Trademarks

A “trademark” is a word, phrase, symbol, design or combination thereof, which identifies the goods of a manufacturer or merchant and distinguishes those goods from another’s. Similarly, a “service mark” is a mark used to identify and distinguish the services of one person from the services of others and to indicate the source of the services.

Trademarks and service marks perform an important function in society; they make possible the choice between competing products by enabling the buyer to distinguish one from the other. Trademark and service mark protection serves to assure consumers of consistent product quality as well as aiding in promotion of the products and services themselves.

The value of trademarks and service marks can be enormous for businesses which have produced high quality products and services. The Coca-Cola trademark, for example, has been valued at $24 billion.

What Federal Registration Accomplishes – Federal trademark registration does not create ownership. Ownership of trademark rights are acquired when a mark is used in connection with a product shipped or a service offered in interstate (or international) commerce. Federal registration does have the following benefits:

  • it provides constructive notice of ownership of the mark throughout the U.S. and its territories
  • it is prima facie evidence of a valid trademark
  • the mark is more likely to appear in a third party’s search report, which may dissuade them from adopting the same or similar mark
  • the U.S. Patent and Trademark Office may refuse to register a third party’s mark, thereby reducing the likelihood of a costly challenge to your ownership.

The Federal Registration Process – The formal application for registration must include: applicant’s name and address; contact person’s name and address; a drawing showing the mark as it is intended to be registered; three specimens showing the mark as actually used; a list of goods or services in connection with which the mark is or will be used; the dates of first use anywhere and first use in interstate or international commerce; a check in the amount of $325 per class of goods or services. Successful registrations are typically granted within 1 year of filing.

Maintaining the Registration – Once granted, a registration can be maintained as long as the mark is used for the goods or services for which it is registered. The owner should also do the following:

  • identify the trademark as registered by using the appropriate symbology (e.g. ®)
  • prevent the mark from becoming generic, such as by using the trademark as a noun instead of an adjective (e.g. “Xerox photocopy” is proper, “Xerox” in place of a “photocopy” is improper)
  • engage in proper licensing practices to avoid a court holding that the mark has been abandoned.