What Are Trademarks?

While trademarks, patents and copyrights are all forms of intellectual property, they are quite different from each other. The Constitution specifies that patents and copyrights will be exclusively handled at the Federal level. Trademarks and trademark law exist at the state and Federal levels, as well as in common law, making trademark law a varied and constantly changing landscape.

A trademark is a word, logo, symbol, package design, color, smell, sound or just about anything else used to identify the source of a particular product or service in the marketplace. Trademark rights may continue indefinitely provided the mark isn't abandoned and/or doesn't become a generic term. Trademarks protect consumers from confusion by indicating the source of goods or services. Trademarks allow consumers to select products or service they prefer and avoid other products and services.

The term "trademark" is usually used to refer to both trademarks and service marks. Trademarks are used in connection with goods while service marks are used in connection with services. There are three other types of marks that are registered with the USPTO using a similar process but have specific uses and requirements.

1. A certification mark is used to certify the goods and services meet certain standards. Many other countries recognize and protect certification marks.

2. A collective membership mark indicates that the user of the mark is a member of a particular organization.

3. A collective mark is used by members of the group to indicate the source of the goods or services. Many other countries recognize and protect collective marks.

Trademarks are different from trade dress, which is the packaging or design of a product. Trade dress may function as a trademark, provided it is perceived by consumers indicating the source of the product, such as Coca-Cola's distinctive bottle shape. Trademarks are also different from trade names. Although many companies use trade names as their marks, trade names are corporate or business names. Trade names are nouns and are used in the same manner as proper names for humans, including in a possessive form.

Proper Care and Use

Like any other valuable asset, trademarks need to properly maintained and used. The International Trademark Association (INTA) suggests an "ACID" test of proper trademark use:

1. Adjective trademarks are always adjectives, not nouns or verbs. A mark should always be used as an adjective with the generic term for the product or service. A mark is a company brand name, not a product or service itself. Marks should not be used as plurals or in the possessive form, unless the mark itself is plural or possessive.

2. Consistent: A trademark shook be used consistently by its owner. Frequently trademarks are presented in all caps or italics to make the word stand apart from the test. Consistency in use emphasizes the special nature of the term.

3. Identification or Status: The system of marking a trademark to indicate it is claimed as a trademarks or services mark, and whether or not it is registered is somewhat consistent internationally. SM (service mark) and TM (Trademark) have no legal significance but are used in most countries to indicate the mark they are associated with is being claimed as a mark. The ® symbol indicates that you have federally registered your trademark. The ® symbol can only be used with current registered marks and only in connection with the goods and services covered by the registration. Most countries have also adopted the ® symbol to identify a registered trademark or service mark. Note that TM can be used on a registered mark but ® cannot be used on anything but a registered mark. You may have to change the identification of a mark (for example from ® to TM) based on the country of the intended website, literature, etc. Other forms of marking trademarks include "Registered in the U.S. Patent and Trademark Office", "Reg. U.S. Pat. & Tm. Off." "Marca Registrada" or "MR" (Spanish), and "Marque Déposée," "Marque de Commerce," "MD," "MC," (French). Marking requirements vary by country but generally should be in the language where the goods are sold or services advertised.

It's generally not required to mark a trademark with ®, TM or SM (or other variations) every time it is used. However, if there is any doubt as to how often to mark a trademark, err on the side of "over-marking." It's much easier to remove symbols in a later version than to reclaim rights lost.

4. Distinctive Trademarks are a special item, sometimes the most valuable asset a company owns. Consider the role of the mark COCA-COLA in the business of the Coca-Cola Company or any of its subsidiaries. The use of the trademark should emphasize this distinctive status, as outlined above

Types of Trademarks

Choosing a trademark is often not straightforward. There are a number of factors to consider, such as strength of the mark. Sometimes what seems like a perfect fit to you may be fraught with problems from the perspective of an outsider. It makes sense to select a trademark attorney early in the process to help in the selection from a legal stand point. Someone else may have rights to the mark you'd like to use, so a search before filing is recommended. Searches range from basic to extensive and may involve proprietary databases. The value in a search however, is in analyzing it and identifying the pitfalls and potholes. Paying for a search and review of a search report is far cheaper than later needing to change your mark, website, literature, etc. and identity of your product if a problem, such a challenge a challenge by the owner of a registered mark later arises. Note that not knowing someone else had rights in a mark is generally not a defense to infringement.

Trademarks are often grouped into 4 categories:

1. Fanciful or coined marks are invented words that have nothing to do with the product and services. Fanciful or coined marks usually have the broadest protection. A great example is XEROX for copiers.

2. Arbitrary marks are words that have a meaning but not a meaning connected to the goods or services, such as APPLE for computers.

3. Suggestive marks hint at what the covered goods or services might be but don't describe the goods or services, such as AIRBUS for airplanes.

4. Descriptive marks cannot be registered in most marks unless the mark has acquired distinctiveness as to the goods or services covered, such as RED ROOF INN. Surnames, such as FORD, are also included in this category.

Terms that are suggestive or descriptive can be harder to protect as marks and it may be difficult to enforce your mark against competitors. Also, in other countries, it may be even more difficult to protect a descriptive mark.

Federal Registration

Federal Registration is not required. Rights in the United States are established by using a mark in commerce. We recommend filing a Federal registration because Federal registration brings the following benefits:

1. Public notice of your claim of ownership of the mark;

2. A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide with the goods or services listed in the registration;
3. The ability to file a lawsuit concerning the mark in federal court (This is a last resort usually, after sending cease and desist letters and similar actions, but it is a very useful "big stick" to have);
4. The use of the U.S. registration as a basis to obtain registration in foreign countries; and
5. The ability to record the U.S. registration with the U.S. Customs for help stopping imports of infringing goods.

After a trademark application claiming use in commerce is filed, an examiner in the trademark office examines the application and may raise questions about it. Once the trademark examiner is satisfied that the trademark application meets the appropriate requirements for registration, the trademark application is typically published by the trademark office. Other parties who believe they might be damaged by the registration of the mark will have a limited time after publication to oppose the application. If no opposition is filed in this time period, the registration is issued. The total time for an application to be processed may be anywhere from almost a year to several years.

There are three different types of applications to submit for a trademark registration with the USPTO:

1. Use-Based applications are for marks already in use

2. Intent to Use Use-Based applications are for applicants with the genuine intention to use a mark on goods or services, but have not yet done so. Federal registration cannot actually be issued until a mark is used, so the applicant must send the USPTO a verified date of first use.

3. Foreign-Based applications can be used by foreign applicants who have filed an application or already obtained registration in a foreign country.

A trademark registration can remain valid forever, provided that the registration is periodically renewed. In the U.S., proof of use must be filed between the 5 ^th and 6 ^th years. A renewal must be filed by the 10 ^th year and every 10 ^th year after that.

You may receive letters requesting fees for trademark-related services, such as monitoring and document filing. These companies aren't related to the USPTO. If you have any questions, contact us. We could paper our offices with the examples we've seen.

International trademarks

Trademark registration rights do not normally cross country borders. However, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.

Depending on the country, trademark rights are typically established either through use or registration. In countries where rights are only established by registration, the first to register has superior rights and those who are second to file, even if the owner of the mark in other countries, often have little recourse. In countries where common law rights are established by use, rights for registration are usually more comprehensive, as in the U.S.

Ownership of a trademark is transferred by assignment. In many countries, the goodwill of the business associated with the trademark must also explicitly be transferred. Goodwill is the reputation of the company resulting from the associations between a company and its brands. The formal requirements associated with an assignment vary by country.

Usually, an application to register a trademark is made to the national trademark office in the country or region where the applicant wishes to protect the mark. Rules and requirements vary by country. In some jurisdictions, you may be asked to provide proof the mark is being used. Most countries, unlike to U.S., do not require a mark be in use in commerce before it is registered.

It is also possible to file a single international trademark application to obtain registrations in multiple countries. Three of the common methods are Community Trademark (CTM) (Most of Europe) administered by the Office for Harmonization in the Internal Market ("OHIM"), the Madrid Agreement and the Madrid Protocol. If you are based in the U.S., you cannot use the Madrid Agreement. There are over 80 countries that can be designated in a Madrid Protocol application, mainly Asia and Europe.

You can file a trademark application in another country at any time. If you file within six months of filing in the U.S., you may be able claim priority to a U.S. application. Generally, it is best to file as early as possible, before plans to use the mark in that country are announced, to avoid poaching by competitors or opportunists. There have been multiple circumstances where a Multinational corporation has been forced to buy a registration for one of its worldwide marks in a certain country, because someone unrelated filed for that mark in that country first.

Domestic Trademarks

Trademarks and trademark registrations are also available at the state level. Generally, there is no need to seek state registration of a trademark. State Trademarks are often less expensive to obtain but also offer protection limited to the borders of the state. In Rhode Island, this is likely a concern more that perhaps in Montana. State laws also address counterfeiting and unfair business practices, both of which can involve trademarks. It is worth noting that franchising and licensing are controlled by state law, not federal law.

Can You Lose Rights to a Trademark?

The most common way to lose rights in a mark is to stop using it with no intention to use it again. This is called "abandonment." However, there are also ways in which trademark rights may be unintentionally lost. It is possible to lose rights in a mark by licensing the mark to others without controlling the nature and quality of the goods or services the licensee offers under the mark, also known as "naked licensing."

Genericide is not as horrifying as genocide to a trademark lawyer or trademark owner but it bears a certain resemblance. You are likely familiar with the terms Elevator, Kerosene, Corn Flakes, Yo-Yo, Escalator and Cellophane. Each of these terms was a trademark of a company. Now they are common product names due to misuse of the marks and have no trademark rights in the U.S. Whether a mark is generic may vary by country because of differences in usage requirements.

You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting an attorney specializing in trademark law. Local bar associations and phone directories usually have attorney listings broken down by specialties. Time can be of the essence.

Call us. Howard IP Law Group, P.C. can help you protect the marks and trade dress valuable to your company, and identify if the marks you are currently using are valid. We can work through the facts and questions with you and point out pitfalls, saving you time, money and headaches. Together we can craft an approach tailored to your situation and plans.

Please note that the content of this page should only be used as a general reference, and is not a substitute for legal advice. It is recommended that you seek the assistance of legal counsel.