Timothy B. McCormack, attorney at law, writes about: Every attorney with a business client has a client with a potential trademark issue. This article is intended to help unravel some of the myths and complexities of trademark law and practice. Both
A “trademark” or “service mark” can be made up of any word, name, symbol, logo, color, sound, or product shape or any combination of these elements. Typically, a trademark is used to mark goods. Alternatively, a service mark is used when selling services. This article refers to trademarks and service marks synonymously. A trade name, which is similar to a trademark, merely represents the name of a company. Similarly, a domain name is part of a unique address that identifies a particular web site on the Internet. Typically, trademarks trump trade names and domain names and, therefore, registering one’s trade name with the state is not good enough to protect rights in the trademark. The same is true of domain names.
PROTECTING ONE’S MARKS
Generally speaking, trademarks can be protected in four different ways. First, trademarks can be nationally registered through the United States Patent and Trademark Office. Second, trademarks can be registered on a state-by-state basis. Third, trademarks can be protected within specific geographic areas under the common law of particular states. Fourth, trademarks can be protected internationally. As an aside, charitable groups, non-profit corporations, professional and fraternal groups and educational and religious institutions receive the same protection against confusing use of trademarks and corporate names as for profit business organizations.
BENEFITS OF FEDERAL TRADEMARK REGISTRATION
The benefits of federal trademark registration are immense. Some of the advantages are:
1. One registration covers fifty states;
2. One can use the ® symbol with one’s mark upon registration;
3. Once a federal registration is filed any common law rights being developed by competitors are stopped at their current extent;
4. Federal trademark registrations add value to a company’s intangible asset portfolio;
5. Tactical and substantive advantages in domain name disputes are gained;
6. One gets international priority in many foreign countries when filing for additional trademark registrations;
7. Court ordered damages can sometimes be tripled for federally registered trademarks;
8. The federal court system can be used to stop infringement of one’s marks;
9. A federal trademark registration can be entered into evidence in court to prove your trademark is valid and that you own the mark;
10. One gains potential future revenue from trademark licensing;
11. The United States Customs Service can be asked to stop goods marked with infringing trademarks from entering the United States; and,
12. The registered mark will show up prominently in other people’s trademark clearance searches (including the searches conducted by the Patent and Trademark Office)making it less likely that other businesses will chose to use your mark.
IMPORTANCE OF TRADEMARK SEARCHING AND CLEARANCE
Before a company invests substantial money on advertising, business cards, store signs, customer recognition, etc. a comprehensive trademark search should be conducted and reviewed. A comprehensive trademark search will typically examine marks on the Federal Registry, all fifty state trademark registries, common law sources including business records and newspapers, and Internet sources such as domain name registrations. A comprehensive search will look for marks that are exactly the same as the suggested mark as well as “look alike” and “sound alike” marks.
A full trademark search will also consider marks that share common elements with the suggested mark, even if the marks appear quite different. This can be important in some cases. A written opinion interpreting the search results in light of legal trends and case law is also strongly recommended. In some cases, the process of conducting a trademark search and reviewing the results with a knowledgeable attorney results in a business modifying their mark or identity. In these cases, an ounce of prevention is worth a pound of cure. No one wants to face expensive litigation that may result in being forced to change one’s mark, pay damages to the other side, and risk losing one’s customer recognition.
In many cases a full trademark search and written opinion results in specific strategies that help mitigate the risks described above. Often these same strategies help in actually getting one’s trademark registered with the Patent and Trademark Office as well.
CHOOSING A STRONG TRADEMARK
Choosing a strong trademark can be one of the most important decisions that a business owner makes. Sometimes businesses are wed to a particular mark — making
Provided by McCormack Intellectual Property PS and written by Timothy B. McCormack