Trademark Articles

• Trademark Basics
• Types of Trademarks FAQ
• Qualifying for Trademark Protection FAQ
• Enforcing Your Trademark Rights

Trademark Basics

Considering A Trademark

You have developed a new product and you want to select a trademark under which you can sell the product. A trademark is a brand or name which identifies the source or origin of goods or services and usually is associated with good will which already exists or is expected to be developed when the trademark is used with the product or service.

A trademark is a proper adjective not a noun. Consider BAND-AID bandages and CURAD bandages; the word bandages is the noun and the other word is the adjective, a modifier that indicates source of origin of the bandages. Since a trademark is an adjective, it is not a "thing," and, therefore, a trademark cannot own or possess something else. Wrongful use of a trademark can dilute the trademark and can lead to complete loss of trademark rights, as was the case for former trademarks ASPIRIN, ZIPPER, and others.

The trademark you select may be (a) arbitrary, (b) suggestive, or (c) descriptive. An arbitrary trademark is unrelated to the goods; it does not describe the goods, a characteristic of the goods, or some geographical relation of the goods. A suggestive trademark suggests the goods or a characteristic of the goods; an example is HALO for shampoo-it suggests brightness, for example. A descriptive trademark describes a characteristic of the goods; an example might be TRAVELFAST for travel agency services.

Usually a descriptive trademark is easiest to advertise and is the fastest to acquire recognition; a suggestive trademark less so; and an arbitrary trademark least so. However, the strength and scope of a trademark usually is inversely related to the ease of advertising and acquiring recognition. For example, the trademark KODAK did not have a meaning prior to its use in the photography field. It was a new word with no prior meaning; it is a strong trademark that is recognized worldwide. In contrast, the descriptive trademark TRAVELFAST probably would be relatively weak, even to the extent that other travel agencies may write in literature that people who use their services are able to "travel" quite "fast" to the intended destination.

Selecting a Trademark

The primary test for determining whether a proposed trademark would conflict with an existing trademark is based on likelihood of confusion. More particularly, would an ordinary consumer seeing or seeking to purchase your product and a prior product, which are offered under respective trademarks be likely to be confused as to the source or origin of the respective products? If affirmative, then absent extenuating circumstances, there probably would be a conflict. Consideration is given to whether there are any identical or similar trademarks for identical or similar goods; and if there are several similar or identical differently owned trademarks, do they compel each to be relatively limited to the narrow scope of the goods for which they are registered?

There are several different ways to perform a trademark search. One should firstly, perform a preliminary search in the free Federal trademarks database of the U.S. Patent and Trademark Office. One can also do a more extensive search using the Dialog database of Federal and State trademarks. Services like Thomson & Thomson of Boston can perform a full trademark search. A full trademark search includes the Federal and State trademarks databases I can search on-line, and also includes a number of common law trademarks and trade names databases that cannot be searched online. In a full search, the searcher also can search the federal and state trademarks databases for homonyms and/or synonyms, which I cannot do economically. Although a full search is not a guarantee of availability, it is the best way we have available to determine the availability of a proposed trademark.

It is still possible that the owner of a trademark found in the search or of one not found in the search may assert a claim for an infringement, seeking injunctive relief and/or monetary damages. However, in our experience, it is unusual to encounter such a conflict after having had a full search made and not finding what appears to be any conflicting trademark in the search results.

Adopting a Trademark

You apply the trademark to your goods or advertise your trademark in connection with your services. You should print the trademark on packaging, labels and/or tags that are applied to or fastened to the package or to the goods themselves. You may also print, emboss, mold, paint, etc., the trademark directly to the goods. In other words, the trademark must be applied to the goods. For both service marks and trademarks, the mark should be used may be on a signs at a store that offers services or goods and in advertisements that advertises the services or goods offered under the trademark. Other types of trademark use may also be possible. The trademark should be prominently shown.

It often is advisable to identify an unregistered trademark by the symbol "™" or an unregistered service mark with the symbol "^SM", e.g., SWEETIE PIE™ Cakes, or SPARKLE^SM Window Cleaning Service. After a trademark has been registered, it is appropriate and advisable to use the registered trademark symbol with the trademark, such as XEROX® Copier. The registered trademark symbol should not be used unless the trademark already has been registered.

Trademark Registration

There are advantages to registering a trademark with the U.S. Patent and Trademark Office (USPTO). Several of these advantages include presumption of ownership and right to use the trademark; enforcement rights, namely the right to litigate trademark infringement issues in Federal court and certain damage rights under Federal law; incontestability of a trademark after it has been registered and in continuous use for more than five years, provided an affidavit/declaration requesting incontestability is timely filed, (an incontestable trademark registration usually cannot be revoked absent a fraud issue); notice advantages (the registered mark can be found on the Principal or Supplemental Register); and priority rights. It usually is advantageous to apply to register a trademark as soon as a decision has been made to adopt it to obtain priority over other trademarks.

An application for Federal trademark registration can be filed based on actual use of the trademark in interstate commerce. It can also be filed based on bona fide intent to use the trademark in interstate commerce even though the trademark has not yet been used. In the latter case, the registration process cannot be completed until the trademark is used and specimens evidencing use are filed with the USPTO. Exemplary specimens would be packaging on which the trademark is printed, labels that are applied to the goods, etc.; exemplary specimens for service marks would be a photograph of a sign showing the trademark in front of a store, an advertising brochure, a newspaper or magazine advertisement, etc.

Federal trademark rights are national in scope. For business reasons, it might be desirable to obtain a regional Community Trademark Mark (CTM) to protect the Trademark in the countries included in the European Community or to obtain a trademark in other foreign countries of interest. United States companies contemplating foreign business are advised to protect the right to use the trademark in the foreign countries of interest by filing in each foreign country (or in the CTM), preferably within six months of the U.S. Trademark filing to obtain the benefit of the United States Trademark filing date.

Trademark Application Prosecution Procedure

After the trademark application has been filed, it will be assigned to a Trademark Examining Attorney at the USPTO. The Trademark Examining Attorney will review the application to determine whether any formal revisions have to be made. For example, the Examining Attorney may require a more specific identification of the goods/services statement in the application. The Examining Attorney also will review other trademark registrations and pending applications for trademark registration to determine whether there is any conflict between your trademark and preexisting marks. If there is a conflict, the Examining Attorney will advise you. The test to determine whether there is a conflict is the "likelihood of confusion" test; namely, would a user of your goods/services be likely to be confused between your goods/services and those offered by another who use the same or similar trademark.

If the Examining Attorney refuses registration based on such a conflict, you have the opportunity to respond to the refusal by arguing reasons why your use of your trademark would not result in a "likelihood of confusion".

If the application is approved for registration, the USPTO will publish the trademark for opposition. Interested third parties may, within 30 days immediately following the publication date, oppose issuance of a registration, i.e., grounds of conflict with the opposer's trademark. The 30 day period can be extended by the third party upon a request filed with the USPTO.

If no opposition is filed, the USPTO will issue a Federal trademark registration certificate.

The usual time frame for completing the registration process is approximately 12 to 18 months, depending on the backlog of the Trademark Examining Attorney to whom the application is assigned for examination.

I try to keep my clients closely informed of all issues and activity pertaining to their trademark application. I do so by sending copies of all correspondence received from the U.S. Patent and Trademark Office and the Trademark Examining Attorney. I also forward copies of all correspondence sent to the U.S. Patent and Trademark Office on your behalf.

Post Trademark Registration

To keep a Federal trademark registration in force an Affidavit/Declaration of Use under Section 8 of the Trademark Act must be filed within the time period between the 5th and 6th anniversaries following the issue date of the Federal trademark registration (the registration date). If such use has been continuous and exclusive, you can also apply at the same time for the registration to become incontestable under Section 15 of the Trademark Act. On most occasions, we prepare a joint Affidavit/Declaration for both Section 8 (use) and Section 15 (incontestability) for our clients. However, if a trademark has not been in continuous exclusive use then we would prepare only the Section 8 Affidavit/Declaration.

The term of a trademark registration under the current law is ten (10) years. However, a trademark registration can be renewed at the end of each ten year term for an additional ten year term, provided the trademark is still in use.

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Types of Trademarks FAQ

Trademarks, service marks, certification marks, collective marks, trade dress — learn the difference, as well as when use of an existing trademark is acceptable.

What's Below:

What is a trademark or service mark?

What is trade dress?

When can a trademark owner stop someone from using the trademark?

What is a trademark or service mark?

A trademark is a distinctive word, phrase, logo, domain name, graphic symbol, slogan, or other device that is used to identify the source of a product and to distinguish a manufacturer's or merchant's products from others. Some examples are Nike for sports apparel, Gatorade for beverages, and Microsoft for software.

A service mark does the same thing as a trademark, but while trademarks promote products, service marks promote services and events. Some familiar service marks are: Google (online searching services), Netflix (video rental service), and the FedEx logo (delivery services).

In order to be eligible for trademark protection, a word or phrase must be "distinctive" — unique enough to help customers recognize a particular product in the marketplace — rather than generic, like "The Coffee House." To determine whether a potential business name or product name is trademarkable, and how to trademark it, see Trademark: Legal Care for Your Business & Product Name, by Attorneys Stephen Elias and Richard Stim (Nolo), or the Qualifying for Trademark Protection FAQ.

What is trade dress?

In addition to a label, logo, or other identifying symbol, a product may come to be known by its distinctive packaging — for example, the blue and yellow packaging of the Advil pain reliever box. Similarly, a service may become known by its distinctive decor or shape — for example, the yellow arches that symbolize McDonald's franchises.

Collectively, these types of identifying features are commonly termed "trade dress." Because trade dress often serves the same function as a trademark or service mark — the identification of goods and services in the marketplace — trade dress can be protected under the federal trademark laws and, in some cases, registered as a trademark or service mark with the U.S. Patent and Trademark Office (USPTO).

When can a trademark owner stop someone from using the trademark?

Consumers often make their purchasing choices on the basis of recognizable trademarks. For this reason, the main thrust of trademark law is to make sure that trademarks don't overlap in a manner that causes customers to become confused about the source of a product.

If two similar trademarks are being used by companies that provide different products or services, there may not be a trademark conflict. This is especially true if the two businesses serve only local markets and are hundreds of miles apart.

However, in the case of trademarks that have become famous — for example, McDonald's — the courts are willing to grant broader protection and prohibit almost all use of the trademark (or anything close to it) by anyone other than the famous mark's owner.

For more information on how to prevent others from using a trademark, see Enforcing Your Trademark Rights.

© 2009 Nolo

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Qualifying for Trademark Protection FAQ

What makes a business or product name eligible for trademark protection.

What's Below:

What types of trademarks or service marks are entitled to legal protection?

Are Internet domain names covered by trademark law?

Can a business's trade name be protected as a trademark?

Is state or federal law used to settle trademark disputes?

What types of trademarks or service marks are entitled to legal protection?

As a general rule, trademark law gives legal protection to names, logos, and other marketing devices that are distinctive. These distinctive trademarks are sometimes referred to as "strong" trademarks. Strong trademarks come in two forms: They may be "born strong" because they are creative or out of the ordinary, such as Yahoo, Exxon, or Kodak (also known as "inherently distinctive" marks). Trademarks may also become strong because they become well known to the public through their use over time or because of a marketing blitz.

Trademarks that merely describe some feature or quality of the goods or that are based on someone's name or a geographic term are usually considered to be "weak," and thus unprotectible under trademark law.

However, once the trademark owner can demonstrate substantial sales, advertising, or other public awareness of a weak trademark (known as "secondary meaning"), the trademark will be considered distinctive and can be registered with the United States Patent and Trademark Office (USPTO). Examples of weak marks that have acquired secondary meaning include Peet's Coffee, Newman's Own Salad Dressing, Bank of America, and Vision Center eyeglass stores.

For more information about qualifying for and applying for federal trademark registration, see Trademark: Legal Care for Your Business & Product Name, by Attorney Stephen Elias (Nolo) or the Filing a Federal Trademark Application FAQ.

If you're ready to apply for trademark registration, Nolo can file a trademark application on your behalf. Nolo's online interactive program gathers all the information needed to create your trademark filing, with practical help at each step. When the filing is complete, Nolo will send you a summary and confirmation of the filing with the USPTO, along with three important contracts that will help you protect your trademark, and a guide to maintaining your trademark rights. For more information or to get started now, see Nolo's Online Trademark Application.

Are Internet domain names covered by trademark law?

The short answer is yes. Most people are familiar with website names like www.yahoo.com or www.amazon.com. The words between "www." and the .com are typically used to identify the business that owns the website or a well-known product or service that is featured on the site. Frequently, this identifier is an abbreviation of the company or product name.

The U.S. Patent and Trademark Office allows these identifiers to be registered as trademarks as long as they are being used in connection with a site that sells goods or services. And the courts offer these domain names the same protection as other types of trademark.

Can a business's trade name be protected as a trademark?

The name that a business uses to identify itself is called a "trade name." This is the name the business uses on its invoices, letterhead, and signage. Technically, a trade name is not considered a trademark or entitled to protection under trademark laws unless it actually adorns a product or service.

If a business does use its name to identify a product or service produced by the business, the name will then be considered a trademark or service mark and be entitled to protection (if it is distinctive enough). For instance, Apple Computer Corporation uses the trade name Apple as a trademark on its line of computer products.

A trade name that is not used on a product or service may be given some protection under state and local laws (through corporate, LLC, or fictitious business name registration) or be protected against a confusing use by a competing business under federal and state unfair competition laws.

For information on choosing a name for your business rather than product or service names, see the Naming Your Business section of Nolo's website.

Is state or federal law used to settle trademark disputes?

A number of legal principles used to protect owners against improper use of their trademarks derive from federal laws known collectively as the Lanham Act (Title 15 U.S.C. §§1051 to 1127).

In addition, all states have statutes that govern the use and protection of marks within the state's boundaries. In addition to laws that specifically protect trademark owners, states also have laws that protect one business against unfair competition by another business, including the use by one business of a name already used by another business in a context that's likely to confuse customers.

The basic rules for resolving disputes over who is entitled to use a trademark come from decisions by both federal and state courts (called "common law"). These rules usually favor the business that first used a trademark, if another company's use of the same trademark would be likely to cause customer confusion.

© 2009 Nolo

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Enforcing Your Trademark Rights

by Attorney Richard Stim

Prevent trademark infringement of your business name or product name.

As the owner of a trademark, when you can stop others from using your trademark, or a confusingly similar one, depends on such factors as:

• whether the trademark is being used on competing goods or services (goods or services compete if the sale of one is likely to affect the sale of the other)
• whether consumers would likely be confused by the dual use of the trademark, and
• whether the trademark is being used in the same part of the country or is being used on related goods (goods that will likely be noticed by the same customers, even if they don't compete with each other).

Dilution Statutes

In addition, under federal (and some state) laws known as dilution statutes, you may go to court to prevent your trademark from being used by someone else if your mark is famous and the other company's use would dilute the mark's strength — that is, weaken its reputation for quality (called tarnishment) or render it common through overuse in different contexts (called weakening). The key element is that your mark is famous — that is, distinctive and recognizable.

Dilution statutes apply even if there is no way customers would be likely to confuse the source of the goods or services with those sold by the owner of the famous mark. For instance, consumers might not think that Microsoft toilet paper is associated with Microsoft, the software company, but the makers of Microsoft toilet paper could still be forced to choose another name under federal dilution law.

Using a Trademark Actively

A business that claims to own a trademark cannot stop others from using the same or a similar trademark unless it is actively using the trademark.

In trademark law, "using" a trademark means putting it to work in the marketplace to identify goods or services. This doesn't mean that the product or service actually has to be sold, as long as it is legitimately offered to the public under the trademark in question.

For example, Robert creates a website where he offers his new invention — a humane mousetrap — for sale under the trademark "MiceFree". Even if Robert doesn't sell any traps, he is still "using" the trademark as long as "MiceFree" appears on the traps or on tags attached to them and the traps are ready to be shipped when a sale is made.

Similarly, if Kristin, a probate attorney, puts up a website to offer her services under the service mark Probate Queen, her service mark will be in use as long as she is ready to respond to customer requests for her advice.

Reserving a Trademark for Future Use

If you like a certain phrase or logo but you aren't ready to use it, you may be able to reserve it for future use, which keeps someone else from taking it.

You can acquire rights to the trademark by filing an "intent-to-use" (ITU) trademark registration application with the U.S. Patent and Trademark Office (USPTO) as long as someone else hasn't actually started using the trademark. However, even if you file an intent-to-use trademark application, the mark will not actually be registered until it is used in commerce.

The filing date of the ITU application will be considered the date you first use the trademark, as long as you actually use the mark within the required time limits — six months to three years after the USPTO approves the trademark, depending on whether the applicant seeks and pays for extensions of time.

Nolo can file a trademark application on your behalf. For more information or to get started now, see Nolo's Online Trademark Application.

How to Stop Others From Using a Trademark

Typically, you begin by sending a letter, called a "cease and desist letter," to the wrongful ("infringing") user, demanding that it stop using the mark.

If the wrongful user continues to infringe the mark, you can file a lawsuit to stop the improper use. The lawsuit is usually filed in federal court if the mark is used in more than one state or country, and in state court if the dispute is between purely local marks.

In addition to preventing further use of the mark, you can sometimes obtain money damages from the wrongful user.

Damages for Trademark Infringement

If you can prove in federal court that the infringing use is likely to confuse consumers and that the business has suffered economically as a result of the infringement, the infringer may have to pay you money damages based on the loss.

If the court finds that the infringer intentionally copied your trademark, or at least should have known about the existing trademark, the infringer may have to give up the profits it made by using the mark as well as pay other damages, such as punitive damages, fines, or attorney fees.

On the other hand, if your business has not been damaged, a court has discretion to allow the other company to continue to use the trademark under limited circumstances that are designed to avoid consumer confusion.

For more information on trademark infringement and enforcing your rights, get Trademark: Legal Care for Your Business & Product Name, by attorney Stephen Elias (Nolo).

© 2009 Nolo

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