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 Why You Need Trademarks When you are investing time and money in developing and marketing a product or service, you will want assurance that consumers will easily recognize it as yours. You will hope to built up a reputation and make repeat sales, and it could be disastrous if a competitor were able to put a similar product on sale which could be confused with yours. By using a trademark -- a distinctive sign which identifies your product or service exclusively -- you can build up brand loyalty among customers. Similarly, one who wishes to sell "private label" goods which are made to specification by a variety of different manufacturers may use a mark that identifies the seller as the source of the goods. Definition Of Trademarks A trademark includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or seller to identify the source of the goods or services and distinguish them from those supplied by others. A service mark is a trademark that applies to services. Both are generally referred to as "trademarks" in this guide. Function Of Trademarks The primary function of a trademark is to indicate origin. However,trademarks also serve to guarantee the quality of the goods or services and, through advertising, serve to create and maintain demand. Rights in a trademark are acquired by use or applying for a federal trademark registration before use. Use of the trademark must ultimately occur, and must continue if the rights so acquired are to be preserved.  Choosing A Trademark In choosing a trademark, your aim should be to find a word, symbol or designor a combination of these which is not purely descriptive of the product or service concerned. A descriptive mark -- or a common surname or geographical name -- cannot, as a new mark, be sufficiently distinctive to qualify for registration. It could be used by others and would be difficult to monopolize. You should avoid marks which could be regarded as deceptive, that is to say,those which suggest that the product has some characteristics which it does not, in fact, have. There are already a great number of registered marks so it is not easy to find one that is suitable for your product or service and at the same time free for use and registration. It is advisable to create a number of possible marks and have them searched against marks that are already registered, applied for, or in use. Proper Use Of Trademarks Trademarks must be used properly to maintain the rights you desire. A markthat becomes the generic name of a product is no longer treated as a trademark. Famous examples of lost trademarks are aspirin, nylon, yo-yo and cellophane. Each became part of our language as ordinary definitional words. This problem can be avoided by the following practices: * Use the generic product or service name in association with the mark. Always use the mark as an adjective, and not as a noun. Examples: KODAK film; KELLOGG'S corn flakes; XEROX copiers. * Give your trademark distinctive typographic treatment. At a minimum,capitalize the first letter in it -- or the entire mark. Use bold type, or a print logo if you have one. Be as consistent as possible in presenting your mark to the public. * Label your trademark. From the very beginning and without a registration, you can use a superscript abbreviation (TM for trademarks; SM for service marks) adjacent your mark. After registration in the Patent and Trademark Office, you should utilize the letter R enclosed in a circle. * Consider using the mark for a number of products or services. It will be more likely to be recognized as your identifier, rather then as the name of any one product. It is also much more economical to build legal rights in a single recognizable mark. The goodwill associated with your mark will extend to new products and models as you introduce them to the public. Federal Trademark Registration Registration of a trademark in the Patent and Trademark Office does not in itself create or establish any exclusive rights. It is however recognition by the Government of the right of the owner to use the mark in commerce to distinguish his goods from those of others. In order to be eligible for federal registration, a mark must be in use ininterstate commerce. However, it is no longer necessary to use the mark prior to filing an application to register it before the U.S. Patent and Trademark Office. Anyone can file an application by asserting an intent to use the mark. The application will then be fully examined and ruled upon, but the mark cannot be registered until actual use has occurred. This permits one to obtain a holding of registrability prior to an investment in labels, advertising, etc. Those planning to introduce a new mark should consider prompt filing of an application to register it. State Trademark Registration Trademarks can also be registered in individual states in which they are used. This is normally advisable when only local use of the mark is contemplated since the benefits of state registration are usually more limited than those available from a federal registration. In some instances, proceeding with both avenues of registration is advisable. One using a trademark in the State of Washington should consider obtaining a Washington State registration which now carries presumptive statewide rights and provides notice of rights to all subsequent users in this state. Common Law Trademarks Registration of trademarks is not compulsory. Common law rights actuallybegin when a mark is first used in connection with the goods or services before the public. These trademark rights are enforceable in local courts, but are limited geographically to your actual area of use. Advantages of registrations include establishment of supplemental legal rights in your trademark and constructive notice to all subsequent parties of your claim to ownership. Equally important, it is simpler and therefore less costly to stop a competitor from using a mark which is similar to yours, when you have a registration, rather than trying to rely merely on your common law rights. The very fact that the mark is registered at the federal or state level typically deters others from using the same or a similar mark. Deadlines There is no time limit for applying to register a trademark at either the state or federal levels. However, delay in filing to register a mark can create complications if another party should apply to register a similar mark prior to you. The best practice is to seek advice and file trademark applications promptly. Notice Of Registration A Federal registrant should give notice that his or her mark is registered by displaying with the mark the words "Registered in U.S. Patent and Trademark Office", or "Reg. U.S. Pat. and TM. Off.", or the letter R enclosed with a circle. Use of such notice before the actual issuance of a certificate of registration for the mark is improper, and may be the basis for refusal of registration. Trade And Commercial Names Trademarks differ from trade and commercial names which are used by manufacturers, industrialists, merchants, agriculturalists, and others to identify their businesses, vocations or occupations, or the names or titles lawfully adopted by persons, firms, associations, companies, unions and other organizations. The latter are not subject to registration unless actually used as trademarks. State registration of a corporation name or licensed business name does not confer trademark rights, which only arise as a result of use of a name or word on product labels or in connection with offered services. Registration of trademarks is separate from other business registrations with the Secretary of State in most states. If you conduct business under a name that is not your legal name or the name of a corporation, you are required to register this "assumed business name" in each state in which you do business. Failure to register an assumed business name might affect your right to access the courts in that state to assert your legal rights against others. Trademarks In Foreign Countries Trademark law and protection arise on a national basis. As a rule, registration covers only one country and separate applications have to be made in each country where it is intended to use and protect a mark. Owners of trademarks having business or prospective business in foreign countries who desire to protect their marks in such foreign countries should ascertain the nature of the trademark laws in those countries in order to protect their rights. In many foreign countries a resident there may obtain a registration of a trademark without having actually used it in trade. Such a registration may be used to prevent the importation into that country of goods bearing the mark. To effect registration in many foreign countries, it is essential that registration be effective in the United States. Having secured registration domestically, the owner frequently may secure registration in foreign countries before actually using the mark there. Duration of certificates of registration in foreign countries varies in accordance with the laws of each country. Portions of "A Guide to Trademarks" were excerpted and edited from the following U.S. Government publication: * "General Information Concerning Trademarks" Patent and Trademark Office, U.S. Department of Commerce. © 1992, 1995, 1999, Wells, St. John, Roberts, Gregory & Matkin P.S. Our Practice | About Us | Links | Contact Us | Search | Main |