Trademarks

Law Office of Lisa N. Kaufman, P.A.

Trademark, Copyright, and Unfair Competition Law

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ABOUT TRADEMARKS

Trademarks: What I Need to Know About Them and How to Protect Them*

Definition

A trademark is a word, group of words, design, logo, or some combination of these elements that serves as a brand identifier for a product. A service mark is the same as a trademark except that the brand identifier identifies a service rather than a product. There is no provision under U.S. federal law for registering a trade name, which is the name of a business. Some service marks, however, have multiple functions as business names and as service marks and/or trademarks.

Examples

COCA COLA, the unique shape of the COCA COLA bottle , and the Nike SWOOSH DESIGN

are trademarks that identify products.

TERMINIX and its TERMITE DESIGN , SEARS and ROTO-ROOTER are service marks that identify brands of service.

IBM is the name of a business, a trade name. It is also a trademark for computers and a service mark for computer consulting services.

Protection

In the United States, trademark and service mark rights are automatically acquired from the time of use. Protection, however, is limited to the geographic area of actual use, unless federal registration is obtained. The purpose of a federal registration is to provide nationwide protection for the mark and to obtain greater rights than are available through use alone.

In most other countries, trademark protection and service mark protection, if permitted, are available only upon registration. In these countries, only in very limited circumstances is protection available for marks that are not registered. Therefore, registering a trademark or service mark in countries where use of the mark is anticipated is imperative. Otherwise, if a pirate or counterfeiter uses or registers another owner's mark, there may be no practical or legal means of protecting that legitimate owner's mark.

U.S. (Federal)Registration

By registering a trademark or service mark with the U.S. Patent and Trademark Office, certain benefits and advantages are obtained that would otherwise not be available from use alone. Here are some of these benefits:

• A mark obtains nationwide protection from the date of application, if the application is successful and becomes a registration.

• After a mark has been registered and that registration has been maintained for 5 years or more, the registration may become incontestable, provided certain requirements are met. Once a registration is incontestable, it is not subject to challenge, except on very limited grounds.

• Registration (except for a Supplemental Registration) is, on its face, evidence of the exclusive ownership and right to use that mark in connection with the goods or services with which it is registered. It is also, on its face, evidence of the validity of the mark. These factors may become important should a mark be involved in litigation.

• Registration may be helpful in combating cybersquatters and infringers using domain names that infringe registered trademarks or service marks.

Duration of U.S. Registration

Registrations obtained after November 1989 are valid for 10-year periods, provided certain formalities are undertaken to maintain the registration. The registration may be renewed every 10 years as long as the mark is in use in the United States and the proper documentation is filed to maintain the registration.

Registration Outside the U.S.

Trademark registration is territorial. If a mark will be used outside of the U.S., consult with an attorney to decide upon a plan of protection. If a mark is already registered in U.S., registration in other countries or alliances of countries (such as the European Union) may be possible based on the U.S. registration. The two most important treaties used to protect U.S. trademark registrations abroad are the Paris Convention and the Madrid Protocol.

Information about the Paris Convention may found at the following link: http://www.wipo.int/treaties/en/ip/paris/.

Information about the Madrid Protocol may found at the following link: http://www.wipo.int/treaties/en/registration/madrid_protocol/.

Proper Use

Using a trademark or service mark properly is essential to maintain the exclusive right to use and protect that mark. Here are some basic guidelines to keep in mind:

• Always use the trademark or service mark as an adjective to modify the noun that is the generic term for the product. For example, use AJAX cleanser, not just AJAX.

• In text, emphasize the mark by making it stand out from the rest of the text by capitalizing, boldfacing, or italicizing it, or some combination of these techniques (i.e., boldfacing and italicizing it). For example, use AJAX cleanser, not ajax cleanser.

• Do not make a singular mark plural or a plural mark singular. Two examples are TWINKIES (plural) snack cakes and CRACKER JACK (singular) candy-coated peanuts and popcorn. CRACKER JACK should always be used in singular form, even though it may sound awkward: "I ate some CRACKER JACK candy-coated peanuts and popcorn," not "I ate some CRACKER JACKS candy-coated peanuts and popcorn.” TWINKIES, a plural mark, should always be used in plural form: “I ate a TWINKIES cake," not “I ate a TWINKIE cake."

• Use the mark in a consistent manner so that the public learns to recognize the mark as a trademark every time it is seen or heard.

• Police the use of the mark by others to make sure that others are using it properly to refer to the trademark owner's goods or services. If others are allowed to misuse the mark and, if steps are not taken to correct the misuse, the exclusive rights to use the mark may be lost. Aspirin used to be a trademark, but lost its value as a trademark when it was misused by others and the misuse was not corrected. Aspirin became known as the name of the product rather than the trademark for the product.

• In printed materials, to notify the public that trademark rights are claimed, before the mark is registered, use the “TM” symbol for trademarks or the "SM" symbol for service marks. After the mark is registered, use the registration notice ® for both trademarks and service marks. The "TM" and "SM" symbols and the registration notice ® should be used as superscripts following the mark. Keep in mind that these are the appropriate trademark notices to use in the United States. Though many countries use the same registration notice, namely ®, not all of them do. Be sure to check with a trademark attorney before using these trademark notices in a country other than the U.S.

*THIS INFORMATION IS PROVIDED TO YOU ONLY AS BASIC BACKGROUND MATERIAL AND IS NOT NECESSARILY INTENDED TO APPLY TO YOUR PARTICULAR SITUATION. FOR SPECIFIC INFORMATION, PLEASE CONSULT AN ATTORNEY.