What is a Trademark?
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. Other more unique forms of marks also exist, such as certification marks and membership marks, but are beyond the scope of this discussion.
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 or telephone, 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.
Making the Public Aware of Trademark Registration
We are surrounded by trademarks and service marks in our everyday lives, whether shopping at a mall, driving through a town, perusing products in a store, or surfing the Internet or deals or contractors. Marks are found on signage, packaging, products, websites, and many other places. Most marks are brand names, such as Apple, McDonalds, and Facebook, to name just a few examples. However, a mark can also be a logo, a color, a scent, or a sound, such as a compilation of notes (think Intel). In each case, the function of the mark is to identify the particular source of a product or service to prevent consumer confusion, including companies trading off of other company’s good name and reputation.
Proprietary rights in a mark are established through actual use of the mark in commerce, giving the trademark owner “common law” rights that can be enforced. Common law rights are usually signified by the owner including a “TM” for a trademark or “SM” for a service mark, typically in superscript, next to his or her mark. Enhanced legal protections can be acquired through federally registering the trademark at the U.S. Patent & Trademark Office (PTO). Notably, an applicant does not have to actually use the mark in interstate commerce at the time a trademark application is filed in the PTO. An intent-to-use or ITU application can be filed if there is a bona fide intent on the part of the applicant to use the mark in interstate commerce, so long as actual use in interstate commerce is later established within a set time period. The status of a mark as federally registered is designated by the use of the symbol “®”or the phrase “Registered in the U.S. Patent Office” or “U.S. Pat. Off.” next to the mark. This “marking” notice informs the public that proprietary rights are recognized in the mark by way of federal registration, providing the registration owner with remedies that might not otherwise be available.
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 the “TM” or “SM” notice next to the mark until such time as registration occurs.
The trademark or service mark is a tool by which a consumer attaches recognition to a product or service, 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 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 and service marks are increasing in importance and value to many businesses. Indeed, over 600,000 trademark applications for registration were filed with the U.S. Patent and Trademark Office in FY 2018 alone.
For questions or further information regarding registering a trademark for a product or service mark for a service, or contending with potential infringement of yours or an other’s trademark, please contact us by e-mail, or contact us by snail mail or telephone.