Trademarks

TRADEMARKS

A trademark is a word, symbol, design (logo), combination of letters or numbers, or other device (including a sound or smell!) that identifies and distinguishes the products or services of one source from the products or services of another. In many instances, the term "trademark" is used for a mark applied to products or goods, and of the term "service mark" is used for a mark used with services. Here, we will use the term "trademark" for all marks, regardless of whether they are applied to goods or services.

 

Trademarks Distinguish One Business From Another

Trademarks identify a business to its customers - they represent the "goodwill" of a business. Customers distinguish that business and its goods and services from other businesses on the basis of the trademark.
The owner of a trademark may prevent another business from using a trademark that is likely to cause customers or potential customers to be confused as to the source of the goods or services to which the two marks are applied.

 

Selecting a Trademark

Select a trademark that will allow you to establish a unique identity in the marketplace for your goods and services. Avoid words or symbols that are descriptive or close to descriptive of your product or service. Other businesses with similar products or services will be entitled to use descriptive words to describe their products and services. Therefore, you will have difficulty establishing a strong, unique market presence.

In addition, select a trademark that is quite distinct from those already in use for similar or related goods and services. Do not use a trademark that is likely to leave customers confused about whether your products or services come from another business that is already using a particular trademark.

Likelihood of Confusion

Whether a new mark is likely to be confused with an existing mark is determined by comparing both the marks themselves, and the goods or services to which the marks are applied. Identical marks may appear on vastly different products if customers are not likely to think that those products come from the same source. How similar the marks and the products must be for there to be likelihood confusion will of course depend on the facts of each case.

One important factor in considering likelihood of confusion is the uniqueness of the trademark. The more distinctive the trademark, the broader the scope of protection it will typically be granted. For example, a coined (made-up) word will be given broader protection than a descriptive word. In fact, words or symbols that are "merely descriptive" of the product, the service, or some attribute of the product or service, are generally afforded no trademark protection at all.

In most instances, marks that are spelled differently but sound same are considered identical for trademark purposes. Foreign language translations are also usually considered identical.

The products or services are compared to determine if customers are likely to believe that the products bearing the trademarks come from, or are sponsored by, the same source. If products are closely related, it is more likely that customers will believe the products come from the same source if they have the same or similar trademarks. Marks may be likely to cause confusion even if the products are not competitive.

 

Searching a Trademark

Before you adopt a new trademark for your business or for a particular product or service, search existing trademarks. A search will help ensure that you are not adopting a trademark that may conflict with an existing trademark. Searches can have different levels of thoroughness, depending on the level of certainty you desire, and your budget. You need to remember, however, that even the most thorough search cannot guarantee that there will be no conflicts with other trademarks.

 

Acquiring Trademark Rights

In the United States, you can acquire trademark rights simply by using your trademark on your products or services. You do not have to register your trademark with the government. An unregistered trademark is effective if customers readily identify the trademark as indicating that the goods or services come from a particular source. The unregistered trademark may be enforced in the geographic region in which that recognition is established.

Enforcing your trademark rights against an infringer is simpler if you register your trademark. Also, registration puts your trademark in the databases that others are likely to search before they adopt a new trademark, which may reduce the possibility that they will adopt a confusingly similar trademark.

A federal trademark registration (registration with the United States Trademark Office) gives you the presumptive right to use the trademark throughout the United States. In addition, a federal trademark registration gives you the right to enforce the Trademark against another anywhere in the United States, regardless of whether you have actually used the trademark in that portion of United States, and also to ask United States Customs to exclude from the United States imported products that infringe your trademark.

 

Registering Your Trademark

You may register your trademark in the United States Trademark Office for nationwide protection, provided certain conditions are met. You may also register your trademark in each state in which the trademark is used. You may use the trademark registration symbol ® only if the trademark has been registered with the US Trademark Office. Without a federal registration you should use the trademark symbol ™.

You may file a federal trademark registration application before you actually begin to use the trademark if you have a "bona fide" intent to use the trademark on the goods or services listed in the application. The registration will not issue, however, until you actually begin to use the trademark on those goods or services. Once the registration is issued on an intent to use application, the rights represented by the registration are effective from the date of the original application.

Federal trademark registrations are valid for 10 years. Most state registrations also have 10 year terms. Trademark registrations may be renewed, provided that the mark is still in use at the time of renewal.

 

Using Your Trademark

You can lose your trademark rights if you stop using your trademark, or if your trademark no longer uniquely identifies your goods or services.
Trademark rights may be lost when the trademark becomes generic or merely descriptive of the goods or services. To reduce the possibility that this will happen to your trademark, use your trademark as an adjective with a generic term for your product or service (i.e., Ford car, Kleenex facial tissue, Xerox photocopier). Unless your trademark appears in a unique type style (font), at least the initial letter of the trademark should always be capitalized. You must also monitor the market to ensure that others are not misusing your trademark.

You should also use your trademark consistently. If it includes a special design, that design should not vary from use to use. In addition, if there is a special color included in your trademark, the color should be used consistently. Remember, your trademark is your identity to your customers and your potential customers. Make sure that your customers know what your trademark is, and what it stands for.

 

Trademarks and the Internet

The intersection of trademarks, domain names, and metatags has created enormous confusion. Many issues are still developing, but some are reasonably settled.

Trademarks in "brick and mortar" commerce also are trademarks in e-commerce. Therefore, a web site operator may not use the trademark of another in a domain name or in metatags to confuse potential customers about who sponsors the site. Many courts now also prohibit web site operators from using particularly famous trademarks in metatags to draw search engines to a site, even if once the web surfer arrives at the site, it is clear that the site is not connected with the trademark owner.
Less clear is how the traditional limitations of trademark rights to particular geography and specific products and services will be applied to the global computer network.

 

Trade Names

In certain circumstances, you can get protection for the name of your business even if you do not use the name in a strict trademark sense. This type of protection is called "trade name" protection. Although there is no provision to register such trade names, they may enjoy many of the same protections as unregistered trademarks as they become well-known to potential customers.

 

Trade Dress

You may also be able to protect the general appearance of the packaging for your product, or the decor of your service business. To be protectable, this "trade dress" must distinguish your business and products from those of others. Examples include a combination of colors on the packaging, a particular layout of the package, or the decor of the business establishment (for service businesses such as restaurants). Again, there is no provision for registering trade dress. However, you may still be able to prevent another business from adopting a trade dress that is likely to cause customers become confused with your own distinctive trade dress.

 

Outside the United States

In most countries outside the United States, you can get trademark rights only by registration. In those countries, use of the trademark does not confer trademark rights. Therefore, if you are interested in protecting your trademark rights outside the United States, you must consider registration in the countries in which you are interested in doing business.
In most countries outside the United States, you may register your trademark before you actually begin to use the trademark in that country. However, you generally must begin using the trademark within a certain time from registration (usually three to five years), or risk losing the trademark registration.

In most cases, you must register your trademark with each country individually. There are no "worldwide" trademark registrations. However, it is possible to get a single registration for the entire European community.