Trademark

There are two primary types of marks that can be registered with the United States Patent and Trademark Office: (1) trademarks and (2) servicemarks. A trademark is a word, name, symbol, or device, which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.

Trademark rights can be used to prevent others from using a confusingly similar mark, but cannot be used to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the United States Patent and Trademark Office.

A trademark distinguishes the products of one source from those of other sources, ensures that all products bearing the trademark come from the same source, ensures that all products bearing the trademark are of the same quality and is useful in advertising, selling and increasing product distribution. The policies of consumer protection, property rights, economic efficiency and universal concepts of justice underscore the law of trademarks.

From an economic perspective, a trademark allows a purchaser to identify products that have been satisfactory in the past and reject products that have failed to give satisfaction. Accordingly, a trademark encourages the production of quality products and reduces the possibility of customers making repeatedly bad purchasing decisions. Commerce is a function of trademarks. People throughout the world purchase what they have come to prefer, and use trademarks to locate their preferences.

Trademarks not only reflect the quality of products and services but also provide shortcuts for the consumer who can rely on marks as a substitute for testing each particular product. Therefore, trademark law is founded on your right to protect and profit from your goodwill or quality. Others may not, whether innocently or intentionally, employ trademarks that are likely to confuse or deceive customers into buying something they did not want.

Finally, everyone is free to choose any distinctive mark to identify their products and/or services provided that it is not confusingly similar to a mark used by others for similar products and/or services.

A trademark can be anything that is capable of functioning as a mark and, more particularly, anything that is capable of distinguishing your goods and services from those of others.

A trademark can be any of the following:

• Word
• Symbol
• Word/symbol combination
• Phrase
• Phrase/symbol combination
• Sound
• Smell
• Shape of an article of manufacture
• Color
• Packaging design
• Anything that is capable of designating the source or origin of goods and/or services.

Getting a trademark in the United States can be acquired by (1) using a mark in commerce, or (2) filing a federal trademark registration application with the United States Patent and Trademark Office (USPTO).

If you adopt a mark and begin using it in commerce in connection with goods or service, you have what is called a common law trademark. A common law trademark is a mark that is used in commerce but is not registered with the USPTO.

If you have chosen a mark but are not using it in commerce, you have the option of filing a federal trademark registration application with the USPTO. At the moment an application for federal registration of a trademark that is not in use in commerce is filed with the USPTO, rights to the trademark are immediately assigned to the applicant.

Whether you have a common law trademark or are considering filing a federal trademark registration application with the USPTO, it is important to understand that federal registration of a trademark with the USPTO gives an applicant significant benefits. For instance, a federally registered trademark 1) is presumed valid, 2) is presumed to be owned by the registrant, 3) can eventually become incontestable, 4) invokes the jurisdiction of federal courts, 5) can be used for obtaining trademark registrations in foreign countries, and 6) may be filed with the United States Customs Service to prevent the importation of infringing foreign goods.

Determining the availability and register ability of a trademark before using a trademark in commerce and before filing a trademark registration application with the United States Patent and Trademark Office is, in our opinion, a prudent and necessary step in the proper acquisition and eventual enforceability of a trademark. A trademark search clears potential marks for use or registration, reveals state and unregistered common law trademarks in addition to pending and registered federal trademarks, supports trademark litigation involving third-party usage and provides a meaningful determination of the potential strength of a mark.

A trademark must be used properly to identify and distinguish the products of one source from those of other sources, and to remain the exclusive property of the owner. The rights acquired by federal registration must be maintained through proper and continuous use of the trademark in commerce. On the other hand, widespread misuse of a trademark can, and normally does, make it difficult to enforce the exclusive rights to use the mark.

To protect a trademark, several important guidelines should be followed when using the trademark in advertising literature, displays and signs, product packaging, labels, business documents, and correspondence. The following are general guidelines:

• Use a trademark as an adjective followed by the generic name of the goods or services. A trademark is not a noun.
• Do not use a trademark in the plural or possessive form.
• Do not use a trademark as a verb. Trademarks are adjectives, and should never be used as verbs.
• Use a trademark consistently, as each deviation may create a new, different trademark.
• Use a trademark distinctively.
• Use a proper notice of trademark. Identify the trademark as registered or unregistered " ® " for a federally registered mark.
• TM for an unregistered trademark.
• SM or TM for an unregistered servicemark.
• Use the trademark continuously and notoriously, and do not abandon the mark.
• Make sure others use the mark as an adjective and only as an adjective.
• Prevent others from using and registering confusingly similar trademarks.