Trademarks and Service Marks
A trademark is a distinctive mark, word, phrase or symbol that is used by a manufacturer to identify a product in the marketplace and distinguish it from other products. Service marks serve the same purposes as trademarks, but are used to promote services and events.
Trade names are the names used by business to identify themselves; they are sometimes used by businesses to identify their product or service. Trade names can be protected through registration under various state laws that permit filing of fictitious names.
Obtaining a Trademark
There are various laws enacted authorizing the registration of trademarks. To obtain a trademark, the owner must first use it in a commercial context. For the rights of the trademark to be preserved, use of the trademark must be continued.
Anyone interested in registering a trademark or engaging in conduct that may constitute an infringement should conduct a trademark search. A search for conflicting or prior trademarks can be performed through the U.S Patent and Trademark Office’s database at the official Patent Office Website (uspto.gov), and through several of the major Internet search engines. There are several professional search firms that will conduct an exhaustive trademark search for several hundred dollars.
It is generally advisable to register a trademark under federal law (The Federal Trademark Act-also known as the Lanham Act) registration creates a presumption of ownership of the mark. The Patent and Trademark Office requires completion of a form that asks the registrant to describe the mark, indicate when it was first used and provide samples or drawings of the proposed mark. Once the patent and trademark office receives a registration application, it will determine whether it is the same or similar to an existing mark or whether registration is otherwise prohibited.
The patent application/registration forms are available online at http://www.uspto.gov; they can be downloaded or completed online.
Requirements for Federal Registration
Federal registration is restricted to marks on goods sold in interstate commerce, that is, for product products that cross state lines. In order to be registered, the mark must be distinctive. Registration will not be allowed if the mark is immoral or deceptive, contains the United States Flag, consists of a portrait or signature identifying a living individual or a deceased President of the United States or is generic (the proposed trademark merely describes the product). A combination of words can be considered to be distinctive if they have become sufficiently well known and identified with the owner. If the patent and trademark office determines that the mark is eligible for federal registration it will be published in the “Official Gazette” to give notice and allow third parties to object or dispute the proposed registration. Under federal law, the right of a registrant under a trademark becomes incontestable after 5 years of continuous use after the registration.
Notice of Trademark Registration
Notice to the world that a mark has been registered with the U.S. Patent and Trademark Office is indicated by the symbol (r) next to the mark.
Term of Trademark Protection
Registration protects the owner’s rights for an initial term of 10 years provided that an affidavit is filed after 6 years attesting to the fact that the trademark is still in use. Indefinite renewals for additional 10-year periods are provided for in the law.
Each state has a registration process for products that are sold only within the state’s boundaries.
Reservation of a Trademark For Future Use
Anyone desiring to register a trademark can protect against the possibility of someone else registering the same trademark before registration is complete by filing an “intent-to-use” registration application with the Patent and Trademark Office. Intent to Use registration affords protection retroactively to the date the application was filed if the applicant ultimately uses the mark within 6 months (or up to 3 years if an extension is filed).
The owner of a trademark that has been violated or infringed upon can file a lawsuit in the Federal Courts for injunctive relief and for damages, including punitive damages, fines and attorney’s fees.