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Trademarks and Service Marks: Frequently Asked Questions


The following information is provided for the convenience of trademark or service mark applicants and is designed to assist an applicant with registration of a mark with the Office of Secretary of State. This office cannot provide legal advice. In particular, if you have questions about the protection of a mark, infringement upon your mark, or the application of the following concepts to your specific situation, please consult an attorney.

 


What is a trademark?

A trademark is any word, name, symbol, device or combination thereof adopted and used by a person or entity to identify goods made or sold and to distinguish them from the goods made or sold by another person. If products or goods are sold, think "trademark." (O.C.G.A. § 10-1-440)

Examples of trademarks are: Coca-Cola (soft drink beverage), Microsoft (computer software) and USA Today (newspaper/publication.)

What is a service mark?

A service mark is the same as a trademark, except that a service mark is used by a person or entity to identify services rendered or offered and to distinguish them from the services rendered or offered by another person. The services must be provided to the public or any party other than the applicant. If services are sold or offered, think "service mark." (O.C.G.A. § 10-1-440)

Examples of service marks are: McDonald's (restaurant services), Wal-Mart (retail business services) and AT&T (telecommunications services.)

What is the filing fee to register, renew, or assign a trademark or service mark?

$15.00. This is an examination fee and is non-refundable. The fee is not refunded.in the event a mark cannot be registered, renewed, or assigned.

Is a "trademark" the same as a "trade name?"

No. A trade name (also known as a “DBA” or “fictitious name”) is a name an owner uses to identify his/her business while a trademark is used to identify a good or service a business provides. Another distinct difference is that trade names are not registered at the state or federal level, but are registered with local government, primarily in the county in which a business operates. (O.C.G.A. § 10-1-490) If a trade name meets the criteria of a trademark or service mark, however, it also might be eligible for registration as such.

Does registration protect my mark?

No. Trademark or service mark protection is acquired via a person or entity’s use of the mark in connection with the sale of goods or services. This protection is automatic under state common-law rights.

What are the benefits of registering a mark?

Primarily, registration of a trademark or service mark provides two things. First, it provides actual public notice. By registering the mark with a central filing agency, the mark is available for public scrutiny. This benefits both the owner, who seeks exclusive use of a mark, and a potential filer who seeks to ensure that his or her mark does not conflict with a mark already in use.

Second, registration of a mark might be used as evidence in the event an infringement action is pursued by the registrant. Consult your legal counsel for more information regarding this matter.

May I file an "intent to use" a mark in Georgia?

No. There is no "intent to use" provision in Georgia’s trademark statute. Thus, the mark must already be in use to be considered for registration; however, there is no minimum time period of use. A trademark is deemed to be used in this state when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto and such goods are sold or otherwise distributed in this state; and a service mark is deemed to be used in this state when it is used to identify the services of one person and to distinguish them from the services of others and such services are sold or otherwise rendered in this state. (O.C.G.A. § 10-1-440)  .

Can I reserve a trademark or service mark before using it?

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

Does registration with your office prevent others from registering a similar mark in other states?

No. Registration of a mark with our office only applies to the state of Georgia. There is no cross-referencing between states, or between federal registrations.

Can I register my mark federally?

Yes. Trademarks can be registered federally in the United States Patent and Trademark Office. You may contact that office at (800) 786-9199.

Does your office search the federal register when checking on the availability of marks?

No. This office does not search the records of federal registrations and cannot guarantee availability of marks.

Can I search federal registrations here in the state of Georgia?

The Price Gilbert Memorial Library at the Georgia Institute of Technology in Atlanta is designated as the Patent and Trademark Depository Library in the State of Georgia. Marks may be searched and other information may be obtained through that facility. The library may be contacted at (404) 894-4508.

Are "copyrights" filed with your office?

No. Copyrights are registered at the federal level with the United States Copyright Office. You may contact that office at (877) 476-0778.

What are "specimens?"

A "specimen" is an actual example of use of the mark in the stream of commerce. It is the means by which a consumer would view your mark and be aware of the specific goods or services offered.

For a trademark, an acceptable specimen would be the actual label, tag, or packaging used on the product which is sold under the mark.

For a service mark, an acceptable specimen would be an advertisement, such as a newspaper ad, brochure, leaflet, flyer, or web page screen shot(s) which shows the mark and denotes the services provided to the public and distinguishes the services from those of another party.

May I submit business cards or stationery as specimens for my service mark?

Only if the stationery or business cards bearing the mark clearly indicate the services. For example, to register "ABC Services" as a service mark, a business card which merely included the words "ABC Services" would likely not be acceptable. If the card also included the words, "home remodeling experts," it might be acceptable in that it depicts the mark but also denotes the type of services rendered under the mark.

How many specimens am I required to submit with the application for a trademark or service mark?

Three.

Do I have to submit three (3) different specimens?

No. Three samples of the same specimen are acceptable. An original should be submitted, but two copies of it may be provided to make a total of three.

How do I find the class number for my good or service?

Please see the list of class numbers. If you would like us to determine the appropriate class for you, leave Item 6 of the application blank and our examiners will fill it in during their review of your application.

How many "classes" per application can I file?

Only one. A mark is often eligible for registration in more than one class. However, a separate application must be filed for each class in which registration of the mark is sought. For example, a mark for a soft drink might be registered in class 45, "soft drinks and carbonated water." But, if the same mark was also placed on sweatshirts, it might also be registered in class 39, "clothing."

What is the effective term of a registration?

Ten (10) years. As long as the mark is still in use in Georgia, it can be renewed for subsequent ten (10) year terms.

How is a mark renewed?

A mark is renewed by submission of a completed renewal application by the registrant during the last 6 months of the 10-year registration period. The renewal fee is $15 and the mark must still be in use at the time of renewal. The Secretary of State will notify the registrant at the last known address six months prior to the mark’s expiration date. 

Can a mark be assigned?

Yes, a mark may be assigned by the registered owner (assignor) to another party (assignee) by submitting a completed Assignment Form with $15 fee payment to the Secretary of State’s office. 

What do the "TM" and "SM" designations mean?

These designations indicate that a person or entity claims rights in a particular trademark or service mark. They do not indicate that the mark has been registered. Even though a mark is not registered, a person or entity claiming ownership may place the "TM" or "SM" designation next to it.

What does the "®" designation mean?

This designation indicates that a mark is federally registered. It should only be used if the United States Patent and Trademark Office has granted registration.


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