Information Center Intellectual Property

Trademarks

A trademark is a word, phrase, symbol, trade dress, product configuration, jingle or even smell which identifies the source, origin or sponsorship of the owner's goods and distinguishes those goods from the goods of another. A service mark is a word, phrase, symbol, etc. which does the same thing for services. Trademarks, service marks and certain other indicia are often collectively referred to as "marks".

The purpose of a mark is to guarantee to a consumer or other relevant member of the public that the goods or services in connection with which the mark is used that those goods or services are genuine, and that the goods or services so marked have a certain consistency in their quality. Trademarks and service marks are representations of the "goodwill" which the owner enjoys in the minds of the public. Trademark law grew out of the "common law" (judicial case law) on unfair competition, which more generally prohibits the false representation of a product's origin, materials or other characteristics, where those false representations are likely to cause confusion in the mind of a prospective purchaser.

Types of Marks

The Federal Trademark Act (sometimes called the Lanham Act) recognizes four different kinds of marks. A trademark is a word, phrase, etc. which is used on or connection with goods, to distinguish the source, origin or sponsorship of those goods from others. A service mark does the same thing for services. A collective mark is a trademark or service mark which is used by members of a cooperative, association or other collective group or organization (such as a union) to indicate membership in that organization. A certification mark is a mark which is used to certify that goods or services have a certain regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics, where any person whose goods or services comply with such characteristics may use it; or where labor or work on the goods or services were preformed by members of a union or other organization.

Registration of Marks

In the United States, a trademark or service mark has to exist before it can be registered, and there are thousands of unregistered marks now being used in the marketplace. While an owner of an unregistered mark has the ability to sue an infringer in state court or in some instances federal court, there are many benefits to be obtained from obtaining a registration of a mark on the Principal Register of the United States Patent and Trademark Office (USPTO).

A person (either a natural person or a company) may apply for federal registration of a trademark or service mark if the person is actually "using" the mark on goods or services "in commerce", or has a bona fide intent to do so. "Use" for a trademark must be use on the goods, their containers, labels, packaging or point of purchase displays. "Use" for a service mark must be made in advertising for the services. "Commerce" means interstate commerce or commerce between the United States and a foreign country. A registration will be granted if the mark is distinctive of the goods (e.g. it is not merely descriptive of one of their characteristics), the mark is not confusingly similar to other federally registered marks or applications for same, no one successfully opposes such registration, the applicant's specimen(s) demonstrating use in commerce are deemed acceptable, and certain other requirements are met. An "intent to use" application will never mature into a registration until bona fide commercial use of the mark is demonstrated by the Applicant.

Federal registrations are good for ten years from their dates of issue, assuming a certain declaration is filed between the fifth and sixth year of registration. Most states also make provision for registration of trademarks and service marks, which might be of interest to an owner which is not entitled to a federal registration that has nationwide effect.

International Protection

Most countries of the world maintain registers of trademarks, and the Paris Convention affords a US trademark owner the ability to register its mark in most of these countries if local requirements are otherwise met. The registration of a trademarks in many foreign countries is mandatory rather than permissive, in the sense that the owner of a trademark has no rights at all absent such a registration.

In 2003, the United States joined the Madrid Protocol, an international treaty which (at the time of writing) has 80 signatories. Most economically important countries are now members of the Madrid Protocol although there are important exceptions. Through the Madrid Protocol, a US applicant may apply for an International Registration that will cover those signatory countries which the applicant designates. The US applicant must already have filed an application for federal registration of the mark and the international application must be made through the USPTO. An application will be examined by the International Bureau at the World Intellectual Property Organization (WIPO) and, if its requirements are met, an International Registration will issue. Each country which had been designated by the Applicant will then determine whether the internationally registered mark meets local requirements, and if so, will grant an Extension of Protection of the International Registration into that country. At least for the first five years, the validity of an International Registration thus obtained will depend on whether the basic US registration remains valid.

A US trademark owner also has the ability to register its mark as a Community Trademark, with effect throughout the European Union. This is sometimes more advantageous than seeking protection in European countries only by means of the Madrid Protocol. An intellectual property attorney can advise an appropriate course of action when a foreign trademark protection program is indicated.

Ownership and Abandonment

Like other forms of intellectual property, a trademark is intangible personal property and can be assigned, licensed or hypothecated. Assignments of trademarks must be made together with the goodwill represented by the mark. A license must be granted only with appropriate controls over the quality of the goods or services to be sourced or rendered by the licensee. An assignment of a federal trademark registration must be in writing and should be recorded in the USPTO. In the United States, a license does not have to be either.

In the United States, the existence of a trademark depends on its continued use, and a mark will be presumed abandoned if it has not been used for three years. The owner of a federal registration periodically has to demonstrate such use in order to keep the federal registration alive.

If you have additional questions concerning trademarks, an experienced intellectual property attorney can provide assistance.

© 2007 by Momkus McCluskey

DISCLAIMER: This site and any information contained herein is intended for informational purposes only and should not be construed as legal advice. Seek competent legal counsel for advice on any legal matter.