Trademarks
What is a trademark?
Definition. The term “trademark” (or “mark”) refers to any word, name, symbol or device, or any combination of these, that is used in commerce to designate, identify and distinguish the goods of one manufacturer or seller from the goods manufactured or sold by others, and to indicate the source of the goods. In common language, a trademark is a brand name or other brand-identifying device, such as the Nike “swoosh,” the Pillsbury Doughboy, or NBC’s three-tone sound mark. Marks that are used to identify or advertise services rather than goods are often referred to as “service marks.” Rights in a trademark are acquired and maintained only by use; however, as discussed below, registration does provide you with additional benefits and rights.
Function. The primary function of a trademark is to indicate the origin of goods or services. Trademarks also enable consumers to identify products and service-providers so that they can either look for them again (or avoid them). In this way, a trademark represents the quality and uniformity of the goods bearing the mark, guiding consumer expectations and providing predictability.
Underlying policy. The goal of trademark law is to protect the source-identifying and quality-designating functions of trademarks. The first party that acquires rights in a trademark for a particular good or service (the “senior user”) owns certain exclusive rights in the mark – namely, the right to prevent others (called “junior users”) from creating confusion by using the same or a similar mark for similar goods or services. Some trademarks are so famous that third party use of them for any goods or services is likely to cause confusion and infringe the senior user’s rights.
Selecting a trademark
Name considerations. Businesses often desire to adopt a trademark that clearly evokes or describes their product. However, such marks may be impossible, or very difficult to protect. Generic names for a user’s goods or services normally cannot function as trademarks. For example, the term “apple” cannot be appropriated as a trademark for apples, the food. However, words that are descriptive of the user’s goods or services may be protectable as trademarks, but only under certain circumstances, which your attorney can explain to you. The most easily protectable trademarks are those that are arbitrary or fanciful when applied to the user’s goods or services. Kodak, Xerox and Exxon are examples of fanciful marks, while “apple” used as a trademark for computers is arbitrary.
Risk prevention. Before adopting a trademark, it is advisable to have an attorney evaluate whether the term or device is eligible for trademark protection. A qualified attorney will typically conduct a “trademark search,” to find out whether the mark is already owned by another party. While such searches do not guarantee that the desired mark is available for adoption, they minimize the risk that the mark you adopt will infringe a third party’s rights.
Business entities. Many people believe that they automatically have the right to use the name of their corporation, LLC or other business as a trademark. This is not the case. Just because the state allows you to form a business entity under a given name does not mean the name does not infringe someone else’s trademark. To protect your business’s name and reputation, ask your attorney about seeking additional trademark protections.
Registering your trademarks
Where to register. Trademarks may be registered with the United States Patent and Trademark Office (“PTO”) and/or the Florida Secretary of State. Since trademark rights arise from use, registration is not necessary to create rights. However, by registering a trademark with the PTO, you can secure trademark rights in areas of the United States in which you have not yet used your mark. Federal and state registrations also provide advantages in lawsuits to enforce trademark rights. An attorney can advise you as to whether a federal and/or state registration would be advisable.
Registration requirements. To be eligible for federal registration, a mark must be used in commerce that may lawfully be regulated by Congress (i.e. interstate commerce) at the time the registration is granted. For goods, the use that is required to register a mark generally consists of placing the mark on the goods, packaging, tags, or labels. For services, the mark must be used or displayed in the advertising or sale of the services, and the services must actually be rendered. You may file a federal application with the PTO to register a trademark before you use it. But you have to have a bona fide intent to use the mark. And the registration cannot issue until you commence actual use.
Timing. The total time for the processing of a federal trademark application ranges from around a year to several years. The length of this process depends on the basis for filing the trademark, and the legal issues that may arise in the PTO’s examination of the application. Your attorney can help guide you on these expectations, after a review of your application.
Renewal. If your trademark is accepted, you will still need to renew it to maintain its use. Federal trademark registrations must be initially renewed between the 5th and 6th years following your registration date. After your first renewal, you must renew every 10 years. By working with an attorney, they can receive notices of renewal and filing requirements for your trademark, so that it remains protected.
Effect of registration. The federal trademark registration symbol ® may be used once the mark is actually registered with the PTO or, in some cases, if the mark is registered in a foreign country. Use of the ™ and SM symbols is not required, but it may discourage others from infringing your mark. Additionally, these two symbols may be used before the mark obtains federal registration.
Enforcement of trademark rights
Infringement. Infringement of a trademark occurs when someone other than the trademark owner (1) uses the mark, or a similar mark, (2) on goods or services, and (3) in a manner that is likely to cause confusion. Confusion being uncertainty over the source or origin of goods or services, or to suggest an affiliation or an endorsement of the goods or services by the owner of the trademark. An example of infringing conduct would be a respected clothing retailer selling “knock-off” versions of well-known brand (e.g. Nike), without the permission of that brand, leading customers to believe they are buying the version associated with the brand’s trademark.
Dilution. Dilution occurs when someone uses a similar trademark in a manner that is likely to diminish or tarnish the distinctiveness of a famous mark. Dilution is less concerned with confusion. Rather, dilution looks to reputation and perception of a trademark. An example is the placing of a famous brand on something crude, unsavory, or antithetical to that brand – e.g. using the Coke brand on socks without Coke’s permission.
Where rights are enforced. Enforcement of federally registered marks can take place in either federal or state court. Enforcement of Florida-registered marks typically takes place in state court. An unregistered mark may still be eligible for protection in federal and/or state court — depending upon factors that a trademark attorney can explain to you.
Available remedies. The remedies available to a successful trademark owner in an infringement lawsuit may include an injunction; a monetary award; impoundment and destruction of infringing items; and, in exceptional cases, recovery of the trademark owner’s attorney’s fees. Special procedures and remedies, including potential criminal liability, apply in cases involving counterfeit goods or goods labeled with counterfeit marks (such as counterfeit purses). Your qualified attorney can help guide you if you feel your trademark rights are being violated.
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Trademarks