What is a Trademark?
A trademark is a mark that functions as a commercial identifier. There are two basic types of marks: trademarks and service marks. Trademarks identify the source of goods, while service marks identify the source of services. The rights in a mark are a business asset that can be sold or licensed to others. You can also use the mark to maintain yourself as the exclusive source of a product or service.
Words, symbols, letters, slogans, designs, features of packaging, color combinations, animations and even sounds may be used as trademarks or service marks. Some marks may qualify as a collective mark because they identify membership in an organization or, if they identify goods or services that meet certain quality control standards, as a certification mark.
In the U.S., trademark rights exist on three levels: by federal registration, by state registration, and at common law. As commerce between the various states evolved, the federal system of registration emerged to provide protection for marks in interstate commerce. Federal protection may be available for the name of your product and/or service, a logo or any other mark that identifies you as the source of a product or service. Federal registration rights can be renewed and can last forever.
Common law and state registration rights will be enhanced by the benefits associated with federal registration. State registration systems exist throughout the country to allow the owners of common law marks to register them if they are used within a particular state. Common law marks are unregistered marks that are protected because they have been adopted and used, and the public recognizes the products or services identified by the mark as coming from a particular source.
Marks can become powerful symbols of products and services in the marketplace that help businesses create branding strategies that establish consumer loyalty, deter competition, and make money for the owner of the mark. Whether you are implementing a marketing plan or working to develop one, the success of that plan may ultimately depend on the steps you take now to research and federally register your marks.
Specific benefits of having a federally registered trademark include: constructive notice nationwide of the trademark owner’s claim; evidence of ownership of the trademark; the jurisdiction of federal courts may be invoked for infringement disputes; registration can be used as a basis for obtaining registration in foreign countries; and registration may be filed with the U.S. Customs Service to prevent importation of infringing foreign goods. Trademark registrations may be enrolled in the Amazon Brand Registry and used to take ownership of a domain name from a cybersquatter.
Federal registration will protect your business goodwill in your marks and enable you to maintain an exclusive position in the marketplace for your product or service. You can obtain nationwide priority with your marks and block others from registering confusingly similar ones. You can establish national rights by using and seeking to register a mark, or you can reserve it nationwide by filing a federal application stating that you intend to use the mark.
A trademark must be a distinctive mark. Arbitrary marks are the most distinctive, followed by suggestive marks. Descriptive marks may be registered on the the Supplemental Register and then transferred to the Principal Register after five years of use or other proof of acquired distinctiveness or secondary meaning. Marks on the Supplemental Register do not have all the benefits as those on the Principal Register. Generic marks have no protection.
Consequences of Failing to Search
The single most obvious mistake we have seen over the years is when a mark is selected, adopted, used, and promoted without the benefit of a professional search, resulting in either the receipt of a cease-and-desist letter or notice of an infringement lawsuit filed in court. If it turns out that someone else has rights in your mark, your investment of time and money, as well as the goodwill associated with your mark, can be totally lost. You could be held liable for monetary damages, loss of sales, and legal fees. It is better to check out a mark prior to adoption and use, and avoid the risk that you will lose potential trademark rights.
A professional trademark search is recommended to determine whether your mark is eligible for adoption, use, and federal registration. A trademark attorney’s recommendation based on the results of a trademark search can alert you to whether the use of your mark could infringe upon another party’s federal, state, or common law trademark rights and whether or not you can claim exclusive rights for the use of your mark. If your mark contains both words and a design, it’s wise to conduct searches for both. There is no limit as to how long federal trademark registration rights can last as long as the mark is being used.
When the search indicates that your mark can be registered, you should apply for federal registration as soon as possible. You have two options. You can file a “use-based” application if the mark is currently in use in interstate commerce. Alternately, you can file an “intent-to-use” application if you have not yet used the mark, but intend to do so and wish to reserve it for use in the future. An “intent-to-use” application to obtain trademark protection establishes nationwide priority for a mark from the filing date of the application. To receive a Certificate of Registration, you must demonstrate actual use of the mark to the U.S. Patent & Trademark Office (USPTO). The USPTO produced videos explaining the registration process.
In this current global economy, business owners should consider federal registration rights as well as trademark rights throughout the world.
International Trademark Registration
Protect your mark in today’s global economy by registering your mark abroad. By filing an international applications, you can safeguard your rights overseas, whether you are currently doing business abroad or are planning to in the future. Your United States trademark registration will only protect you against others appropriating your mark within the borders of the United States. Your United States trademark registration will not enable you to prevent others from using your mark outside the United States.
An International (or Madrid) Application is based on the Madrid Protocol, an international treaty administered by the World Intellectual Property Organization (WIPO) and ratified by the U.S. Senate in November 2002. The International Application allows trademark owners to protect their trademarks in over 100 countries and regions that are also Contracting Parties to the Madrid Protocol.
To file an International Application the owner of a mark must have already registered or applied for registration of their mark with the U.S. Trademark Office or another Madrid Protocol Contracting Party IP Office. Additionally, before filing an International Application, a search of WIPO and designated national and regional IP office databases should be conducted to determine if identical or confusingly similar marks exist that could pose challenges to registration. After an International Application is filed, the IP Office of a designated Contracting Party has one year to provisionally refuse an international registration from the date it was notified of the registration by WIPO, and, in certain limited circumstances, Contracting Parties can opt to extend the refusal period to 18 months, or even longer. If notification of a provisional refusal is not received within the applicable time limits, the mark is considered protected in the territory of the designated Contracting Party concerned for all the goods and services for which protection has been requested.
Although more than 95 nations and regions have adopted the Madrid Protocol, there are some significant exceptions: Canada, for example, has not ratified the Protocol. It is both possible and affordable to protect your trademark in countries that do not accept Madrid Applications. We have years of experience facilitating country-by-country trademark registrations and would be happy to discuss the process with you.