Trademarks

Related Terms: Brands and Brand Names; Copyrights; Corporate Logos

A trademark is a word, phrase, symbol or design—or a combination of these—adopted and used by a manufacturer or merchant to identify its goods and distinguish them from those manufactured or sold by its competitors. The symbol used to identify a trademarked product are the letters TM presented in upper case, superscript—'„¢. 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 is a mark used in connection with products or services in order to certify the region of origin of those products and services, or to certify some other characteristic of those products and services. Other characteristics may be 1) the origin of the materials used to make a product; 2) the procedures used to assure the quality of the product or service, or 3) the union membership of those involved in the manufacture of a product or service. 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

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 party—whether it is a small business or a large corporation—to 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.

TRADEMARK SEARCHES

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. Infringing on another's marks can often happen unintentionally, without copying the marks outright or even being in direct competition with their owner. All that is necessary is to use the same mark or a similar mark in a way that may cause consumers some confusion 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.

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.

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