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Archived updates for Sunday, January 21, 2007

Basic Information About Trademarks

A trademark is a word, phrase, symbol or design, or or other device which identifies and distinguishes the source of the goods or services of one party from those of others. 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 terms "trademark" and "mark" are used to refer to both trademarks and service marks, whether they are word marks or other types of marks. A trademark is different from a copyright or a patent in that copyright protects an original artistic or literary work while patents protect an invention.

Trademark rights arise from either (1) actual use of the mark in connection with the offering or sale of goods or services in commerce, or (2) the filing of a proper application to register a mark in the U.S. Patent and Trademark Office (U.S. PTO, or PTO) 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 a 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, and to be entitled to use the mark nationwide.

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 an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. 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. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Anyone who claims rights in a mark may use the "TM" (trademark) or "SM" (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is registered in the U.S. PTO. It is improper to use this symbol at any point before the registration issues.

Unlike the United States, many foreign countries base trademark rights on the first to obtain a registration of a trademark as opposed to the first adopt and use a trademark. Thus, where there is an interest in obtaining and protecting trademark rights oversees, we recommend seeking registration of your trademark in those foreign countries that are particularly of interest as soon as possible.

The U.S. has entered into treaties with most foreign countries that provide that an application filed outside of the U.S. within six (6) months of a corresponding U.S. Patent and Trademark Office, can be considered as if it had been filed on the same date as the U.S. application. This ability to claim priority on a U.S. application allows for the possibility that a U.S. application may be filed first and subsequently consideration may be given to the filing of any foreign applications. Where there is an interest in filing foreign applications, we recommend that the foreign applications be filed within six months of the date of the U.S. application filing date in order to make a claim of priority on the U.S. application filing date.
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