Basic Facts About Trademarks
|Prepared By: Melissa C. Marsh, Los Angeles Business Attorney
Written: January 2002
What is a Trademark?
A trademark is a brand name or slogan associated with the sale, or offer to sell, a product. It can be comprised of any word, name, symbol, logo, design, device, phrase, slogan, sound, color, or any combination thereof (collectively referred to as a "Mark") whose primary purpose is to identify a product and distinguish it from the product of another manufacturer or seller.
While a trademark is used to identify and distinguish products or goods, a service mark is used to identify and distinguish services. Like a trademark, a service mark can be any word, name, symbol, logo, design, device, phrase, slogan, sound, or any combination thereof (collectively referred to as a "Mark") whose primary purpose is to identify a service and distinguish it from the services provided by another company. Often times a mark may serve as both a trademark and a service mark.
Copyright, Patent, and Trade Names Are Different.
A trademark is different from a copyright, a patent, and a trade name. A copyright protects original artistic or literary works (a book, poem, screenplay, illustration, sculpture, voice/sound recordings, computer program, etc..). A patent protects an idea or invention and gives the inventor the right to stop others from making, using, or selling the invention for a limited period of time. A trade name is a word or symbol under which a company does business and is used to identify a business, company or occupation. In some cases a trade name can also serve as a trademark or servicemark depending on the context in which it is used. For example, Microsoft is a trade name when it refers to Microsoft Corporation, but also functions as a trademark when it represents a product like Microsoft ® Word.
Establishing Trademark Rights.
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper intent-to-use application to register a mark in the United States Patent and Trademark Office (USPTO). Registration is not required to establish rights in a mark, nor is it required to begin use of a mark.
There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party to use a mark in commerce or file an application in the USPTO has the ultimate right to register that mark.
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 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of the 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.
Who May File A Trademark Application?
A trademark application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark. Foreign applicants (those residing outside the United States) must designate a "domestic representative." A domestic representative is a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." The domestic representative will receive all communications from the USPTO unless the applicant is represented by an attorney in the United States.
We strongly recommend you use an attorney who is familiar with trademark maters to file your application to register a trademark. Although you have access to the trademark forms, and although the forms may appear simple to complete, simple errors can have devastating effects, including significant delays in the time to register the mark, potential cancellation of the mark, and potential abandonment of the mark. This really is not a do-it-yourself project.
Searches For Conflicting Trademarks.
A trademark applicant is not required to conduct a search for conflicting marks before using a trademark, or applying to register a trademark. The most important reason to do a trademark search is to avoid liability from trademark infringement lawsuits. The second most important reason is to identify potential prior users, so you will not have to incur the time and expense associated with changing a name you have invested time and money in at a later date. Third most important reason comes into play if you are planning on registering a mark with a trademark office. If the mark you have attempted to register is the same, or "confusingly similar" to another company's registered trademark for identical or similar goods and/or services, the application will be denied and the registration fees are non-refundable.
Failure to have a proper trademark search conducted before using a name, or filing either an "in-use", or "intent to use", trademark application can have severe consequences. First, if use occurs prior to a proper search being conducted, a trademark owner with prior rights in and to the mark you began using may require you to immediately cease using of the mark, destroy all paper, advertising materials, and products containing the mark, and potentially sue for monetary damages such as lost profits, as well as other statutory damages for Willful Infringement which includes attorneys fees and costs and treble damages. The courts have considered failure to have a search conducted to be a factor in finding "willful infringement". If you are merely filing an "Intent to Use" application, and the use of the mark has not commenced, one may argue that the liability is minimal because without actual use of the mark there are no profits. However, various courts have found such defendants liable for "Willful Infringement" on the ground that they intentionally ignored the advice of counsel who recommended a trademark search be conducted.
Most state trademark registrations are good for 5 to 10 years, at which time they must be renewed. For federal trademarks, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee. Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.
Use of the "TM," "SM" and " ® " Symbols.
You always want to apply the proper notice to your mark. If the mark is registered at the federal level (e.g. you have received a final registration certificate from the USPTO) you may apply the ® symbol, regardless of whether the mark is for goods or services. However do not use the ® symbol if your application is still pending. The federal registration symbol evidenced by the R in a circle should only be used on goods or services that have been formally registered with the United States Patent and Trademark Office. Use of the ® symbol absent a federal registration is considered deceptive and may result in a mark being refused registration at a later date.
Where registration has not been accomplished at the federal level, you should use the TM symbol if the mark is used to identify goods or products, and the SM symbol if the mark is being used to identity services. The TM and SM symbols may even be used if the mark is not registered at the state level.
If you have any questions, or would like the assistance of Melissa C. Marsh, please call 818-849-5206 or Email: Melissa C. Marsh.
California business lawyer, Melissa C. Marsh, is based in Sherman Oaks and West Hollywood, and serves individuals and businesses throughout Los Angeles County, including: West Hollywood, Miracle Mile, Beverly Hills, Century City, Santa Monica, Burbank, North Hollywood, Valley Village, Toluca Lake, Studio City, Sherman Oaks, Van Nuys, Encino, and Woodland Hills.
© 2002 Melissa C. Marsh. All Rights Reserved.