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What you need to know about Trademark

What is a Trademark?

A trademark or service mark can be a word, symbol, design, phrase or any combination of these, that identifies your goods or services and distinguishes them from the goods or services of another. Trademarks and service marks are both commonly referred to as marks or trademarks. Trademarks are a vital and valuable part of any successful business, providing protection to both businesses and consumers. By helping consumers determine the source of particular products and/or services, trademarks provide protection against consumer confusion in the marketplace. For businesses, trademarks provide enormous value by building brand recognition, goodwill and reputation, and can account for a significant portion of a companies overall value.

Here are a few examples of how trademarks may exist within a business or brand:

  • Company/Business names
  • Logos
  • Slogans
  • Product/Service Names
  • Jingles/Songs/Sounds
  • Product packaging

A trademark may be aa standard character mark, or special form mark (stylized version of the mark). Standard character trademarks, consist of words, letters, numbers, or a combination of those without a specific font, size, color, or design. Standard character marks protect the words, not how they look or are displayed. Special form trademarks may be stylized, have designs, or in color. These stylized designs protect the way a trademark looks.

What you need to know about trademark ownership

Trademark Ownership vs. Registration

Trademark registration is not required for trademark rights to exist in the United States. Actual use of the trademark in commerce establishes U.S. common law trademark rights. This means common law trademark rights begin when you first use the mark on or in connection with specific good or services in the marketplace. The first to use the mark in commerce, not the first to register the mark with the USPTO, will own the common law trademark rights. Common law trademarks rights are limited in a particular geographic area.
Federal Trademarks are registered with the United States Patent and Trademark Office (UPSTO). Federal trademark registration provides trademark owners with much stronger and broader protections than those at common law, including a legal presumption of ownership in the mark upon registration. Registration also allows the use of the ® symbol with the trademark for the goods or services listed in the registration.

How long does trademark ownership last?

Unlike other types of intellectual property such as copyright and patent, trademarks can last forever, so long as you continue to be use the mark in commerce, and the mark does not become non-distinctive for the product or service for which it is used.
You must file post registration maintenance documents with the USPTO to maintain the validity of the trademark registration. This includes: Declaration of Use under Section 8, between the fifth and sixth year following registration; Declaration of Use and Application for Renewal under Sections 8 and 9, between the ninth and tenth year after registration, and every 10 years after.
Additionally, if you do not use a common law or registered trademark for business purposes for three years, the trademark will expire. Trademark owners must also take control of the nature and quality of the good or services connected to the mark. Failing to do this may compromise the trademark.

What you need to know about Trademark Registration

Benefits of U.S. Federal Trademark Registration

U.S. Federal Trademark Registration provides the trademark owner with a number of important benefits, including but not limited to:
  • U.S. Federal Trademark Registration constitutes “constructive use” of the trademark nationwide, as of the application filing date.
  • Registration creates a legal presumption that you are the rightful owner of the trademark. The registration certificate serves as proof of ownership in Federal Court, without the need for additional evidence.
  • USPTO database will include you trademark. Providing notice of your trademark ownership and rights to the world.
  • Helps deter others from using or trying to register your trademark or one confusingly similar with the USPTO.
  • Basis for filing for trademark protection in foreign countries.
  • Grants the right to bring a lawsuit concerning the trademark in federal court
  • Grants permission to use the federal trademark registration symbol, ®, with the trademark.
  • Allows you to record your registration with U.S. Customs and Border Protection (CBP), to stop the importation of trademark infringing goods.
  • Trademark owners may license their marks while still retaining ownership, as well as, transfer ownership through a written assignment.
  • Trademark registration can be extremely valuable in your business and brand.

What you need to know about trademark strength

Strength of a trademark

Use of a mark in commerce in itself, is not sufficient for trademark protection or federal registration. In order for a particular mark to be protectable under trademark law the mark must also be “distinctive”. The more distinctive a trademark, the stronger the mark is. The strength of a particular trademark will determine the legal protections available to the trademark owner. Strong marks have the best chance of being protectable and successfully registered with the USPTO. Federal registration is often not available for weak trademarks, and they are difficult to protect against competitors.
Five categories of distinctiveness:
  • Generic – Generic marks are not protectable as trademarks because they identify the common product or service name and not the actual source of the product or service. (WEAK)
  • Descriptive – A descriptive mark merely describes a product or service, or a characteristic of the product or service, rather than the source of the product or service. [Would competitors likely need the word(s) to describe their own products?]  (WEAK)
  • Suggestive – Suggestive marks brings to mind an attribute of a good or service without actually describing the attribute, such that the consumer must use their imagination to determine the nature of the good or service. Suggestive marks, are inherently distinct and protectable, although weak.  (WEAK)
  • Arbitrary – Arbitrary marks use real word(s) in a way unconnected to the words common meaning. Arbitrary marks are inherently distinctive, one of the strongest marks along the spectrum. (STRONG)
  • Fanciful – Fanciful marks use made up words created solely to function as a trademark. Fanciful marks use words that don’t mean anything in the English language, or archaic words used outside of their common usage. These marks are the strongest type of trademarks. (STRONG)
Distinctiveness & Trade dress
Trade dress can also be protectable under trademark law if it is both nonfunctional, and distinctive. Trade dress includes both product configurations and product packaging. Product configuration can never be inherently distinctive, so you must prove secondary meaning to obtain trade dress protection. Product packaging on the other hand is protectable as it may be inherently distinctive. Packaging that is not inherently distinctive, you can obtain protection by showing the trade dress has acquired secondary meaning.

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