Trademarks are an integral part of brand identity and marketing – so what are they really, and how do you obtain them? This article goes back to basics and summarizes trademark issues from the perspective of those running small to medium sized businesses.
What They Are
Trademark law is based on premise that consumers should be able to rely on indicia of source placed on goods or advertisements of services. On a basic level, you can think of this as the manufacturers mark on an item, such as one that would appear on the bottom of a jug like the one above. What does that mean to us? If your batteries say “DURACELL” you should be able to trust that they are actually manufactured by and have the quality of DURACELL batteries. It also means that because trademarks are premised on consumer perception, the property rights enjoyed by their owners are subject to different rules than personal property or land. (More about that in later articles.)
Common Law Trademark Rights
Trademark rights can be gained through federal registration (discussed below) but also through use in commerce over a period of time. Trademark rights acquired through use of the trademark are called “common law” rights. Unlike rights granted by a federal registration, common law rights are generally limited to a geographical area within the United States. Because common-law rights accrue from actual use of the mark in association with the goods or services, one should begin actual use as soon as possible after the trademark is determined not to conflict with other trademarks. Infringement actions based on common law rights are state actions. Common law rights are limited compared to federal registration, and therefore, federal registration is encouraged. Use of the “SM” and “TM” symbols signify that you consider a word or logo your trademark. You may use the “TM” or “SM” symbol regardless of whether or not you file a state or federal trademark application.
Federal Trademark Rights
The United States Patent and Trademark Office (USPTO) administers the registration of trademarks on a nation-wide basis. In order to obtain a federal registration, the USPTO must determine that the mark qualifies for registration. As a general matter, a trademark will not qualify for registration if:
- Confusingly similar to another trademark
- It is generic or merely descriptive of the goods/services
- Geographically descriptive
- Prohibited by statute
- Immoral or scandalous
- Primarily merely a surname
- The mark does not function as a trademark (because it is merely information, not connected to good or services, etc.)
According to the USPTO, federal registration affords many benefits, including:
- public notice of your claim of ownership of the mark and listing in the USPTO’s databases;
- a legal presumption of your ownership of the mark;
- your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
- the ability to file an infringement lawsuit for the mark in federal court; and
- The right to use the federal registration symbol ®
Of these benefits, listing with in the USPTO’s database is a significant one. When considering a trademark to use for a company or product, many businesses will perform a “knock-out” search of the federal database. By doing so, they can reduce any effort put towards a mark that is either un-registerable or infringing the mark of another. Furthermore, because a federal trademark registration provides grounds for filing an action in federal court, trademark owners can call on infringers to cease use of the trademark nationally through the issuance of cease and desist letters.
To keep a trademark “strong” trademark owners should exercise diligence to ensure that no one is using their trademark, which may cause consumer confusion. Furthermore, owners should be diligent to ensure that they have continuous use of the mark, which is crucial to avoid vulnerability to cancelation by third parties.