What's a trademark?
A trademark, whether it is a word, symbol or some combination of words and symbols, identifies goods or services from a specific source, so that a consumer, who naturally assumes a certain consistency to goods or services from the same source, may recall his or her past experience and knowledgeably choose between competing goods or services.
Where did trademark law come from?
Before 1946, trademarks were protected under the common law of unfair competition, with rights accruing to the first party to use a mark. However, common law protection was – and remains -- limited to the type of product or service associated with the mark and the geographic area where the mark was used (with a reasonable "zone of expansion" allowed for growing businesses). Generally, the rule was that the "senior" user of a mark could preserve his rights against the "junior" user. Another way to express this principal is “the first in time gets the territory.”
In 1946 Congress passed The Lanham Act. This created a system for registering trademarks with the United States Patent and Trademark Office (USPTO). Since the passage of the Lanham Act, the mere act of federally registering a trademark gives the trademark or service mark holder an opportunity for federal protection. Moreover, many states have also passed trademark statutes giving added protection. The Lanham Act did not replace common law protection, which still exists; it added to it.
Thus, the owner of a trademark may look to the common law of unfair competition, The Lanham Act and state trademark law to obtain relief for trademark infringement.
Who benefits from trademarks?
Businesses and consumers. Businesses benefit because the trademark allows them to protect the good will they have earned; that is, they can protect the business’ reputation in the hope that the customer will again seek out their goods or services. Consumers benefit because they are better able to identify goods or services which they prefers.
Are there different types of marks?
There are four types of marks:
1. Trademark. This can be any word, name, symbol, or device or any combination, used or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Put simply, a trademark is a brand name. (Note: the terms "mark" and “trademark” are commonly used to refer to both trademarks and service marks.) Moreover, trademark rights may be utilized to prevent others from using a similar mark that may confuse consumers, but not to prevent others from making the same products or from selling the same products or services under a totally different mark.
2. Service mark. This is any name, word, symbol, device or any combination, used (or intended to be used) in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of that service. A service mark is the same as a trademark with the exception that it identifies and distinguishes the source of a service, not a product. (Again, The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks).
3. Collective mark. This can be any trademark or service mark used, or intended to be used, in commerce by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association or other organization. Examples are AFTRA, the AMA or the WGA. A collective mark is only available on the federal level.
4. Certification mark. It can be any name, word, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or the work or labor performed on the goods or services if it was performed by members of a union or other organizations. A certification mark is only available on the federal level.
Why should I federally register my mark?
There are many reasons, including:
1. Registration gives constructive notice to the general public of your claim of ownership of the trademark. This eliminates the so-called "innocent infringer" defense.
2. Registration is prima facie evidence of the validity of the registration of the mark, ownership of the mark and the exclusive right to use the mark in commerce in connection with the goods and services specified in the certificate of registration.
3. Registration starts the clock running. After five years, the mark can then be deemed "incontestable". This limits the ability of others to attack a trademark. Moreover, it makes the mark immune from cancellation and subject to attack only for claims of fraud, genericide or abandonment. (Note: I will define fraud, genericide and abandonment in a later blog posting).
4. Registration allows the owner to bring an action concerning the mark in federal court.
5. Registration allows recovery of profits, damages and costs in a federal court infringement action. Moreover, it allows the possibility of treble damages and attorney’s fees.
6. Registration makes available criminal penalties for a counterfeiting action.
7. In some cases, registration in the United States is a basis to obtain registration in other countries.
8. Registration may be filed with the U.S. Customs Service to prevent the importation of infringing goods from abroad.
So there are at least eight good reasons to register a trademark.
What about TM, SM and ®? Who can use these and why?
Any time someone claims rights in a mark, he can use the "TM" (trademark) or "SM" (service mark) indicator to alert the public to his claim, regardless of whether he has filed an application with the USPTO.
However, one may use the federal registration symbol ® only after the USPTO registers the mark; not while an application is pending. Furthermore, one may use the registration symbol with the mark only on or in connection with the goods and/or services stated in the federal trademark registration.
How do I register my trademark?
Applications may be filed with the USPTO. In order to register a mark, the applicant must file either one of the following two applications:
1. A “Use” application.
This certifies that the owner has used the mark in commerce. Once it is filed, the USPTO examines the mark to determine if it meets statutory requirements. (Note: I will describe these in a later blog posting.) If it does, the application is published in the Official Gazette. This gives notice to the public so that anyone who opposes the application can come forth. However, if no other party successfully opposes the mark, the mark is registered on the Principal Register. If, for some reason, the mark is determined not to be sufficiently distinctive, it is added to the Supplemental Register. (More on that in a later post)
2. An “Intent to use” application. (also known as an "ITU").
For this, the applicant can file an application stating that the applicant has a bona fide intent to use the mark in interstate commerce. The applicant also states how the mark will be used and describes the goods or services it will be used on. Furthermore, the applicant asserts that -- to the applicant's knowledge -- the mark is not being used by some other party.
For “Intent to use” applications the PTO examines the mark in the same manner as with "Use" applications. If the USPTO approves the mark, it publishes it for opposition. If there is no opposition, the USPTO issues a “Notice of Allowance”. The applicant then has six months to either start using the mark in interstate commerce or request a 6-month extension. After the first such extension the applicant can request as many as four more 6-month extensions. During the ITU application period, the application serves as constructive notice of priority of use. If registration is ultimately granted, the USPTO issues a certificate of registration.
Under the Lanham Act, a certificate of registration in the Principal Register is "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.”
If you need representation regarding trademark issues, or wish to register a trademark, call (973) 376-8585.
* Please note, however, that to maintain a mark, supplemental filings must be made with the USPTO. (I can describe those in further blog postings.)