Trademarks

 

A trademark is a symbol, a group of words or a combination of the two which represent a business or product and which have been registered with the appropriate authorities. Trademarks can also include slogans. Unlike patents, which are governed on the US only on the Federal level, a trademark can be registered on either or both state and federal levels. A service mark is essentially the same thing but applies to services rather than products.

In California marks are registered with the Secretary of State’s office under California Business and Professions Code 14200 et sec. The same classification schedule is used by both California and the USPTO to assign the mark to a particular group of goods or services. The schedule includes categories such as Pharmaceuticals, Musical instruments, Clothing and Machinery.

Filing for a Federal mark gives specific, valuable rights including:

  • Legal presumption of validity and publication of the mark.
  • Ability to bring legal action concerning the mark in Federal Court
  • Use of the US trademark to obtain registration in other countries

Prevent of the importation of infringing goods

When filing for a trademark likelihood of confusion is a significant issue. Likelihood of confusion means that the new mark is so similar to a pre-existing mark that the public might not be able to discern a distinction between them. The concern is that the marks would make it unclear as to the source of the goods or services. The likelihood is significantly less when the two marks are in different categories. For example, you would most likely not be able to register a mark in computers that contained the word “Apple”, but there is an employment agency that has a trademark for “Appleone”. Since 1973 the US has used the International Classification System of goods and services. (USPTO) It provides broad categories (see above) which are then broken down into more precise areas. A trademark may be filed in multiple classes when appropriate.

Even if your potential mark is not at all confusing, you must have actual intent to use it. (15 USC 1051(b)(1). You cannot register a trademark, for example, just because you want to keep others from using it. For example, one way to demonstrate intent is to have a business plan or samples of the goods to be covered by the mark.

When you apply for a mark you must include a drawing of the mark. (15 US 1051(a)) There are two types of acceptable drawings. A “standard” drawing is black and white and claims no protection of the font as part of the mark. A “special” drawing can be in color if the font or color is claimed as part of the mark. (USPTO)

Each mark remains in force for 10 years, which can be extended every 10 years by filing the appropriate form and paying the requisite fee. (15 USC 1058(a)) It is the responsibility of the owner of the mark to enforce it and prevent it from being used as anything but the trademark. If the term becomes generic, the mark is canceled. That is why companies that own marks like Xerox and Kleenex regularly run ads reminding that those words are specific products and should not be used in place of “copy” and “tissue”. An example of one mark that has been turned into a generic term and lost the protection is “Aspirin”.

Additionally, there are common law rights for trademarks, but protection of such marks is limited. Once a mark has become associated with the particular goods or service in a specific geographic region, a common law trademark is born. The rights are limited to that geographical region and provide no rights should you expand to other parts of the country. (USPTO) It can be difficult to enforce common law rights, as well as very expensive. When a common law mark is challenged by a registered mark it often makes more sense to give up the mark then to spend hundreds of thousands of dollars to defend it.

While a US registration provides protection against items brought into the country, it does not confer rights in any other country. To do that you must register your mark under the Madrid Protocol, which is administered by the World Intellectual Property Organization. Essentially, that registration leads to the ability to register your mark in any country that is signatory to the agreement. However, the ultimate decision on registration will be based on the laws of that country. (USPTO)

You should consult an attorney with experience in trademarks and business law to register and defend your mark.