What is a Trademark? 

A Trademark is used to identify the source of goods or services and to distinguish the same from others.

A Trademark or Service Mark not only protects the product owner but also protects the consumer in that the source and quality of goods purchased are consistently identified to a particular entity.  Once registered by the United States Trademark Office, a Trademark must be renewed every ten years to remain in effect.

Trademark Law

Legal rights attach upon the adoption and use of a word, symbol, or other device as a tradename, trademark or service mark. After a mark has been adopted and used on goods or services in interstate or foreign commence, it may be registerable in the United States Patent and Trademark Office.

Trademark Searching – state, national and international – when considering a new product, the brand name will be the basis of advertising and revenue for the company. Thus it is strongly recommended that a professional trademark search be performed first to determine if the mark is available or already in use.  A search in the United States Trademark database or on the Internet is NOT sufficient to determine if the mark is already in use.

Scope of Trademark Rights

Trademark rights protect the goodwill, distinctiveness and scope of use of the mark for the business in which it is used.

A tradename is the name of a business, firm, company, etc., used to identify a business entity. However, a trademark is any word, name, symbol, or device, or combination thereof adopted and used by a manufacturer or merchant to identify goods or services and to distinguish them from others. A subset of trademark is the service mark. A service mark differs from a trademark only in that a service mark identifies the source of services, rather than the source of goods.

Trademark law, like trade secret law, is part of the broader law of unfair competition. Trade secret law arose to protect against misappropriation of confidential information, and trademark law arose to protect against misappropriation of reputation and evolved to prevent the public confusion of brand origin.

Scope of Protection

Deception – Protection of the public from deception as to the origin and/or quality of goods, services or commercial identity arising from the use of a confusingly similar mark.

Goodwill – To protect the owner’s investment in goodwill associated with the mark.

Trademark protection may be asserted against another entity using a confusingly similar mark. In economic terms, trademark law protects a trademark owner for value of reputation and investment in advertising. Relief is frequently sought against poachers, pirates and counterfeiters. But it is up to the trademark owner to police and protect the mark.

Federal Trademark Registration

Federal registration provides significant advantages for protection of a mark. A trademark or service mark should be registered in the United States Trademark Office if it has been used in interstate or foreign commerce and it is distinctive and not confusingly similar to a mark owned by another when used in association with the goods or services.

Enforcement

Trademark enforcement is limited to those situations where likelihood of confusion, deception, or a probability that the public will be misled exists because of the use of confusingly similar marks. State and Federal Courts provide laws protecting trademarks. But only the Federal Courts have jurisdiction if suit is brought pursuant to the Lanham Act, i.e., is based on a Federally registered mark, or otherwise arises under the Lanham Act.

Relief in trademark litigation includes:

• preliminary injunctive relief to enjoin infringement during the litigation;
• money damages after trial on the merits;
• permanent injunctive relief after trial on the merits;
• destruction of offending products or packaging;
• increased damages and attorney fees in certain cases.
• foreign source goods can be excluded by the United States Customs Service for trademark infringement.

Licensing of Trademark Rights

Trademark licensing follows traditional contract principles, but the licensor must control the quality of the licensee’s goods or services to protect the licensor’s rights in the mark, as the rights of the licensor depend on the goodwill established in the mark.

Additional topics:

Trademark Prosecution & Appeals – national and international

Trademark Litigation in State and Federal Courts

Trademark Acquisition, Transfer & Licensing

Counseling on Brand Selection and means of Protection