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1. What are trademarks and service marks?

A trademark is a distinctive word, phrase, logo or other graphic symbol that’s used to distinguish a manufacturer’s or merchant’s products from anyone else’s. Some examples: Ford cars and trucks, Kellogg’s cornflakes, IBM computers, Microsoft software. In the trademark context, “distinctive” means unique enough to reasonably serve as an identifier of a product in the marketplace.

For all practical purposes, a service mark is the same as a trademark–except that trademarks promote products while service marks promote services. Some familiar service marks: McDonald’s (fast food service), Kinko’s (photocopying service), ACLU (legal service), Blockbusters (video rental service), CBS’s stylized eye in a circle (television network service), the Olympic Games’ multi-colored interlocking circles (international sporting event).

A trademark or service mark can be more than just a brand name or logo. It can also be a shape, letters, numbers, a sound, a smell, a color or any other non-functional but distinctive aspect of a product or service that tends to promote and distinguish it in the marketplace. Titles, character names or other distinctive features of movies, television and radio programs can also serve as trademarks or service marks when used to promote a service or product. Finally, the distinctive packaging of a product is protected under the federal trademark statute (the Lanham Act) as trade dress, although trade dress can’t be placed on the federal trademark register.

2. How do trademarks differ from copyrights?

The copyright laws protect original works of expression, but specifically do not protect names, titles or short phrases. This is where trademark protection comes in. Under state and federal laws, distinctive words, phrases, logos, symbols and slogans can qualify as trademarks or service marks if they are used to identify and distinguish a product or service in the marketplace.

The trademark laws are often used in conjunction with the copyright laws to protect advertising copy. The trademark laws protect the product or service name and any slogans used in the advertising. The copyright laws protect any additional literal expression that the ad contains.

3. Can corporate and business names be protected under trademark laws?

Generally not. Names for businesses are commonly called “trade names.” A business’s trade name is the name it uses on its stock certificates, bank accounts, invoices and letterhead. When used to identify a business in this way–as an entity for non-marketing purposes–the business name is subject to some protection under state and local corporate and ficticious business name registration laws, but it is not considered a trademark (thus is not entitled to protection as such).

If, however, a business name is also used to identify a product or service produced by the business, it may qualify for trademark protection if it is distinctive enough. For instance, Apple Computer Corporation uses the trade name Apple as a trademark on its line of computer products, and Nolo Press, Inc. uses Nolo as a service mark for its online people’s law services.

Although trade names by themselves are considered trademarks, they may be protected under federal and state unfair competition laws if a competing use is likely to lead to customer confusion.

4. What types of trademarks receive protection?

As a general rule, trademark law confers the most legal protection to names, logos and other marketing devices that are distinctive–that is, memorable because they are creative or out of the ordinary (inherently distinctive), or because over time they have become well known to the public.

Trademarks said to be inherently distinctive typically consist of:

  • unique logos or symbols
  • made-up words (“coined marks”), such as Exxon or Kodak
  • words that invoke imaginative images in the context of their usage (“fanciful marks”), such as Double Rainbow ice cream
  • words that are surprising or unexpected in the context of their usage (“arbitrary marks”), such as Time Magazine or Diesel for a bookstore, and
  • words that cleverly connote qualities about the product or service (“suggestive or evocative marks”), such as Slenderella diet food products.

By contrast, trademarks consisting of common or ordinary words are not considered to be inherently distinctive and receive less protection under federal or state laws. Typical examples of common or ordinary words are:

  • people’s names (Pete’s Muffins, Smith Graphics)
  • geographic terms (Northern Dairy, Central Insect Control), and
  • descriptive terms–that is, words that attempt to literally describe the product or some characteristic of the product (Rapid Computers, Clarity Video Monitors, Ice Cold Ice Cream)

As mentioned, it’s possible for ordinary marks to become distinctive because they have developed great public recognition through long use and exposure in the marketplace. A mark that has become protectible through exposure or long use is said to have acquired a “secondary meaning.” Examples of otherwise common marks that have acquired a secondary meaning and are now considered to be distinctive include: Sears (department stores), Ben and Jerry’s (ice cream) and Park’n Fly (airport parking services.)

5. Aren’t there marks that aren’t protected by the trademark laws?

Typically referred to as “generic marks,” these marks are the equivalent of common words used to describe the type of product rather than a brand of the product. For instance, assume that a new cellular telephone manufacturer calls its product “The Cellular.” Because the term “cellular” is the descriptive name for the product itself, it cannot legally be considered a trademark or service mark. However, if the term “cellular” were used on a facial creme, it would be considered suggestive, and therefore distinctive, in that context.

Some marks that start out distinctive become generic over time, as the public comes to associate the mark with the product itself. When this happens, the mark loses protection as a distinctive trademark. Aspirin, escalator, and cellophane are all examples of distinctive marks that lost protection by becoming generic. The Xerox mark was in grave danger of losing protection because of the common use of the term as a noun (a xerox) and a verb (to xerox something). To prevent this from happening, Xerox launched an expensive campaign urging the public to use “Xerox” as a proper noun (Xerox brand photocopiers).

6. How is trademark ownership determined?

As a general rule, a trademark is owned by the business that is first to use it in a commercial context–that is, the first to attach the mark to a product or use the mark when marketing a product or service. Once a trademark is owned by virtue of this first use, the owner may be able to prevent others from using that (or a similar) trademark for their goods and services. Whether this is so depends on such factors as:

  • whether the trademark is being used on competing goods or services (goods or services compete if the sale of one is likely to preclude the sale of the other)
  • whether consumers would likely be confused by the dual use of the trademark, and
  • whether the trademark is being used in the same part of the country or is being distributed through the same channels.

In addition, under a number of state laws known as anti-dilution statutes, a trademark owner may prevent a mark from being used if the mark is well known and the later use would dilute the mark’s strength–impair its reputation for quality or render it common through overuse in different contexts (even if it is unlikely that any customers would be confused by the second use).

Acquiring ownership of a mark by being the first to use it is not the only way to own a trademark. It is also possible to acquire ownership by filing an “intent-to-use” (ITU) trademark registration application with the U.S. Patent and Trademark Office. The filing date of this application will be considered the date of first use of the mark if the applicant later actually puts the mark into use within the required time limits (between six months and three years, depending on whether extensions are sought and paid for).

7. How do trademarks qualify for federal registration?

Registering a trademark with the the U.S. Patent and Trademark Office (PTO) makes it easier for the owner to protect the trademark against would-be copiers, and puts the rest of the country on notice that the trademark is already taken.

To register a trademark with the PTO, the mark’s owner first must put it into use “in commerce that Congress may regulate.” This means the mark must be used on a product or service that crosses state, national or territorial lines or that affects commerce crossing such lines–such as would be the case with a catalog business or a restaurant or motel that caters to interstate or international customers. Even if the owner files an intent-to-use (ITU) trademark application, the mark will not actually be registered until it is used in commerce (as defined above).

Once the PTO receives a trademark registration application, it determines the answers to these questions:

  • Is the trademark the same as or similar to an existing mark used on similar or related goods or services?
  • Is the trademark on the list of prohibited or reserved names?
  • Is the trademark generic–that is, does the mark describe the product itself rather than its source?

If the PTO answers all of these questions in the negative, it will publish the trademark in the Official Gazette (a publication of the U.S. Patent and Trademark Office) as being a candidate for registration. Existing trademark owners may object to the registration by filing an opposition. If this occurs, the PTO will schedule a hearing to resolve the dispute. Even if existing owners don’t challenge the registration of the trademark at this stage, they may later attack the registration in court if they believe the registered mark infringes a mark they already own.

8. What does trademark registration accomplish?

If there is no opposition, and use in commerce has been established, the PTO will place the mark on the list of trademarks known as the Principal Register if the mark is considered distinctive (either inherently or because it has acquired secondary meaning). Probably the most important benefit of placing a trademark on the Principal Register is that anybody who later initiates use of the same or a confusingly similar trademark will be presumed by the courts to be a “wilfull infringer” and therefore liable for large money damages. However, it is still possible to obtain basic protection from the federal courts for a trademark without registering it. (See Question 9: How Are Trademark Owners Protected?)

If a trademark consists of common or ordinary terms, it may be placed on a different list of trademarks known as the Supplemental Register. Placement of a trademark on the Supplemental Register produces significantly fewer benefits than those offered by the Principal Register, but still provides notice of ownership. Also, if the trademark remains on the Supplemental Register for five years–that is, the registration isn’t cancelled for some reason–and also remains in use during that time, it may then be placed on the Principal Register under the secondary meaning rule (secondary meaning will be presumed).

9. How are trademark owners protected?

Whether or not a trademark is federally registered, its owner may go to court to prevent someone else from using it or a confusingly similar mark. To win, the owner must prove that the imitation will likely confuse consumers. If the owner can prove that it suffered or that the competitor gained economically as a result of the improper use of the trademark, the competitor may have to pay the owner damages based on the profit or loss.

If the court finds the competitor intentionally copied the owner’s trademark, the infringer may have to pay other damages, such as punitive damages, fines or attorney fees. On the other hand, if the trademark’s owner has not been damaged, a court has discretion to allow the competitor to also use the trademark under very limited circumstances designed to avoid the possibility of consumer confusion.

10. Do I have a right to use my name on my business even if someone else is already using it on a similar business?

Yes and no. A mark that is primarily a surname (last name) does not qualify for protection under the trademark provisions of the Lanham Act unless it becomes well known as a mark through advertising or long use–that is, until it acquires a secondary meaning. A trademark is “primarily a surname” if the public would recognize it first as a surname, or if it consists of a surname and other material that is not registerable.

If a surname acquires a secondary meaning, it is off-limits for all uses that might cause customer confusion, whether or not the name is registered. Sears, McDonald’s, Hyatt, Champion, Howard Johnsons and Calvin Klein are just a few of the hundreds of surnames that have become effective marks over time.

Under the laws of many states, a person or business who tries to capitalize on his or her own name to take advantage of an identical famous name being used as a trademark may be forced, under the state’s anti-dilution laws, to stop using the name if the trademark owner files a lawsuit. (See Question 6: How is Trademark Ownership Determined?)

In order to register a mark that consists primarily of the surname of a living person (assuming the mark has acquired secondary meaning), the mark owner must have the namesake’s written permission to register the mark.

11. How can I find out whether anyone else is already using a trademark I want to use?

A “trademark search” is an investigation to discover potential conflicts between a proposed mark and an existing one. Generally done before or at the beginning of a new mark’s use, a trademark search reduces the possibility of inadvertently infringing a mark belonging to someone else. This is extremely important, because if the chosen mark is already owned or registered by someone else, the new mark may have to be replaced. Obviously, no one wants to spend money on marketing and advertising a mark, only to discover it infringes another mark and must be changed. In addition, if the earlier mark was federally registered prior to an infringing use, the user of the infringing mark may have to pay the mark’s rightful owner any profits earned from the infringing use.

Usually an attorney or professional search agency conducts a trademark search by checking both federal and state trademark registers for identical or similar marks. Then the searcher checks the Yellow Pages in major cities (nationwide, for a national mark, or regionally, for a mark in regional use), as well as trade journals and other relevant publications. The search report notes all uses of identical or similar marks and the goods or services on which they are used.

Federal lists of registered trademarks are available for searching in book and database forms. For example, the Trademark Register of the U.S. lists all registered trademarks by their product or service classifications. The public can use it at any of the 68 Patent Depository Libraries throughout the country, which are mostly major public or university libraries. The U.S. Patent and Trademark Office also puts out on CD-ROM a federal trademark database called Cassis, available to the public at Patent Depository Libraries. In addition, several private subscription-based companies, such as Dialog, CompuServe, and CompuMark, offer online databases that list federal, state and some international trademarks (including Canada, the U.K. and Japan).

12. What is the significance of trademark symbols–“TM” or “R” in a circle?

Many people like to put a “TM” (or “SM” for service mark) next to their mark to let the world know that they are claiming ownership of it. There is no legal necessity for providing this type of notice, as the use of the mark itself is the act that confers ownership.

The “R” in a circle ® is a different matter entirely. This notice may not be put on a mark unless it has been registered with the U.S. Patent and Trademark Office. The failure to put the notice on a mark that has been so registered can result in a significant handicap if it later becomes necessary to file a lawsuit against an infringer of the mark.

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