This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.
A trademark is a word, name, symbol or device used by a manufacturer or merchant to identify his or her goods and distinguish them from others. A service mark is a word, name, symbol or device used by one offering a service in order to identify his or her service and distinguish it from others. Therefore, trademarks and service marks act as a source of origin of goods and services, as well as indicating the quality. For purposes of the following discussion, the word “trademark” will be used to refer to both trademarks and service marks. Trade names identify business entities and will not be discussed.
Federal or state registration does not create a trademark. Trademark rights can only be acquired by actually using the trademark in association with particular goods or services. However, as of November 16, 1989, a trademark can be “reserved” prior to actual use by filing a federal trademark application based upon an intent to use the trademark.
For most practical purposes, state registration of a trademark is meaningless. Since this area of law is controlled primarily by federal statute (the Lanham Act), existing state laws do not provide comprehensive trademark protection, if they provide any protection at all. Federal registration of a trademark, on the other hand, gives the registrant substantial procedural advantages if the trademark owner should ever be faced with the task of stopping 32 a potential infringer. Filing an application for federal registration of a trademark typically costs approximately $500 – $1,000 if the services of an attorney are used. An individual may apply for federal trademark registration directly to the United States Patent and Trademark Office without using an attorney. The government fee for filing a trademark application ranges from $275 – $375 per class of goods and services.
In order to obtain federal registration of a trademark, the mark must first be used in commerce. Use of the mark must be substantially continuous if rights in the mark are to be preserved, even after registration is obtained. Federal registration cannot be obtained until the trademark has actually been used on the goods and services in interstate commerce. Proper trademark use requires that the mark be placed on the goods directly, or their containers, or displays associated with the goods, or tags or labels that are affixed to the goods. If the mark is used in association with services, the mark must be used or displayed in association with the sale or advertising of the service.
As long as a trademark is being used properly, the trademark rights will last indefinitely, and any federal registration of the trademark may be renewed indefinitely. Proper use of a trademark requires that it always be used as an adjective, and never as a noun. For example, the word “zipper” was once a registered trademark and denoted a particular type of fastener. Proper use of that trademark would have been to always refer to the fastener as the “zipper fastener” and never simply as a “zipper.” Since this trademark was used improperly as a noun referring to the fastener itself, the word “zipper” lost its trademark status and simply became the “generic” word identifying a product, thereby giving anyone the right to use the word “zipper.”
Once a trademark has been federally registered, it should be identified either with the word “registered” or with the symbol ®. An unregistered trademark should be identified with the letters ™ placed in close association with the word or symbol which comprises the mark.
The owner of a trademark may prevent others from using a mark which is confusingly similar to the owner’s mark. To determine whether or not another mark is confusingly similar, it is necessary to look at the sound, appearance and meaning of the trademark as well as the goods/services for which the mark is used. A trademark can be quite valuable in that it identifies the products/services carrying the mark as originating from a certain source. The public will begin to recognize a trademark as standing for a certain level of quality and may very well build an allegiance towards purchasing those products/services in the future.