Intellectual Property Articles

Trademarks 101

May 04, 2009

What is a Trademark?
A trademark can be a distinctive word, phrase, logo, slogan, company name, Internet domain name, package design, or a part of the product itself. Basically, anything that is used to distinguish a company's product or service can serve as a trademark or "service mark" for services. Trademarks can be a company's most valuable asset because they serve to distinguish the company's goods or services and set them apart from the competition.

How is a Trademark Different from a Trade Name?
A trademark is a source-identifier and can be used to identify only one company for a particular type of goods or services. A trade name is a business name that a company uses for legal purposes. Registering a trade name does NOT provide any trademark rights or give you the right to prevent others from using the same name.

First User Owns the Mark
In the United States, ownership of a trademark is determined by first use of the mark, not by first registration. Trademarks do not have to be registered to be protected. However, registering a trademark with the U.S. Patent and Trademark Office gives the registrant the benefit of the presumption of first use and provides priority throughout the United States for the goods or services specified in the registration application. After five consecutive years of use, the mark becomes "incontestable," meaning that other companies cannot attack the validity and protectability of the mark except on very narrow grounds. Unlike patents, which have a limited life span of 20 years, trademarks last forever so long as they are continually and properly used by the trademark owner. Therefore it is vital that a trademark is actually, properly, and continually used and protected by its owner to maintain its validity.

Trademarks Not Yet in Use
It is possible to acquire rights to a trademark that has not yet been used commercially. The U.S. system provides for filing an "Intent to Use" application, allowing the registering company to reserve a trademark for future use. Registration will not occur until the mark is in actual use, but the "Intent to Use" filing date will stand as its first use date for the purpose of priority over other users.

When Should You Protect Your Trademark?
The ideal time to select and protect a trademark is when you initially form your business. Reserving a corporate name with the Secretary of State does not provide trademark protection, nor does it ensure that the use of that business name won't infringe another company's trademark rights. If you don't act to protect a word, logo, or symbol and decide later to use it as a trademark or service mark, you run the risk of being unable to prevent others from using the same mark - or worse yet - of having to stop using the mark because somebody else has already used it and/or registered it first.

Trademark Search and Analysis
Before you begin using a new business name, trademark, service mark, or domain name, it is essential to conduct a thorough trademark search to ensure that no one has previously used the name or a similar one on similar goods. A public records check including a search of the TTB registry, and a search of the world wide web, are useful in finding other users who may have priority. If a mark appears to be available after a screening search, a thorough trademark clearing search should be performed to include federally registered marks, pending federal applications, canceled and abandoned marks, state registrations, and a complete common law search for uses of the same or similar marks. A proper trademark clearing search avoids wasting time and money trying to register a mark that is already in use or claimed via an intent to use application.

What kinds of marks can be registered?
The trademark examiner will refuse to register marks that are "confusingly similar" to marks already registered in the USPTO, or for which applications to register have already been filed, even if the application was filed on an intent to use basis, if the goods are similar. Marks that are descriptive of the product or its attributes or its functions may also be refused registration. For wines, any word that is a geographic location is suspect and may not be registrable.
Clearing prospective trademarks requires judgment and expertise. An experienced trademark attorney can assist you with the entire search process and provide valuable advice and guidance in analyzing the results.

For further information, please call Cyrus Wadia or Vijay Toke of Cooper, White & Cooper's intellectual property practice group.

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