A trademark is a name, phrase, symbol or design or a combination of these elements that is used to identify and/or distinguish the goods of a company or individual from others providing the same or similar goods. A service mark is used to identify and/or distinguish the services of a company or individual.
The basic concept is not hard to grasp. If someone works very hard to produce a special product, many consumers tend to develop a loyalty to that product. The ability of a consumer to have confidence that he or she is getting the product that they really want is very valuable to the consumer. The ability to protect the goodwill and brand name is very valuable to the producer. Trademark law facilities each of these important purposes.
For example, if an athlete finds New Balance shoes to be the most comfortable, that athlete will likely develop a loyalty to the brand. The NAME of the producer of those shoes is one way that customers will know that they are buying the actual shoe they want. A SYMBOL is another way to distinguish goods and services as coming from a particular source. New Balance employs an “N” on their shoes, for example.
Generally, registration of a mark only provides protection in the classification(s) of goods or services in which the applicant obtains registration. Since the registration is searchable online through the USPTO, others are able to find an existing mark, refrain from using such mark, and infringement suits are avoided.
Stated plainly, registrants cannot protect a name or symbol generally, but only in connection with the product or service category in which their product or service falls. For example, APPLE is, of course, a tremendously valuable trademark in computing, software, and other categories. However, an apple grower may of course still use that mark to sell produce.
The classification of services or goods for which registration is sought is called an “international class.” Although named “international class,” protection is granted only in the United States, not internationally. The word “international” is used only in the context of the worldwide uniform classification system of which the USPTO is part.
Generally, registering a trademark does not prohibit others from using an identical mark to identify goods or services different than those for which the mark is registered. For example, while one company might use “Road Runner” to identify shoes, another company may be permitted to use “Road Runner” to identify a delivery service or other goods/services unrelated to shoes. There are some exceptions to the rule, particularly with certain “famous” marks such as “Coca-Cola.” The name “Coca-Cola” is so famous that it is reasonable to believe that there would be consumer confusion if others were permitted to use the name “Coca-Cola” to identify their products or services. Therefore, famous marks are often protected regardless of the goods or services the mark is used to market.
Once a mark has been registered for five years, it can become incontestable, upon the filing of the proper paperwork with the USPTO. Incontestable marks are not completely unassailable, but they are immune from certain types of attacks regarding the type and strength of the mark.
Trademarks usually become more valuable as time passes because typically the public association of the mark with the particular product or service solidifies. Protection for marks can last indefinitely with the timely filing of subsequent information required by the USPTO throughout the life of the mark.
The name of a business or company is a “trade name.” A trade name is defined as any name used by a person to identify his or her business or vocation. 15 U.S.C. § 1127. A trademark application would typically be rejected for registering merely a trade name if the name is not used in commerce to identify goods or services or if the applicant does not have a bona fide intention to use the mark in commerce. In other words, the Trademark Act does not operate to protect mere names; rather, its function is to protect the name as an identity of the source of the product or service.
COMMON LAW TRADEMARKS
The mere use of a mark without registration is enough to create what is called a “common law” trademark. A common law trademark owner is provided with a minimum level of trademark protection that is geographically limited to where the marked goods or services are sold or advertised and often is limited by state law to the specific types of goods or services being sold. If another company or individual infringes on the mark, the owner of the common law trademark has to prove the use and ownership of the trademark, sometimes on a county-by-county basis. Most often, common law trademarks must be proved through litigation, which can be expensive and time-consuming.
ENFORCEMENT OF RIGHTS
As mentioned above, a trademark is based upon identification of the mark with a particular source. Therefore, the owner of a mark must aggressively protect the mark to keep it from falling into the public domain. If an owner allows the mark to be used in unauthorized ways or in ways that cause the consumer to cease identifying the source (or owner) of the goods or services, the protection of the mark may be lost.
Rights to a mark may also be lost if the mark becomes “generic.” For example, the word “cellophane” originally was a protected trademark used to identify the “Cellophane” brand of a certain type of wrap. The word became so widely used by consumers to describe plastic wrap generally (regardless of the source), that the mark ”Cellophane” lost its protection.
Various symbols are used in connection with trademarks. Those are “TM,” “SM,” and “®.” The symbols constitute notice to consumers and others that the owner of a mark intends to protect the mark.
The ® symbol indicates that the trademark is a valid U.S. federally registered trademark or service mark. The ® itself has value because others are discouraged from considering using the mark. It is illegal to use the ® symbol if you do not have a valid U.S. federally registered trademark. The mere filing of a trademark application is not enough to be permitted to use the ® symbol; the federal registration must be issued. Prior to registration, generally the “TM” symbol is used for goods and the “SM” symbol is used for services.
FINAL POINTS ON THE APPLICATION PROCESS
The first step in the application process is to perform a trademark search. For that step, we would need you to provide the mark(s) that you wish to register. We would also request that you describe for us the goods and/or services offered under the marks so that we may identify the proper international class(es) and perform a trademark search.
In order to complete an application, we would need an electronic version of any design or logo mark(s), the owner of the mark(s), the address of the owner, and the date the mark(s) was first used in commerce. In addition, for each mark you wish to register, we must include with the application a specimen for each international class showing that the mark is currently being used in commerce. Samples of specimens for a service mark may include advertisement brochures, letterhead stationery, business cards, photos of signage, a website, etc. Samples of specimens for a trademark include labels or tags appearing on the goods or boxes containing the goods. Also, we need the date that each mark was first used anywhere and the date that the mark was first used in commerce.
Pending registration of the mark (meaning right now), your company may (and should) use the SM symbol next to its mark for services to show that a trademark is filed, or you’re your company otherwise claims rights in the mark. Should the mark be registered, the ® symbol would be employed from that point.
We at the Chapar Firm are a top choice for trademark law in Atlanta, Conyers, Covington and East Metro.