March 3, 2015
What is a trademark?
Any word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others may act as a trademark. Even a color or a sound may act as a a trademark. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. The term “trademark” and “mark” may be used to refer to both trademarks and service marks, whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging or labels, while a service mark appears in advertising for the services. One should not confuse a mark with a tradename or tradedess, which may be protected under the common law but cannot be registered.
A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention or a design.
How does one establish trademark rights?
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the United States Patent and Trademark Office (USPTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using the mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, is entitled to use the mark nationwide, and enjoys constructive use, and therefore priority, nationwide.
Trademark rights are largely territorial. Neither use nor registration in another country provides rights in the U.S., or viceversa, except for certain privileges provided by international treaties.
There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files and application in the USPTO has the ultimate right to register that mark. The USPTO’s authority is limited to determining whether a mark is entitled to registration. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. In this and other situations, a federal registration can provide significant advantages to a party involved in a court proceeding. The USPTO does not provide advice concerning rights in a mark. Only a private attorney can provide such advice.
Does incorporation provide trademark rights?
The Florida Administrative Code explicitly warns that “the filing of any corporate entity is only a grant of authority to use such a name and does not include the adjudication of the legality of such use.” Therefore, incorporation by the state of Florida (or other states) is not a valid defense to tradename, trademark, or service mark infringement, unfair competition, or anti-dilution claims. To protect one’s rights, or to prevent possible actions against one by other parties claiming trademark rights, it is not sufficient to check the availability of a corporate name or to register such name.
How does one obtain a registration of a mark?
The first step is to analyze the type of proposed mark. Generic marks are never registrable. Descriptive marks may be registrable in the Supplemental Register. Suggestive or arbitrary marks are registrable in the Principal Register. While a Supplemental Register registration does not provide all the protection of a registration in the Principal Register, it offers several advantages. A qualified attorney should be consulted in this regard.
The second step is to conduct availability searches. Although the USPTO maintains a public database of registered, pending, and inactive marks, it is wise to use the more sophisticated search queries that are possible only in proprietary databases. Often, a mark’s availability is not a black or white issue. Subjective elements enter into the evaluation of a mark by a trademark examiner. Sometimes a mark may pass the three tests of likelihood of confusion, “sight,” “sound,” and “commercial impression,” at the level of the USPTO, but a risk may exist that a senior user will oppose registration, petition to cancel it, or otherwise litigate the matter. Again, a qualified attorney can offer advice in this regard.
Assuming the mark is available or the applicant is willing to run certain risks, the next step is to file papers with the USPTO, including a power of attorney, a declaration, an application form and a trademark drawing. In the case of a work mark, the drawing is simple. In the case of a design, the services of a trademark draftsman may be required. A filing fee is required for each international class applied for. Which international classes to apply for is a matter for the client to decide, taking into account the desired description of goods or services and the advice of the attorney.
After the filing of the application papers, a trademark examiner reviews the file and renders a decision. Often the examiner will ask for disclaimers, restatements of the description of goods or services, or other changes to the original application. If everything goes smoothly, a registration will issue in about a year. The priority date, however, is established as of the date when the application is filed.
It is possible to file an application on the basis of intent to use. A registration will not issue, however, until the applicant can show that the mark has been actually used.
For additional information regarding trademarks or if you have any other intellectual property law questions or concerns, please feel free to contact our office at the telephone number above.