Trademarks (West's Encyclopedia of American Law)
Distinctive symbols of authenticity through which the products of particular manufacturers or the salable commodities of particular merchants can be distinguished from those of others.
A trademark is a device, word or combination of words, or symbol that indicates the source or ownership of a product or service. A trademark can be a name, such as Adidas, or a symbol, such as McDonald's golden arches, or it can be a combination of the two, such as when the NIKE name is written with the "swoosh" symbol beneath it. In very limited cases, a shape or even a distinctive color can become a trademark.
People rely on trademarks to make informed decisions about the products they buy. A trademark acts as a guarantee of the quality and origin of a particular good. A competing manufacturer may not use another company's trademark. The owner of a trademark may challenge any use of the mark that infringes upon the owner's rights.
The presence of trademark protection for the name or logo of a company or product is often indicated by the small symbol of an R in a circle placed near the trademark. The R means that the mark is a registered trademark and is a warning that the law prevents unauthorized use of it. A party may indicate that it is claiming rights to a particular mark by displaying a TM rather than an R symbol. Marks bearing the...
(The entire section is 3638 words.)
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Trademarks (Encyclopedia of Business and Finance)
Trademarks or marks are words, symbols, designs, combinations of letters or numbers, or other devices that identify and distinguish products and services in the marketplace. When trademarks are presented to the public via advertising, marketing, trade shows, or other means, they become one of a company's most valuable assetsotential customers identify a company by its trademark. Because certain trademarks immediately create an image of quality goods and services to potential buyers, they are valuable assets that should be protected.
When trademarks are registered at the state, federal, or international levels, their owners are provided the maximum legal protection for company names and/or company products. Thus, in creating or selecting company names and trademarks, a major concern is to design names and trademarks that may be registered with U.S. Patent Office. Today, the feasibility of designing names for products and services as well as trademarks for them is not likely because millions of trademarks are already registered.
The creation of trademarks involves the development of symbols or other devices to identify products and services in the marketplace. Guidelines exist for creating trademarks. Individuals who are developing trademarks must avoid generically descriptive and misleading terms as well as foreign translations. As soon as a tentative trademark has been developed, its creators should consult a patent attorney for assistance making it sufficiently distinctive to be registrable.
After the distinctive trademark has been de signed, the creators need to ascertain that it is available for use; that is, it should not be currently used by another company. Thus, a trade mark search is recommended by a company specializing in trade and service mark law. Once the availability of the proposed trademark has been certified, applications and related artwork are filed with the U.S. Patent Office. On receipt of the application, examiners in the Patent Office con duct a search to validate that the proposed trade mark is not confusingly similar to previously registered trademarks and is thus usable. To receive a filing registration date, the owner must provide all of the following: (1) a written application form; (2) a drawing of the mark on a separate piece of paper; (3) the required filing fee; and (4) if the application is filed based on prior use of the mark in commerce, three specimens for each class of goods or services. The specimens must show actual use of the mark with the goods or services. The specimens may be identical or they may be examples of three different uses showing the same mark.
If the Patent Office search does not yield any conflicting trademarks and the proposed trademark is deemed registrable, it is published for opposition in the Patent Office's Official Gazette. Anyone who believes that a company may be damaged by the registration of the proposed trademark has an opportunity to challenge its registration. If no objection to the proposed trademark is filed, then the registration is allowed and issued. Thus, the trademark is distinctive and the may be used after it. Once the trademark has been issued by the Patent Office, its owners need to watch for inappropriate use of it. In addition, trademark owners need to monitor proposed trademark registrations for similar trademarks.
Trademark maintenance involves periodic filing of documents with the Patent Office to keep the registration active. Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is ten years, with ten-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled. A U.S. registration provides protection only in the United States and its territories. The owner of a mark who wishes to protect it in other countries must seek protection in each country separately under the relevant laws. The U.S. Patent Office cannot provide information or advice concerning protection in other countries. Interested parties may inquire directly in the relevant country or its U.S. offices or through an attorney.
Trademarks (Encyclopedia of Small Business)
A trademark is a word, phrase, symbol or designr a combination of words, phrases, symbols, or designsdopted and used by a manufacturer or merchant to identify its goods and distinguish them from those manufactured or sold by its competitors. In recent years, colors (such as John Deere green), sounds (such as the National Broadcasting Company's use of distinctive chimes), and scents have also been registered as trademarks. Service marks, meanwhile, are identical to trademarks except that they identify and distinguish the source of a service rather than a product. The term "trademark," however, is commonly utilized to refer to both trademarks and service marks.
Whereas exclusive rights to other items of intellectual property such as copyrights and patents eventually expire, trademark rights can last indefinitely, provided the owner of the mark continues to use it to identify its goods or services. The initial term for a federal trademark registration is ten years, but the owner has the option to renew for additional ten-year terms. The Patent and Trademark Office (PTO), however, has stipulated that between the fifth and sixth years of the initial registration term, the registrant must file an affidavit confirming the need to keep the registration alive. If no affidavit is filed, the registration is canceled, and other companies can pursue the mark for their own use if they so desire.
OTHER TYPES OF TRADEMARKS
In addition to trademarks and service marks, there are two other kinds of marks that generally fit under the generic "trademark" umbrella: certification marks and collective marks.
CERTIFICATION MARK A certification mark, explained Richard Levy in his Inventor's Desktop Companion, "is a mark used upon or in connection with the products or services of one or more persons other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization." Examples of certification marks include the UL symbol of Underwriters Laboratories (for quality), "Made in the U.S.A." designations (for place of origin), and the Motion Picture Association of America's movie ratings (for service).
COLLECTIVE MARK Collective marks are trademarks or service marks used by members of an association, cooperative, or other group. Organizations as diverse as the National Rifle Association, the Big Ten Athletic Conference, and the Sierra Club all utilize collective marks.
Trademark rights to an identifying word, phrase, symbol, design, sound, or color can be secured either by actually using the mark in commerce or by registering the mark with the Trademark Office, a division of the Patent and Trademark Office (PTO). "Federal registration [with the PTO] is not required to establish rights in a mark, nor is it required to begin use of a mark," noted the PTO in its booklet, Basic Facts About Registering a Trademark. "However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide." In addition, owners of federal registration for a trademark often enjoy an advantage if legal disputes over use of a trademark arise.
THE "RIGHT TO REGISTER" According to the Patent and Trademark Office, the ultimate right to register a trademark generally belongs to the first partyhether it is a small business or a large corporationo use a trademark "in commerce" or file a trademark application with the PTO. ("Commerce" in this situation means commerce regulated by the U.S. Congress, i.e., interstate commerce or commerce between America and another nation; use of a trademark in purely local commerce within a state does not qualify as "use in commerce.")
THE "RIGHT TO USE" As the PTO itself admitted in its Basic Facts About Registering a Trademark, "the right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement." As indicated above, possession of federal registration can be a valuable weapon if a court fight erupts over use of a disputed trademark.
A small business owner who has come up with a trademark that he or she wishes to use may want to conduct a trademark search before going to the trouble and expense of sending an application to the PTO. As Thomas Field remarked in Avoiding Patent, Trademark and Copyright Problems, "one can infringe on another's marks without copying them or even being in direct competition with their owner. All that is necessary is to use the same or a similar mark under circumstances in which consumers may be confused as to the source or sponsorship of the goods or services." A trademark search can uncover whether the mark (or a similar one) has already been registered with the PTO. But even if a search turns up nothing, that does not necessarily mean that the business owner is guaranteed untroubled use of the mark. "In the United States, it is unnecessary for a firm to do more than use a good mark to have trademark rights in its market area," explained Field. "Consequently, a search may not locate all such prior users. Second, people may be able to prevent the use of a potential mark without having used it as a mark themselves; for example, when a trademark can be associated with others in such a way that consumers might presume that some kind of relationship might exist."
APPLICATIONS FOR FEDERAL REGISTRATION
There are two primary ways in which a U.S. applicant can apply to register his or her trademark with the PTO, depending on whether or not the mark has already been used in commerce. An applicant who has already begun using the trademark in commerce may file with the PTO based on that use. This is commonly known as a "Use" application. If an applicant has not yet used the trademark in question in commerce, but has an honest intention to do so, he or she may file an "Intent-to-Use" application with the PTO. A third option, which can only be used by applicants from outside the United States, allows the applicant to file in the United States based on an application or registration made in another country.
Applications for federal registration should include the following:
- PTO Form 1478his application, also known as "Trademark/Service Mark Application, Principal Register, with Declaration," should be carefully completed and fully signed.
- Drawing of the markhis drawing must be included on a separate piece of paper; the specifications for the drawingnd the paper itselfre quite extensive, so make sure that the drawing adheres to all guidelines. If a separate drawing page is not included, then the application will be returned to the applicant without a filing date.
- Filing feeor current information on the application filing fee for trademarks, call the Patent and Trademark Office or consult its Web site ("Intent-to-Use" applications are more expensive). If the full amount of the fee is not included in the application, then the application will not be considered. Fees are not refundable, even in instances where trademark ownership applications are turned down.
- Specimenshese are actual samples of how the mark is actually usedr will be usedn commerce. "If the mark is used on goods," wrote Levy, "examples of acceptable specimens are tags or labels which are attached to the goods, containers for the goods, displays associated with the goods, or photographs of the goods showing use of the mark on the goods themselves If the mark is used for services, examples of acceptable specimens are signs, brochures about the services, advertisements for the services, business cards or stationery showing the mark in connection with the services, or photographs which show the mark as it is used either in the rendering or advertising of the services." Each application must include three specimens, but they do not necessarily have to be of three different uses.
PTO ACCEPTANCE AND REJECTION The federal registration of trademarks is governed by the Trademark Act of 1946 (and amendments thereof), the Trademark Rules, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure. When the PTO receives an application for trademark registration, it checks the application in accordance with the above-mentioned guidelines. First, the Office reviews it to see if it meets the minimum requirements for receiving a filing date. If it meets those requirements, the PTO assigns it a serial number and sends the applicant a notification of receipt. If the minimum requirements are not met, the entire thing (including the filing fee) is returned to the applicant.
Applications that pass this first stage are then reviewed by an examining attorney at the PTO, who determines if there are any reasons why the mark cannot be registered. Levy noted that a mark may be turned down for any of the following reasons:
- The mark too closely resembles a mark already registered in the PTO
- The mark's capacity for causing confusion among relevant consumers with goods or services associated with other parties
- The mark includes a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased president of the United States during the life of his wife, except in instances where the widow has given her written consent to such use
- The mark includes the flag or coat of arms or other insignia of the United States or any of its states or municipalities, or of any foreign nation, or any simulation thereof
- The mark has immoral, deceptive, or scandalous connotations
- The mark disparages or falsely suggests a connection with persons (living or dead), institutions, beliefs, or national symbols
- The mark brings such persons, institutions, beliefs, or national symbols into contempt or disrepute
Objections raised during this stage of the review are sent along to the applicant. Remedies that might make the mark acceptable are sometimes suggested in these letters as well. The application will be deemed abandoned if the applicant does not respond within six months of the mailing date of that letter. In cases in which the applicant's response does not sway the PTO examiner to give approval for the mark, the applicant can turn to the PTO's Trademark Trial and Appeal Board.
"If there are no objections, or if you [the applicant] overcome all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO," wrote Levy. "Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process."
If the application is approved and no opposition is filed, applicants may have a little or a lot to do, depending on their situation. For applicants who filed "Use" applications, most of the work is over. The PTO will register the trademark and issue a registration certificate a few months after the date the mark was published in the Gazette. Applicants who filed based on their intent to use the trademark down the line, though, need to attend to several matters to make sure that their rights do not slip away. In situations where it has approved an "Intent-to-Use" application, the PTO issues a Notice of Allowance approximately 12 weeks after the mark was published. After receiving the Notice, the applicant has six months to either use the trademark in commerce and submit documentation of that use or request a six-month extension. If the documentation of usealled the Statement of Uses filed and approved, then the PTO will issue the registration certificate for the trademark.
Even if the PTO grants an applicant a trademark registration, however, business experts warn that such registration only provides protection to the owner in the United States and its territories. "If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws," warned the PTO in its Basic Facts About Registering a Trademark. "The PTO cannot provide information or advice concerning protection in other countries."
Basic Facts About Registering a Trademark. U.S. Patent and Trademark Office, 1995.
Field, Thomas. Avoiding Patent, Trademark and Copyright Problems. Small Business Administration, 1992.
Levy, Richard C. The Inventor's Desktop Companion. Visible Ink, 1995.
Miller, Arthur R., and Michael H. Davis. Intellectual Property: Patents, Trademarks and Copyright. West/Wadsworth, 2000.
Schoell, William F., and Joseph P. Guiltinan. Marketing: Contemporary Concepts and Practices. Allyn and Bacon, 1992.
SEE ALSO: Brands and Brand Names; Copyrights; Corporate Logos