely. You can register an advertising slogan as a trademark for your products or services.

Question: In the process of designing our trademark, we discovered that someone has already registered a similar trademark, but it's in another area of business. Can we still register this trademark?

Attorney Yu: You can use and register a trademark that's similar to an existing one, but you must make sure it won't be confused with or dilute the other trademark. As a classic example, the car manufacturer Lexus and the legal research firm LexisNexis have slightly similar names. Similar trademarks can be used on different products by different companies, as long as you can show that the public will be able to tell them apart and will not mix them up.

Question: Do you have to be a US citizen or US company in order to register a trademark in the US?

Attorney Yu: No, there is no such limitation; you do not need to be a US citizen or green card holder to register a trademark in the US.

Question: Once we have registered with the USPTO, will our trademark be protected throughout the US?

Attorney Yu: Yes. Trademarks registered with the USPTO are protected throughout the US.

Question: Our trademark has a special font, and also a picture. The colors are also important -- there's a light-colored design on a dark background. When we register our trademark, do we need to include the colors, picture, etc?

Attorney Yu: Many companies have trademarks which include a special font or picture, but actually the protection for this kind of trademark is very narrow. Other companies could use your trademark word for word, but without the special font or picture, and it might not be considered infringement. Therefore, we usually recommend to our clients to first register their trademark without any special font or picture, because this has a broader scope of protection. This way, if another company uses the same letters or words, even if they add a special font or design, it will still be considered infringement. If necessary, then you can later also register a trademark with a special font or design.

Question: What do the letters "TM" or "SM" mean on a trademark?

Attorney Yu: The "TM" or "SM" that you might see used with trademarks on products or for services represents the person's or company's right to use this trademark. USPTO permits you to use this symbol before your trademark application is approved to show your right to use the mark. It does not indicate that the trademark is registered.

Question: What about the symbol ®?

Attorney Yu: This symbol indicates that the trademark has been successfully registered with the USPTO. The symbol ® can only be used on registered trademarks.

Question: How long does it usually take to register a trademark in the US?

Attorney Yu: Usually it takes close to a year. Of course, it also depends on whether the applicant can immediately provide proof of the trademark's use and whether the USPTO finds the trademark to be confusing with or diluting another trademark. While you are waiting for your trademark registration to be approved, you need to continue to use your trademark in commercial activities, otherwise if another company begins to use the mark, they may be able to oppose your registration, because the US uses the "first to use" rule.

Question: Can another company register the same trademark that we have registered and are currently using? What can we do to prevent them from harming the strength of our trademark?

Attorney Yu: : If they are using the mark and don't know that it was already registered, then they could register the same trademark. However, the trademark registration process includes publication of the mark in the Trademark Official Gazette, at which point, if you feel your trademark has been infringed upon, you can file an opposition to their registration.

Question: We want to register a trademark which has already been registered by another company in China. Fortunately, the other company agreed to let us register the same trademark in the US. In this case, what materials do we need? Do we need proof that the Chinese company gave us permission to use the mark?

Attorney Yu: Even though the trademark has already been registered by another company in China, if they haven't registered in the US, then you may still be able to register the trademark in the US. You do not need the Chinese company's permission to register the trademark in the US, unless your registration date and other legal rights are derived from third party's trademark. After the trademark is registered, then you can use it in the US. US trademark registration only protects your use in the US, however. If your products are to be sold in China, you might infringe on the other company's rights. You should also be sure of the Chinese company's intent to let you register the trademark in the US, otherwise you might meet with opposition during the registration process or an attempt to revoke the trademark later.

Question: Another company is using a trademark that infringes on ours and could be confused with ours. Can you investigate for us and stop them from infringing on our trademark?

Attorney Yu: Of course. One of our attorneys will analyze the case and decide on a strategy, whether to file to have the trademark cancelled, or bring a suit to seek compensation for losses.

Question: Once our trademark is registered, how long will it be protected?

Attorney Yu: Within five to six years of registering your trademark, you will need to file a Declaration of Use with the USPTO, and then again between the ninth and tenth year, and then every ten years thereafter. As long as you file the required documents at the appropriate times, then your trademark will be continually protected.

Question: Does the trademark ever need to be renewed?

Attorney Yu: Yes, between the ninth and tenth years after registration. If you do not file a renewal application within the specified time, you still have a 6 month grace period within which to file.

Question: We are a Chinese company; if we want to register a trademark in the US, do our documents need to be notarized in China? Our trademark is used on food products, furniture and electrical appliances; are there different fees for these products?

Attorney Yu: The documents for a US trademark registration application do not need to be notarized. The fees are the same for all product areas; they do not vary based on the product.

Question: The trademark that we are trying to register in the US has been opposed. What should we do?

Attorney Yu: The opposing party will often demand that you stop using the contested trademark, in order to protect their interests. The fastest and most common method of resolving the dispute is through amicable discussion to reach a settlement. The discussion usually focuses on limited use of the trademark, although you can also bring up paying a fee in return for full use of the trademark. If a settlement cannot be reached, then you will have to proceed to countering the opposition, collecting evidence and defending your case, and perhaps even filing suit to counter the opposition.

The above is a general introduction to immigration policies, and should not be construed as individual legal advice. For specific legal questions, please contact the Law Offices of Yu & Associates. Attorney Xiaohui (Sharon) Yu is a graduate of New York University School of Law, one of the top five law schools in the US, and has practiced law at some of the top firms in the US, UK and China.

Tel: 301-838-8986, Fax: 202-595-1918; E-mail:, Address: 110 N. Washington St., Suite 328E, Rockville, MD 20850. (All rights reserved.)

Ó Yu & Associates LLC, 110 North Washington Street, Suite 328E, Rockville, MD 20850, USA. Tel: 301-838-8986