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Obtaining A Trademark

By David M. Dingeman, Esq.  Email:

The competition has registered their business name as a service mark to identify themselves as the source of the services provided. There are over 146 U.S. federally registered service marks containing the word "realtor" such as "realtor execs", "webrealtor", "linda clark realtors" and "shorewest realtors". There are over 1900 U.S. federally registered service marks containing the word "mortgage" such as "mortgage management", "ace mortgage", "axa mortgage" and "the mortgage expert".

The term "service mark" is defined as any word, name, symbol, device or any combination, used or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of those services.

Why do so many real estate brokers and mortgage brokers obtain a U.S. federal service mark? Federal service mark registration has many benefits including: 1.) Constructive notice nationwide of the trademark owner's claim; 2.) Evidence of ownership of the trademark; 3.) Jurisdiction of the federal courts may be invoked; and 4.) Registration may be used as a basis for filing in foreign countries. What this means is that once you obtain a federal registration, you are allowed to use the "®" providing notice to everyone that you have registered your name. If someone were to infringe on your mark, you may begin by sending the usual cease and desist letters demanding that they stop using your name. If this does not work, you may then bring the infringer to federal court where the presumption is that the service mark owner has the rights in the name and therefore, has an advantage in proving their case. Acquiring a federal registration also entitles you to attorney's fees should you win your case.

Many individuals have common law rights in their name and therefore use the symbols "TM" or "SM" as a superscript above their name meaning trademark or service mark, respectively. Their rights in these names arise from actual use of the name. Simply having a common law trademark provides some protection in your name but it does not provide the advantage you would have should you obtain a federal registration.

How do you obtain a federal registration on your service mark? Obviously, I'll answer that one should use a trademark attorney. Many individuals attempt to file the application, drawing, specimens, class and description on their own and receive horrific responses, known as Office Actions, from the U.S. Trademark Office rejecting their application. Most attorneys charge reasonable fees and provide the expertise and follow-through to make your application journey a successful one. For more information, please visit my site at