LEGAL BRIEFS

When picking a name for your company, product or service, you want to first understand trademark law, which is an integral part of the decision. Trademark law is important because it can help you protect the branding of your product or service, help you make sure your customer can find you and your products, and help you to retain rights in your logos, names and domain names.LEGAL BRIEFS

When picking a name for your company, product or service, you want to first understand trademark law, which is an integral part of the decision. Trademark law is important because it can help you protect the branding of your product or service, help you make sure your customer can find you and your products, and help you to retain rights in your logos, names and domain names.

The Purpose of Trademark Law

The trademark act, or “Lanham Act”, 18 USC Sec. 1051 etc., is meant to allow consumers to correctly identify the sources of goods or services.

For example, when a consumer buys a pair of Nike shoes, she want to know that Nike made them and they are of the quality and standards that Nike, as a company, offers consumers. Trademark law allows Nike to stop other companies who might make cheap shoes and copy the Nike logo on them from doing so. Allowing a third party to use the Nike mark on its products, would (a) allow it to easily sell products by taking advantage of the money which Nike has spent on advertising, brand development, warranties and customer service; (b) allow it to offer its products at lower cost than Nike due to lower overhead; and (c) injure Nike because the consumer will associate bad performance of the products with Nike or will try to return products never sold by Nike to Nike and will be angered if Nike refuses to take such products back.

When considering if there is “trademark infringement”, the main question a court considers is whether the average consumer would be confused as to the source of the good or service.

What is a Trademark?

A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of particular goods or services. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.

Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services. A “tm” on a product indicates unregistered trademark rights and an “®” indicates a registered mark. It is illegal to place an “®” on a mark that does not have national registration.

Marks fall into several categories: arbitrary or fanciful, suggestive, or descriptive. Trademarks are generally not granted in generic words, phrases, symbols or designs; immoral or scandalous words, phrases, symbols or designs; false, misleading or non-descriptive words, phrases, symbols or designs; or surnames.

When Do You Get a Trademark and What’s Required to Get a Trademark?

You may apply for registration of a trade mark or service mark after you use a mark to identify a product sold or service performed “in commerce” — or for advertising and/or sale to customers. You may also register your company’s intention to use a mark prior to its actual use and then have up to six months to file the actual application with a sample of its actual use.

You are not required to obtain national registration of a trade or service mark. Trademark rights arise upon use in commerce – with or without national registration. However, national registration expands and protects your trademark rights, giving your company a presumption of first use of the mark in association with particular goods or services.

When you formally apply for national registration of a mark, you must submit an application, drawing of the mark, if graphic, and sample of the mark as you have actually used it to identify your company’s product or service. Obtaining full registration of a mark usually takes up to several years due to the slow response rate of the USPTO (United States Patent and Trademark Office), which generally responds to correspondence once every six months. It is best to have an attorney handle the USPTO filing of the application and correspondence with the USPTO since the correspondence involves case citing and sophisticated legal argument regarding the application.

Trademark Searches

Since trade and service mark rights are based on actual use in commerce and priority of use based on time and geography, not everyone seeks national registration. This means that when you apply for a trademark, you may wish to get a “trademark search”. A thorough trademark search includes searching for your mark in phone books, newspapers, the internet, state company trade name registrations, the USPTO and other sources; the typical price is about $750. The results of such a search are several hundred pages of analyses of similar words and/or graphic representations of the marks from the US including many that may not be registered but may have prior rights in the marks.

A search is not a requirement of registration, but if you choose to apply without one, you are taking two risks (1) the USPTO may reject your mark due to pending applications not yet updated in the USPTO database or because of results of the USPTO’s own search for the mark; and (2) even if your company obtains permission for proceeding with the application from the USPTO, another party may claim prior use of the mark during the application process (called ‘opposition’) or after registration is granted and may contest your rights to use the mark. Therefore, if you intend to invest large sums of money in brand recognition, corresponding domain name or company name, a full search is the smart choice. Alternatively, if you are not particularly attached to the name of your company, are willing to change it in the future if necessary and want to take the risk by saving money early on, skipping a search may be more in line with your business goals.

What Do You Have When You Have a Trademark?

Having national trademark registration allows you to prevent others from using the same or similar mark with similar products or services by giving you a presumption of first national use of the mark in the US. To explain it another way, a mark allows a company to ensure their customers know which products and services are made by them through use of a word, phrase, symbol or design – their trademark. If another company uses your mark to sell similar products or services, you may bring a trademark infringement claim against such company to stop their use. These cases are usually decided on priority of use, geographical use and consumer confusion with regard to the source of the mark. Trademark rights are indefinite as long as use of the product or performance of the service in commerce continues, your company makes attempts to control use of the mark by others, and the trademark is renewed every ten years.

Editor’s note: Part 2 of this article will discuss among other things: When Do You Get a Trademark? What’s Required to Get a Trademark? And info on Trademark Searches…

Judith Silver is a computer, Internet, intellectual property and free speech attorney licensed in CA, FL and TX. This article is informational only and not to be relied on as legal advice.

LEGAL BRIEFS

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