All Questions in Service Marks >> Best Way to File for a Servicemark?

Best Way to File for a Servicemark?

Posted by . updated on 11/11/2009
I just joined a small investment firm and discovered that they have never filed for a trademark on their name (they've been in business over 15 years).

I want to handle this myself rather than hire an attorney (I'm a lawyer but this is not my specialty by any means), but I've got some questions that I'd like to get some feedback on.

Let's say the name of the firm is "Acme," and Acme is a real name (not a made up one like Accenture or something).  My firm has the acme.com domain name and there are no trademarks or servicemarks filed using this name by any other companies that are even remotely in the same business as Acme.

Now, my question is just a practical one.  I've been trying to do some reading on this, but don't see an answer.  Do I need to file for the servicemark on just "Acme" or do I file for our various uses of the name like "Acme Funds" and "Acme Investments?" Or, do I need to file for "Acme," "Acme Funds," and "Acme Investments?"

Thanks so much.
Answers (5)
 
bcapehart
Sparky -

Depending on how the firm has been using the mark, you can file for various marks.  If you have only used the term Acme, then you can only file an application that is based on actual use of the mark for that mark.  If you have used it with other terms, acme funds, you can file for both Acme and Acme Funds.  (You can always file applications based on an intent to use (Section 1(b)), applications for any mark that your firm has a bona fide intent to use)

I hope this helps.
Brent
 
 
sparky76
Thanks.  So, I should file for Acme, Acme Funds and Acme Investments.

One other question:  We also have a tagline that doesn't have our name in it.  Something to the effect of "Helping you make the best investments."  Should we get a copyright on that?  Does it need to be referenced in the servicemark filings?
 
 
JSonnabend
The tagline is a separate service mark.  It almost certainly is not subject to copyright protection.

One other point your last question raises: there is nothing that "needs" to be included in the trademark filing per se, other than the mark you want to register.  The only requirement here is that the mark as registered be a mark you use -- you can't simply pick and choose elements of a unitary mark for registration.  Usually, a tagline and a logo/brand name can be registered separately even if they appear together.

- Jeff
 
 
sparky76
Thanks for the info.

No one else seems to be using our name, which is good.  However, I did a uspto search on our tagline and another firm has it registered (since 1994), although they don't seem to be using it.  At least not on their web site.

That raises some more questions:

-Does that mean we have to stop using the tagline? Or do we only need to stop if they threaten to sue us?  If we do continue to use it, should we start using "SM" with it. Since the other firm isn't using it, is there a way we can lay claim to it by virtue of having used it for several years?

-We really have two taglines.  One is more generic (which is what the other firm has registered) and the other is that same tagline with "The fund that" tacked on to the beginning.  Is it possible to get a trademark on the longer version even though someone else has trademarked the shorter version?

-Can we buy the trademark from the other firm?  Anyone know what the going rate is for something like that?  We are a small firm and the other firm seems to be, too, and as mentioned, doesn't seem to be using the trademark. So it shouldn't be worth a fortune to them.
 
 
bcapehart
Sparky -

You raise a number of issues.  If the tagline is currently registered, you should treat it as being in use until you have proof to the contrary.  You should check to see when they filed their last renewal.  This will give you some idea of when they were last required to provide evidence of use.

As for the more specific tagline, the "The Fund that", the question would be whether that tagline would cause confusion with the registered tagline.

As for purchasing the registration, it is always an option.  You could give them a call and see what happens.  Obviously, by calling they may feel that it is worth more than before you called, thus raising the ante.

This situation may need more attention than this board can provide.  You may consider seeking a tm attorney to help you sort things out.    (Where is Josh when you need a free consultation.....Wink  )

I hope this helps.
Brent
 

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