Trademarks

• Trademark
• Service Mark
• Copyright
• Patent
• Trade Secret
  

A 'trademark' is a form of intellectual property that can be any word, phrase, symbol or design or any combination of those items used by a person or business to identify goods made, sold or distributed by him/her, and to distinguish them from goods made, sold or distributed by others.

A 'service mark' is a form of intellectual property that can be any word, phrase, symbol or design or any combination of those items used by a person or business in the provision or advertising of his/her services, and to identify and distinguish his/her services from the services provided by others.

A 'copyright' is a form of intellectual property that protects original works of authorship fixed in any tangible medium of expression including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture.

A 'patent' is a form of intellectual property that protects inventions or discoveries.

A trade secret is a form of intellectual property that pertains to manufacturing, industrial and commercial secrets, belonging to and used by one entity, that are not known to its competitors, such as the ingredients in foods or beverages [i.e. Coke or KFC chicken], manufacturing processes, sales methods, distribution methods, consumer profiles, advertising strategies, and lists of suppliers and clients.

A specimen is an actual item used in commerce on goods/products or in the provision or advertisement of services. For goods/products, acceptable specimens include containers, labels, tags, packaging material, and instructional manuals which display the trademark. For services, acceptable specimens include workbooks, manuals, brochures, flyers, magazine and newspaper advertisements, yellow page listings, websites, vehicles, signs, and billboards which display the service mark.

Relative to the registration of trademarks and service marks, a trade name is “any name used by a person to identify his or her business or vocation.” (§ 45 of the Act, (15 U.S.C. §1127))  Therefore, trade names can be the legal names, such as the names of corporations, limited liability corporations, partnerships, associations, government agencies and non-profit organizations.  Trade names also can be “doing business as names (i.e. DBAs), fictitious names or assumed names. If you decide to use a 'DBA', i.e., 'doing business as' name that differs from the legal name of your business, check with the Register of Deeds in the county where your business is located to learn whether you need to register your DBA with their office.

We have the legal authority to register only trademarks and service marks that are being used in North Carolina.

Trademarks and service marks can be registered with the USPTO only if the marks are used in commerce [in association with goods or services] in more than one state.

Patents are registered at the federal level by the United States Patent and Trademark Office in Washington, D.C. No state has the legal authority to register patents. For information on the patent registration process, you can visit the United States Patent and Trademark Office website at https://www.uspto.gov/

Copyrights are registered at the federal level in the United States Copyright Office of the Library of Congress in Washington, D.C.  No state has the legal authority to register copyrights.  For more information on the copyright registration process, visit the Copyright Office website at https://www.copyright.gov/

Trade secrets are protected without having to be registered with a particular government or regulatory agency. While the standards for what constitutes a trade secret varies from country to country, the following general standards exist, which are referred to in Art. 39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement):

' The information must be secret (i.e. it is not generally known among, or readily accessible to, circles that normally deal with the kind of information in question).
' It must have commercial value because it is a secret.
' It must have been subject to reasonable steps by the rightful holder of the information to keep it secret (e.g., through confidentiality agreements). 

Visit the World Intellectual Property Organization's website for more information regarding trade secrets protection at https://www.wipo.int/portal/en/index.html.

No.  Even if you have a logo, design or terms that you use to identify your brand of goods or services, you are not required to register them as a trademark or service mark.

Yes. Ownership of a registered mark in North Carolina provides you the following benefits:

• Notice to the public, including competitors, that you own the mark;
• Your goods or services may be more easily recognizable, which means consumers may be more aware of them, which, obviously, could result in increased sales;
• For legal purposes, the law will assume you own the mark.  This may give you a leg up if you get involved in a lawsuit pertaining to the mark;
• You'll have the exclusive right to use the mark in North Carolina on or in connection with the goods you produce or the services you provide; and
• You'll be able to file a law suit in relation to your mark, particularly if someone infringes [i.e. uses] your mark without your permission.
  

No.  You cannot register a trademark or service mark in North Carolina until you have already used it.  You have to show us that there has been bona fide use of the mark, which means the mark is in use in North Carolina in the normal course of trade/business.  The law doesn’t say how long you have to use your mark before you can register it; but you have to show us that you are using the mark at the time you submit an application to register it.

Your use of a trademark on your goods will qualify as 'bona fide' use if:

• The goods are currently sold or distributed in North Carolina, and you

• Use the mark on your actual products;
• Put the mark on containers or displays for the products;
• Put the mark on tags or labels attached to the products;
• Display the mark in sales catalogs along with the product when products are very large or bulky; and
• Display the mark on a web page with the goods/products and point-of-sale information.

Your use of a service mark will qualify as 'bona fide' use if:

• Your services are currently being provided in North Carolina; or
• Your services are currently being offered and available to be provided in North Carolina, and
• You're using the service mark in the provision, selling or advertising of your services on items such as training manuals, brochures, napkins and menus in restaurants or on signs or marquees on store fronts, restaurants and office buildings, etc.
  

Yes.  Your application for trademark or service mark registration can be rejected if your mark consists of or comprises any of the following:

• Immoral, deceptive or scandalous material;
• Matter which may disparage or falsely suggest a connection with persons living or dead, institutions, beings or national symbols or bring them into contempt or disrepute;
• The flag or coat of arms or other insignia of  the United States, or of any state or municipality or of any foreign nation or any simulation thereof;
• The name, signature or portrait of any living individual, except with his/her written consent;
• A mark which, when applied the goods or services of the applicant, is merely descriptive of them or merely describes one or more of the characteristics;
• A mark which, when applied the goods or services of the applicant is deceptively mis-descriptive of them or falsely describes the nature, function, capacity or characteristics of them;
• A mark which, when applied to the goods or services of the applicant, is primarily geographically descriptive or deceptively mis-descriptive of them;
• A mark which is primarily merely a surname;
• A mark which so resembles a mark already registered in this state or a mark or trade name previously used in this state by another entity and not abandoned by that entity; and
• A mark registered at the federal level that currently is being used in North Carolina if the first use date of the federally registered mark is prior to the date you first used your mark in North Carolina.
  

No, you don't have to use an attorney. If you're comfortable completing the registration application and addressing any questions we may have, you can do it yourself. 
Many people tell us that they're using a trademark attorney because:

• The attorney can give them legal advice about use of their trademark or service mark;
• They are not experienced or comfortable performing the research for same or similar marks and, therefore, want an attorney to perform that task; and
• The attorney has more expertise in completing the application and addressing any legal issues or deficiencies that may be identified with their mark during the examination process.

Although our trademark staff cannot give you legal advice, we can answer questions about your application and the examination and registration process.  You can contact us at 919-814-5400 or email us at [email protected].

Only the owner of a trademark or service mark can register the mark.  You cannot register a mark that you do not own.  The mark owner is the entity that controls:

• The nature and quality of the goods or service for which the mark is used, and
• How the mark is used on the goods or in association with the provision, sale or advertising of the services.
  

No. When you register a mark in our office, your mark will be protected only in North Carolina.  However, if you use your trademark or service mark in another state, you might consider also registering your mark in that state to have protection in that state as well.

If you use your trademark or service mark in more than one state, you might consider also registering your mark at the federal level with the United States Patent and Trademark Office (“USPTO”); if approved for registration, your mark will have national protection.  You might want to consult with an attorney who practices Intellectual Property law to help you decide how you want to proceed.  You can also find information about registering marks with the USPTO on their website at https://www.uspto.gov/.

No.  Just because you apply for a state trademark or service mark doesn't mean you'll get it.  We have to follow the state trademark laws when we review an application and the specimens that are submitted to show how a mark is being used.  While there are numerous and very complex reasons why a mark may be refused registration, the following are the most common reasons:

• You're not using your mark in North Carolina when you submit your application to us;
• Someone else has already registered a mark that is the same or very similar to the mark you want to register;
• The mark is the same or very similar to the trade name of an existing North Carolina business entity;
• Your trademark or service mark describes your goods or services;
• Your trademark or service mark describes or is the name of a geographic location, such as the name of a town, state, river, etc.;
• Your trademark or service mark is someone's last name (i.e. surname); and
• You’ve applied your mark on goods/products made by another business entity, which is called “ornamentation.”
  

Yes, you can apply to register the same mark as a trademark and as a service mark if you use it in association with the production of goods and in the provision or advertisement of services.  However, you cannot apply for both on the same application; only one type of mark can be registered per application, either a trademark or a service mark.

Because only one type of mark, either a trademark or service mark, can be registered per application, only goods OR services can be listed on one application.  If an applicant produces multiple goods and/or provides multiple services, multiple goods or multiple services can be listed on one application only if all of the goods or all of the services fall under the same classification; a separate application will have to be submitted for each classification that differs.  For example:

• If an applicant uses the same trademark in association with the production of clothing and the production of perfume, those goods cannot be listed and registered on the same application because clothing falls under Class Number and Title 25, Clothing and perfume falls under Class Number and Title 003, Cosmetics and Cleaning Preparations.

• If an applicant uses the same service mark in association with providing legal services and website design, those services cannot be listed and registered on the same application because legal services fall under Class Number and Title 45, Personal and web page design falls under Class Number and Title 42, Computer and Scientific. 

This office uses the International Classification of Goods and Services; Class Numbers for goods are 1-34 and Class Numbers for services are 35-45.  You can find the classification for your goods or services as follows:

• Start by accessing the Secretary of State's website at Trademarks. 
• Once you're on the trademarks web page, click on the link entitled 'Classes for Goods'.  You may not see a description of a good/product that is identical to your goods but you likely will see descriptions of goods that are very similar to yours.
• If you provide services, click on the link entitled 'Service Classes'.  You may not see a description of a service that is identical to your service but you likely will see descriptions of services that are very similar to yours.
• Next, click on the 'Search International Classes' link; in the search window, type in a key word(s) associated with your goods or services OR type in a Class Number under which your goods or services fall; you must add two (2) zeros for single digit Class Number and one (1) zero for double digit Class Numbers.
• A more extensive list of goods and/or services will appear.  Scroll through the list until you find your good or service or those that are very similar.
  

A $75.00 non-refundable fee is charged for filing an application.

The registration applicable can be downloaded from the Secretary of State's website as follows:

• Trademarks
• Currently, the registration application cannot be filed online. Download either a pdf or Word version of the 2011 Registration/Renewal Form.  Print a copy of the application and complete it.
  

The registration process could take one (1) to two (2) weeks based on the following:

• The registration application is completed and properly notarized;
• Three (3) specimens are submitted; and
• No deficiencies are identified on the application or specimens.

However, if any deficiencies are identified, you will receive written notification on how to correct the deficiencies.  You will be given three (3) weeks to make corrections and return any required documents or items to us, which could result in your registration being completed within 30 - 45 days.

Yes.  After your mark is registered, in order to maintain your registration, you must do the following:

Affidavit of Use:

• Five (5) years after the initial registration date, you must submit an Affidavit of Use to confirm that you are still using your mark.
• Six (6) months before the 'due date', we will send you a notice and the 5-Year Affidavit of Use form; complete it and have it notarized.
• You must submit one (1) specimen showing use of the mark with the Affidavit of Use.
• There is no charge for submitting the Affidavit of Use.

Renewal:

• 10 years after the initial registration date, you must renew your mark.
• Six (6) months before the 'due date', we will send you a notice to remind you that the renewal of your mark is due.
• You must complete a Trademark Registration and Renewal Application and have it notarized.
• You must submit three (3) specimens showing use of the mark with your Renewal application. The mark displayed on the specimens submitted with the Renewal application must be identical to the mark displayed on the specimens that were submitted with the initial application.
• You must submit a $35.00 filing fee with your Renewal application.
  

Note:  We will mail the notices regarding your 5-Year Affidavit of Use and 10-Year Renewal to the mailing address listed on your initial application. Therefore, immediately notify this office of any changes to your address.

Yes.  You can lease use of your mark to someone else by entering into a Lease Agreement with them.  A Lease Agreement basically states the terms by which you agree to allow them to use your mark. You might want to consult an attorney on creating a Lease Agreement.

Yes.  You can 'assign' your mark to someone else by completing an Assignment document, which legally transfers ownership of your mark to someone else.  You can download an Assignment form from the Secretary of State's website at Trademarks.  You might want to consult an attorney if you have questions or need assistance with assigning your mark to someone else.  There is a $25 fee for filing an Assignment.

Because we are prohibited from registering a new mark that is the same or confusingly similar to an active trademark, service mark or a business entity's trade name, you should perform the following internet searches:

• NC Trademarks Database:You can search our database on the Secretary of State's website.

• Business Registration Division's Database: Access the Secretary of State's Business Registry search.

Possibly.  Because some North Carolina businesses provide goods and/or services in multiple states, some bypass registering their mark in North Carolina and instead register it at the federal level to receive nationwide protection, which includes North Carolina.

Therefore, we check the USPTO's database to determine if a North Carolina business entity owns an 'active' federal mark that is the same or confusingly similar to the mark you want to register.  If the first use date of the federally registered mark is prior to the date you first used your mark in North Carolina, we might refuse registration of your mark or require you to disclaim words or other elements in your mark that might be the same or confusingly similar to the federal mark.

Once registered, a mark is effective for ten (10) years and may be renewed for subsequent ten (10) year terms so long as it continues to be used in North Carolina. However, you will be required to submit the Affidavit of Use five (5) years after the initial registration and throughout the life of the mark.

Yes.  The Secretary of State's Office has sworn law enforcement investigators that handle criminal issues related to trademark or service mark use.  If you have questions regarding trademark or service mark infringement and/or the scope of trademark enforcement services offered by the Agency's investigators, you can contact them at 919-814-5400.  Note, the Trademarks Registration Office is not involved in any law enforcement activities whatsoever and only handle the trademark or service mark registration process.

If you receive a cease and desist letter or order to stop using a mark, we suggest you seek legal counsel from an attorney.  The Trademarks Registration Office cannot give legal advice or provide legal guidance of any kind, including whether or not you should comply with a cease and desist letter or order.  However, a cease and desist letter can be written by anyone, such as the owner of a small business requesting you to stop use of a mark.  However, a cease and desist 'order' usually is issued by a judge or government authority and failure to comply with such an order could have serious legal consequences. 

We can -- and will -- cancel the registration for your mark if:

• You or your assignee requests in writing that we cancel the mark registration;
• You fail to submit a 5-Year Affidavit of Use form or a 10-Year Renewal Application by the designated due date;
• A court orders your mark canceled based on any of the following: That the…
  • Mark has been abandoned;
  • Mark was granted improperly or obtained fraudulently;
  • Registrant was not the actual owner of the mark;
  • Registered mark is or has become the generic name for the goods and services for which it has been registered;
  • Registration was obtained using materially false statements in the mark registration application or finds;
  • Registered mark is so similar to another mark already in use in North Carolina and registered with the U.S. Patent and Trademark Office that it would likely confuse or deceive consumers; and
• A court orders the Secretary of State's Office to cancel your mark registration.
  .

The 'TM' refers to a trademark.  The 'SM' refers to a service mark.  These symbols are used by an entity that claims ownership rights in a trademark or service mark.  However, although use of the “TM” and “SM” symbols is permissible, use of these symbols by a person or business entity does not mean that the mark is registered.  This Office does not use or assign these symbols to trademarks or service marks registered in North Carolina.

The ® symbol indicates that a mark is federally registered with the United States Patent and Trademark Office. It should only be used if the USPTO has approved federal registration of your mark.