By Aaron Larson
- What Is a Trademark
- Trademark or Copyright?
- What Is an Acceptable Trademark
- Trade Dress
- Establishing a Trademark
- Searching Trademarks
- Applying for a Registered Trademark
- Providing Notice of your Trademark
- Trademark Infringement
Everybody in the modern world is familiar with trademarks. Most "brand name" items are trademarked, from "Starbucks" coffee to "Coca Cola" to "Colgate" toothpaste. When businesses decide to develop a brand for their goods or services, they often seek the protection of trademarks and service marks in order to protect their brands from being exploited by their competitors.
A trademark may be a word, phrase, symbol or design, or combination thereof, which identifies and distinguishes the source of the goods or services of one party from those available from others. Trademarks serve to differentiate the trademark holder's products and services from those offered by competitors. United States law defined a trademark as:
any word, name, symbol, or device, or any combination thereof [used by a person] to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
A service mark is generally treated in the same manner as a trademark, with the exception that it applies to services instead of to goods. For the purposes of this article, unless a specific distinction is made, all references to trademarks are made in a broad sense so as to encompass both trademarks and service marks.
Please note that there is a difference between a trade name and a trademark. A general business name that is not applied to any actual goods is a trade name. A trademark is the name which is actually applied to goods.
Some people are perplexed by the difference between trademarks and copyrights, and when to seek one as opposed to the other.
A copyright protects your original expression of ideas, whereas a trademark identifies the goods or services of one person or company from those produced by others. While you would seek a copyright for a book, play, musical coposition or artistic work, you would seek a trademark for your brand name, logo, or slogan. When associated with particular goods or services, trademark may be available for a word, phrase, symbol, or even a color that would not be deemed a sufficiently unique expression for copyright protection.
Also, a valid trademark may be periodically renewed on an indefinite basis, whereas a copyright will ultimately expire.
Unlike copyrights, which are available only for unique expressions of ideas, trademarks do not necessarily have to reflect similar originality. The key for a trademark is whether they differentiate particular goods or services from those offered by competitors. You cannot obtain a copyright for the word "Thunderbird", but Ford is able to maintain a trademark on that word in association with a specific model of automobile it markets under that name. Similarly, the Chrysler "diamond star" emblem might not be sufficiently original to gain copyright protection, but is is protected as a trademark in association with Chrysler automobiles. Under some circumstances, even the color of an item may be subject to trademark, as demonstrated by the trademark held by Owens-Corning for pink fiberglass insulation. A slogan or phrase may be subject to trademark protection if it is used to create a public association between a particular product with a particular manufacturer.
A trademark will not be granted for word or term that does not distinguish goods or services from those offered by competitors. Please note that a mark that may seem superficially nondistinctive may be eligible for protection through the acquisition of a secondary meaning - that is, a prolonged, exclusive use of the mark such that it comes to indicate the origin of the goods at issue. Geographic terms (such as "Hershey", a town in Pennsylvania) will not ordinarily be subject to trademark unless a secondary meaning has developed. Words regarded as "merely descriptive" are not eligible for trademark protection.
Once a particular word or phrase falls into common use in association with a particular good or service, it may not be trademarked. Similarly, when a trademark becomes the generic term for a particular good or service, it may lose its viability as a defensible trademark. Some manufacturers, including Xerox and Kleenex, are engaged in a constant effort to protect their trademarks from becoming generic. Some former trademarks which have lost this battle include Aspirin, Thermos, Escalator, and Nylon.
Companies may seek protection for the manner in which they design or package their products. To the extent that package design departs from being utilitarian, and assumes elements uniquely associated with a particular product, the design may be subject to trademark protection as "trade dress". The famous Coca Cola bottle design is an example of "trade dress", as is the design on the back of "Magic: The Gathering" cards - a design presented and protected to protect the market for the cards by making it difficult for third parties to sell cards which could be mixed in with a card set.
Trademarks can arise as the result of common law, or through statutory provisions.
Common Law Trademarks: At common law, a trademark is obtained by adopting and using the trademark in association with goods or services. The mark must be placed in actual use before protection is available. Once the mark becomes associated in the mind of the public with the particular good or service, the common law trademark is established. Ordinarily, the geographic scope of the common law trademark is limited to the area of use.
Registered Trademarks: Under modern statutory law, it is possible to register a trademark by filing a formal trademark application with a government agency. Upon the acceptance of the application and registration of the trademark, certain legal protections are ordinarily extended throughout the region regulated by the government trademark office. Under most circumstances, it is possible to apply for a trademark based upon a bona fide intention to use the mark in commerce, even if no actual use has yet been made. Where a trademark is already in actual use, the application for a trademark will be accompanied by examples of that use.
Before applying for a trademark, it makes sense to search existing trademarks to see if your proposed mark will be in conflict with one that is already in use. Please note that no trademark search will be perfect, and it is possible that a very diligent search will not reveal a conflicting prior mark. Also, there may be common law trademarks or prior uses which are not reflected in any database of trademarks, and thus it may not be sufficient to limit your search to databases of trademarks.
The government office which regulates trademarks (such as the United States Patent and Trademark Office - USPTO) will offer application forms and regulations, which detail the type of information that must be provided in association with a trademark application. The application will typically include the legal name and address of the person or entity which will own the trademark, a complete description of the goods and services with which the mark is used or will be used, the date the mark was first used, and the name and capacity of the person who signs the application. The application is submitted along with a filing fee and, if the mark is already in use, with actual examples of how the mark is being used by the applicant.
It is common for an application to be rejected upon first submission, and for there to be a subsequent exchange of amendments and rejections with the trademark office. Most acceptable trademarks are registered after a first or second revision of the application.
After a trademark receives preliminary approval by the trademark office, it is published in a gazette, and is made publicly available. For a period of time following publication, any interested party who believes that the new trademark will infringe upon their intellectual property rights may make a filing in opposition ot the trademark. If no objection is received within that time period, the trademark will receive final approval and a Certificate of Registration will be issued. Note that if the application reflects intent to use as opposed to actual use, no registration will be issued until actual use is documented to and accepted by the trademark office.
These processes and procedures will vary depending upon whether you are obtaining a state or federal trademark, or if you are applying for a trademark in a foreign nation.
In order to provide notice of your ownership of a trademark, after a trademark has been formally registered, the trademark holder may utilize the symbol ® to reflect the formal registration. Prior to that time, the trademark should be designated "TM" (for "trademark") or "SM" (for "service mark").
A trademark may be regarded as infringed if the trademark holder establishes that the mark of another person or entity:
The mark of the infringing person or entity creates a likelihood of confusion in the mind of a purchaser, as a result of the use of the identical or similar mark in connection with its goods or services;
The person alleging infringement has the exclusive right to use the mark in association with the goods or services at issue in a particular geographic or trading area;
The person alleging infringement engaged in prior and continuous use of the mark; and
The mark is valid.
It is not necessary that a trademark be registered in order to commence litigation for infringement. However, a properly registered federal trademark is presumed to be valid.
If a trademark violation is established in court, the court may issue an order enjoining the infringing party from engaging in any further conduct which would be likely to cause confusion with the valid trademark. The owner of the valid trademark may also be able to recover money damages associated with the improper use of the mark. Finally, a court may also award to the trademark owner the profits obtained by the infringing party through its improper use of the mark.
Copyright © 2003-2011 Aaron Larson. All rights reserved. No portion of this article may be reproduced without the express written permission of the copyright holder. If you believe you may lawfully use a quotation, excerpt or paraphrase of this article under the Fair Use exception to copyright law, except as otherwise authorized by the author of the article, you must cite this article as a source for your work and include a link back to the original article from any online materials that incorporate or are derived from the content of this article.