Trademark Law

A trademark is any word, name, symbol, or device or any combination thereof adopted and used by a person or organization to identify and distinguish goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods.  See 15 U.S.C. § 1127.  A service mark is similar to a trademark except that it applies to the supplier of a service.  The distinction between trade and service is the only distinction between the classification of a mark as a trademark or service mark.  Accordingly, service marks are registrable in the same manner, receive an equivalent evaluation by the trademark examiner, and are entitled to the same protection as trademarks.  See 15 U.S.C. § 1053.

A. Registration of Trademarks

The Lanham Act of 1988, 15 U.S.C. § 1051 et al., revised the Trademark Laws by allowing for both use and intent to use trademark and service mark applications.  Prior to this revision of the trademark laws, applicants could only file trademark and service mark applications for marks that were in use in interstate or foreign commerce prior to the filing of an application.  However, this change in the law allowed applicants to also file for marks that they intend to use in interstate or foreign commerce, provided that within six months after receiving a Notice of Allowance for the mark, the applicant files a "verified statement that the mark is in use in commerce."  See 15 U.S.C. § 1051(d)(1).  If an applicant is unable to file a Statement of Use, the six month period may be extended through additional filings and upon paying a designated fee -- although not indefinitely.

Marks are registered on the Principal Register at the U.S. Patent and Trademark Office.  Registration of a mark on the Principal Register constitutes constructive use of the mark, conferring in effect a right of priority nationwide, on or in connection with the goods or services specified in the registration.  See 15 U.S.C. § 1052(c).  The registration of a mark on the Principal Register entitles the owner of the registration to all the rights provided by the Trademark Act of 1946. See TMEP § 202.02(a).

The U.S. Patent and Trademark Office also maintains a Supplemental Register allowing for registration of certain marks which were not eligible for registration on the Principal Register, but which are capable of distinguishing an applicant's goods or services.  See TMEP § 202.02(b).  Marks which are registered on the Supplemental Register are excluded from receiving the advantages of certain sections of the Trademark Act of 1946. See 15 U.S.C. § 1094 & TMEP § 202.02(b).  However, registration on the Supplemental Register may provide other tangible benefits and may present an opportunity for registration on the Principle Register at a later date.

Foreign trademark or service mark registrations are managed by the respective trademark offices established by each country.  For questions or further information on trademark or service mark protection in foreign countries, please contact us by e-mail, or contact us by snail mail, telephone or fax and we will advise you on further specifics or provide contact information for our foreign associates who specialize in trademark law for a given country.

B. Making the Public Aware of Trademark Registration

Following registration of a trademark or service mark on the Principal Register at the U.S. Patent and Trademark Office, it is important to place the public on notice of your trademark registration.  Use of the symbol ® or the phrase "Registered in the U.S. Patent Office" or "U.S. Pat. Off." next to the trademark denotes federal registration.  This notice informs the public that proprietary rights are recognized in the mark by way of a federal trademark registration.

If you intend to file for protection of a trademark or service mark, or your application is on file at the U.S. Patent and Trademark Office, it is generally recommended that you place a ™ or a SM symbol next to the mark. (The SM symbol is used for pending service marks, whereas the ™ symbol is used for pending trademarks.)  Use of either of the symbols places the public on notice that you intend to file for federal trademark registration of the mark.  However, the ™™ and SM symbol are mainly utilized to indicate common law rights in a mark and are properly utilized by those persons or businesses wishing to advise viewers of the mark that they claim such marks as trademarks or service marks although the marks are not registrable or not yet registered as federal trademarks or service marks. 

A trademark, trade name and service mark are means of representing a product and/or service wherever it is marketed.  The trademark is a tool by which a consumer attaches recognition to a product, as well as a means by which the manufacturer or service provider can establish a reputation and good will.  In today's world of ever increasing numbers of products and services, the value of trademarks, trade names, and service marks cannot be underestimated.  Accordingly, many more businesses and individuals have begun to seek trademark registration as a means of distinguishing their products and services from competitors and protecting their trademarks from being registered by their competitors as well.

As our economy begins to take on a more global structure, there is increased importance in attaching a logo, color scheme or product name to a product or service which can pass through many language barriers, thereby providing name and product recognition in other countries as well as the United States.  Registration and enforcement of trademarks, trade names, and service marks is gaining importance as a means of preserving and increasing one's product and service base and, accordingly, trademarks, trade names, and service marks are increasing in importance and value to many businesses.

For questions or further information regarding the trademarking of a product or potential infringement of yours or another's trademark, please contact us by e-mail, or contact us by snail mail, telephone, or fax.