TMIN: USPTO and Trademark Basics


Part 1 of Trademark Information Network Series

Published on Dec 09, 2016

This video outlines the differences between trademarks, patents, and copyrights. It provides information about the federal trademark registration process, as well as highlights the rights and protection you gain by federally registering your trademark. The video also features brief interviews with the USPTO's top-level executives.


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TRADEMARK INFORMATION NETWORK
BREAKING NEWS

==================TRANSCRIPT FOLLOWS===================

MARK TRADEMAN, TMIN NEWS ANCHOR:
Hello everyone. And welcome to the Trademark Information Network. I'm Mark Trademan, alongside Sandhya Mahajan and Camille Ki Kwon, two of our investigative reporters, and Grant Gainsworth, our Senior News Analyst.

Here at the network, we are dedicated to bringing you the most up-to-date information that will help you apply to register your trademark and, if successful, keep that registration alive. Hope you'll stay with us throughout the news cycle.

Now, Sandhya, I understand you have a report to start us off. A bit of a coup, I hear?

SANDHYA MAHAJAN, TMIN INVESTIGATIVE REPORTER:
Well, something like that, Mark. One of the first questions that's always asked is, "What exactly is a trademark?" And "How is that different from a patent? Or a copyright?"

To answer that question, I thought we'd go straight to the source. With me, via satellite, is the Undersecretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office, as well as the Deputy Undersecretary and Deputy Director.

Hello to you both and welcome to the program.

MICHELLE K. LEE, DIRECTOR OF THE USPTO:
Thank you, Sandhya.

RUSS SLIFER, DEPUTY DIRECTOR OF THE USPTO:
Happy to be here.

MAHAJAN:
Director, let's begin with you. So, what exactly are patents and trademarks and copyrights?

LEE:
Well, patents, trademarks, and copyrights are all types of intellectual property. They're often confused, but each one protects a distinct property right.

MAHAJAN:
Such as?

LEE:
Patents are technical and scientific; they protect inventions, like machines and ways of manufacturing. Trademarks, on the other hand, are business-oriented and protect brand names, slogans, and logos. Copyrights are often entertainment-oriented and protect artistic works, like books, movies, paintings, and music.

MAHAJAN:
Can you give us an example of the differences between them?

LEE:
Let's say youve invented a new kind of vacuum cleaner. You'd get a patent to protect the invention itself. You'd register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.

MAHAJAN:
Interesting. And you protect all three at the Office?

LEE:
Well, not actually. Although all intellectual property is protected by the Constitution, Congress has determined that our office handles patents and trademarks. Copyrights are registered through the U.S. Copyright Office.

MAHAJAN:
I see. Now, Deputy Director, how do you get a patent or a trademark registration? Do you just fill out a form, pay a fee, and you're all set?

SLIFER:
Well, sometimes applicants wish it was that easy, but the process is actually a bit more complex.

MAHAJAN:
How so?

SLIFER:
Well, the law requires that patent and trademark applications must be examined before they can be approved. On the patent side, for example, an invention must be new, useful, and non-obvious. So, our examiners take the time to make sure each application meets that test.

MAHAJAN:
And what about on the trademark side?

SLIFER:
On the trademark side, the examining attorney makes sure the mark complies with all of the legal requirements for registration of a mark: for example, that the mark isn't descriptive, generic, or likely to cause confusion with other registered marks.

MAHAJAN:
Sounds like that can take some time.

SLIFER:
It does, but the examination process is critical to fostering innovation and competitiveness in the marketplace.

LEE:
Which is part of our mission. Were dedicated to providing timely and high quality examination of patent and trademark applications. So, not only do we grant patents and register trademarks, but our examination process gives a layer of protection to those live trademarks and patented inventions previously registered with us.

SLIFER:
All while providing the best customer service possible.

LEE:
Exactly. You might not always obtain your patent or register your trademark, but our goal is make sure the process is conducted in a courteous and professional manner from beginning to end.

MAHAJAN:
So, no guarantees, huh?

LEE:
Nope. Sorry!

SLIFER:
But, if I could, I think this is an important point. Applying for a patent or a trademark is, actually, a legal proceeding. So, it's understandable that the process can take some time to resolve itself.

LEE:
Very true. And I should also point out that we take that process, and our applicants' experience with it, very seriously. We are constantly working to make the process more efficient and user-friendly so that our applicants can get back to doing what they do best: which is inventing, innovating, and driving our country forward.

MAHAJAN:
Well, I know our viewers will be happy to hear it.

SLIFER:
It's a top priority!

LEE:
No doubt about it.

MAHAJAN:
Thank you both for being with us. Appreciate your time.

LEE:
Anytime, Sandhya.

SLIFER:
My pleasure.

MAHAJAN:
There you have it, Mark. A breakdown of intellectual property from the folks who know it best.

TRADEMAN:
Excellent work, Sandhya. Thanks for that.

Now, here at the Trademark Information Network, our mission is to help you save time and money when applying for your federal trademark registration. So, to that end, and to help us delve a little deeper into what a trademark is and why you would want to protect one, we turn now to this report, filed by Investigative Reporter, Camille Ki Kwon, and our Senior News Analyst, Grant Gainsworth.

GRANT GAINSWORTH: TMIN SENIOR NEWS ANALYST:
Ancient stone seals. Ceramic pots. Clay bricks. Crumbling now, but still forming the solid foundation of modern trademark law.

From the time that humans began to roam the Earth, people have used marks to indicate the maker or producer of goods. Egyptians, Greeks, and Romans, for example, all used marks to indicate who made particular bricks and ceramics. And, in the case of the Romans, who was to blame should the brickwork fail...

CAMILEE KI KWON: INVESTIGATIVE REPORTER:
Though the uses of trademarks, and their complexity and design, have evolved, the central meaning of trademarks has remained the same: trademarks indicate source.

GAINSWORTH:
What does that mean? Well, to answer that, let's take a look at what a trademark is. Essentially, a trademark is any word, letter, number, design, or combination of those, that identifies one party as the source of particular goods and services.

KWON:
Makes sense, right? When you see a logo on a digital camera, a bunch of bananas, or a pair of jeans, you know who made or produced those goods. You use the logo to distinguish the goods you want from the goods made or produced by a competing brand.

GAINSWORTH:
Which explains why trademarks are so important. Over time, trademarks gain reputations. Sometimes good; sometimes bad. But consumers come to expect a certain level of quality based upon that reputation, which then drives their purchasing decisions.

KWON:
So the question then becomes: "How do I get a trademark?" and "How do I protect it?" For answers, I sat down with the USPTO Commissioner for Trademarks.

So, Commissioner, how do you get a trademark?

MARY BONEY DENISON, COMMISSIONER FOR TRADEMARKS:
Great question, Camille. There's a difference between using or "getting" a trademark and owning a federal trademark registration.

KWON:
And what would that be?

DENISON:
Once you have a slogan, a name, or a design, or some combination of those and youre using them, you have common law rights. And you can use TM (TM is for trademark) or SM (SM is for service mark) after the mark, and what that means is, that you are claiming it as your mark.

KWON:
And how does that differ from a federal registration?

DENISON:
Federal registration is obtained after you file an application with us and prove to us that youre using the mark in interstate commerce. And once you get a federal registration, you can use the R with a circle around it and that will tell the world that you have a federal trademark registration.

KWON:
So you're saying a person can actually have and use a trademark without actually registering with the USPTO.

DENISON:
That's correct. You dont have to register. However, if you dont register, you will miss out on some powerful rights and protections.

KWON:
What types of rights and protection are you talking about?

DENISON:
Well, if you just have a common law trademark, you only have protection in the geographical area of use. Whereas, if you get a federal registration, you get nationwide protection and you get exclusive use throughout the United States and its territories.

In addition, theres some other benefits from having a registration. First of all, you can use the U.S. registration as a basis for filing to protect your mark abroad. In addition, if you have counterfeit goods that you suspect are coming into the U.S. from abroad, you can record your trademark and you can prevent those goods from coming into the United States. In addition, it will give you a basis for filing for a trademark infringement claim in federal court.

KWON:
Not to mention the "R in the circle" symbol, right?

DENISON:
That's right. You cant use that unless you have a federal registration.

KWON:
Now, does the USPTO defend and enforce those trademark rights?

DENISON:
No. What we will do is we will cite your registration against later filed applications that we deem to be confusingly similar. But if you need to pursue an infringer, you will have to do that on your own.

KWON:
Good to know. Well, thank you so much, Commissioner, for spending the time to talk with us. I know our viewers really appreciate it.

DENISON:
Thank you very much.

KWON:
So, remember: a trademark can be any word, letter, number, design, or combination of those, that identifies the source of particular goods and services.

GAINSWORTH:
Federal registration of your mark is not required, but it does grant you a powerful set of rights that you can use to protect your mark. Rights that ancient brickmakers in Rome never would have dreamed of...


KWON:
Im Camille Ki Kwon, alongside

GAINSWORTH:
Grant Gainsworth, Trademark Information Network.

TRADEMAN:
Thank you, guys. Fascinating stuff.

And that's about all the time we have for this broadcast, ladies and gentlemen. But don't worry. There are plenty more videos throughout the website, all designed to help you with the registration process: from searching for conflicting marks to filing an application to keeping your registration up to date.

And be sure to check out all the other trademark information found on USPTO.gov. There are Basic Facts about Trademarks, Guides and Manuals, Application Timelines, not to mention electronic resources that will help you search, file, and maintain your valuable trademark registration.

For Sandhya Mahajan, Camille Ki Kwon, and Grant Gainsworth, I'm Mark Trademan, Trademark Information Network. Thanks for joining us.


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