FAQs: Trademarks
What are trademarks?
Trademarks are symbols that identify and distinguish the goods and services of a person or company. Trademark law defines "trademark" to include any word, name, symbol, device, or combinations of these. When Nike emblazons the familiar "swoosh" on T-shirts, shoes, and bags, consumers buying those products know that the products are produced by Nike. Were another company to place the swoosh on its own products, that company would be infringing Nike's trademark. Consumers would be confused as to the source of the products--consumers would think that Nike made the goods when, in actuality, another company made them. How important are trademarks? The trademark for Coca-Cola is supposedly the most widely known symbol on earth.
Duration of trademarks.
Trademarks may exist forever. The initial and renewal terms for trademarks are 10 years. Six years after registration, during the initial term, the trademark owner must send the Patent and Trademark Office (PTO) a statement that shows the trademark in use. At the end of each term, a similar statement must be sent to the PTO. (See Patent, Copyright and Trademark Procurement for more information.) Any person may petition to cancel the trademark if that person believes that he or his business will be damaged by the use of the trademark. The time limit for this petition is within five years from the trademark's initial registration. In addition, if at any time the trademark becomes the generic term for the good, the trademark hasn't been used, the registration was fraudulent, or the trademark owner is using the trademark to misrepresent the source of the goods or services with which the trademark is used, any person may petition to cancel the trademark. As an example of a trademark's becoming the generic term for the good, if Coke becomes the name for any cola product, such that consumers everywhere order "Coke" and expect to get any cola, then Coke has become a generic term indicating cola drinks.
What may be trademarked?
Trademark law defines "trademark" to include any word, name, symbol, device, or combinations of these. Terms, in general, are classified as generic, descriptive, suggestive, arbitrary, or fanciful. Generic terms or marks cannot become trademarks. An example of a generic term is the word "lite" in the phrase "lite beer." Lite is generic because it is another way to spell "light." Descriptive terms need "secondary meaning" to be registered as trademarks. Secondary meaning is an indication that consumers think of the producer and not the product. An example of a descriptive term is the term "Sportscreme" as it applies to a topical analgesic used to relieve muscle pain. Without a showing that consumers buying Sportscreme associate this product with the producer, the term is not trademarkable. The last three types of terms--suggestive, arbitrary and fanciful--are all trademarkable without a showing of secondary meaning.
Generally, most trademark terms fall into the suggestive, arbitrary or fanciful category and are trademarkable. The goals of a trademark are to associate a producer's goods and services with a particular level of quality and to differentiate a producer's goods and services from other producers' goods and services. Trademarks that meet these goals are not generally generic or descriptive.
U.S. trademark law uses two registers, or lists of trademarks, on which trademarks may be registered. The principal register contains trademarks that are suggestive, arbitrary and fanciful. Descriptive marks with secondary meaning are also on this register. The supplemental register contains all other marks, and marks on this register have few rights. Supplemental registration is important for notice, prevention of registration of federal trademarks that are similar, and building secondary meaning for descriptive marks. However, an applicant for a trademark should ALWAYS apply for placement on the principal register. If the registration on the primary register is rejected, the applicant can always amend the application to apply to the supplemental register.
Other marks that cannot become trademarks are marks that are very similar to currently registered trademarks, last names that are used only as last names (last names associated with goods or services may be trademarked), or primarily geographical terms (Phoenix Cacti, for instance). In addition, immoral, deceptive or scandalous matter or matter which may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols or bring them into contempt or disrepute is not trademarkable.
The primary reason that the Patent and Trademark Office (PTO) will deny registration to a new trademark is that another exact or similar trademark already exists for the same goods or services. For instance, if the author wishes to trademark "Cattle Call" as a name for a drinking and dining establishment, and there is already a "Cattle Call" registered for such establishments, the PTO will deny the author's registration. The PTO may also deny the registration if similar, but not exact, terms are used for the same goods or services. If "Cattle Cage" or "Cattle Callers" are existing trademarks for drinking and/or dining establishments, the PTO may deny registration for the "Cattle Call" mark. The most important criterion used to determine if a new term will be granted a trademark is consumer confusion. If consumers would be confused as to the source of the goods or services, the PTO will deny registration of the new mark. If "Cattle Cage" is the only registered trademark similar to "Cattle Call," and "Cattle Cage" is a restaurant that only serves beef products while "Cattle Call" is solely a drinking establishment, the likelihood of consumer confusion is small.
Because the likelihood of consumer confusion is important to determining whether a new term can be trademarked, the more dissimilar the goods and services are between the two terms, the better the chances of getting a trademark for the new term. If "Cattle Call" is an existing trademark for whistles used to attract cattle, and the author wishes to trademark "Cattle Call" as a term for a drinking establishment, the PTO will probably grant the new trademark. Consumer confusion is highly unlikely.
State versus federal trademarks.
States allow terms and marks to be trademarked through a system similar to the federal trademark system. If there is a state trademark that is similar to a mark being registered under the federal trademark system, the state trademark generally will not be considered as a competing mark. The owner of the state trademark can, however, contest the federal trademark. If the state trademark owner does contest the registration of the federal trademark, the federal trademark can still be approved in certain circumstances (e.g.--there may be a geographical limitation placed on the use of the trademark). In these circumstances, it is best to seek competent intellectual property counsel if one wishes to register the federal trademark.
State registration isn't as powerful as federal registration, and the benefits for state registration vary from state to state. Some states offer broad, comprehensive benefits and rights, and other states only offer limited trademark rights. For federal trademark registration, a company must be using the mark in "interstate commerce." Generally this term means that the company must be selling or advertising its goods or services in more than one state. If the company sells its goods and services in only one state, but a large variety of the company's customers are from out-of- state, the company may still apply for a federal trademark.
For instance, if a car repair company based in Mesa, Arizona wishes to register the term "Car Hospital," the company can probably secure a trademark for this term because a significant portion of the company's clientele will be visitors escaping the blustery winters of the north. If, however, the company is a yogurt shop in eastern Montana with a strictly local clientele that wants to register the mark "Humphrey Yogart," state trademark registration is recommended. If the company subsequently decides to expand into different states, the state trademark provides proof of use of the trademark for federal trademark purposes.
The owner of a state trademark may also contest registration of a federal trademark for similar marks used in similar situations. In this instance, the owner should consult with competent legal counsel. Similarly, if the owner of a state trademark wishes to expand into a state where there is a similar federal trademark, the owner should consult counsel. The interplay between state and federal trademark law and common law (law made from usage and customs that is generally derived from judicially made decisions) can be complex.
What remedies do I have if someone is using my trademark?
Any person (an infringer) who is using a trademark or a similar mark to sell products or services, where the use of the mark is likely to cause confusion as to the origin of the goods or services, may be sued by the trademark owner. A trademark owner who proves confusion may receive the infringer's profits, damages sustained by the trademark owner, and the costs of the action. In addition, a court can issue an injunction that will stop the infringer from using the trademark. (See Copyright and Patent Litigation for more information.)
How do I apply for a trademark?
Federal trademark applications on the principal register (the secondary register will not be discussed here) are divided into two types: intent-to-use and in-use. An applicant submits an intent-to-use application when the applicant has an idea for a trademark but has not yet used the trademark in interstate commerce. Within six months of approval of the trademark, the applicant must send a representative sample of the trademark as it is being used. An applicant submits an in-use application when the trademark has been used in interstate commerce. Both applications need the appropriate fee, a drawing of the mark, and a written application.
The written application must contain the applicant's domicile (generally, this is the applicant's residence) and citizenship, a description of the goods in connection with which the mark is used, a description of the mode or manner in which the mark is intended to be used on or in connection with such goods, and a statement that the person making the application believes himself or herself to be entitled to use the mark in commerce and that no other person or firm, to the best of his or her knowledge, has the right to use such mark in commerce in connection with the same goods.
The in-use application, in addition, needs the date that the trademark was first used, the date the trademark was first used in interstate commerce, and three copies of specimens showing the trademark in use. For instance, if this author wishes to trademark "Bob's Bagel Boutique," and the author has been using the trademark on his napkins, the author would include three copies of the napkins showing the trademark.
The Patent and Trademark Office (PTO) has adopted the "International Trademark Classification." The description of the goods in connection with which the mark is used is determined from these classifications. Goods and services are divided into groups called classes. Currently, there are 42 classes. Each class has a general description of the class, examples of class members and explanatory notes. As an example, Class 25 is for clothing and the examples listed include clothing, footwear, and headgear. The explanatory note for the class states that the class does not include certain clothing and footwear and directs the reader to the Alphabetical List of Goods. The International Trademark Classification is listed in the Trademark Manual of Examining Procedure, a copy of which may be found on the PTO's website.
Trademark searches.
The applicant for a trademark may choose to do a trademark search. The search benefits the applicant because the applicant will have some idea if his or her mark is trademarkable. The detriment to the applicant is that any search will cost a fee, and the fee is an additional cost beyond the fees associated with applying for the trademark.
Types of marks: trademarks, trade names, service marks, and certification marks.
Trademarks are any word, name, symbol, device, or any combination of these that are used to identify and distinguish GOODS.
Service marks are any word, name, symbol, device, or any combination of these that are used to identify and distinguish SERVICES.
Trade names (also called commercial names) mean any name used by a person to identify his or her business or vocation.
Certification marks are seldom used but are any word, name, symbol, device, or any combination of these used to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of goods or services. These terms may be used to certify that members of a union or other organization performed the work or labor on the goods or services. Examples of certification marks are "Cognac" for a distilled brandy from a certain region in France and "Union Made" for clothes.
Unlike trademarks, which an owner uses to indicate source or to distinguish her goods and services from other good and services, certification marks aren't used by the owner of the mark and they only indicate that the owner certifies the goods. The Cognac region of France owns the certification mark and certifies that the brandy with the mark Cognac originates in the Cognac area of France.
Trademark symbols and when to use them.
There are three trademark symbols: ®, TM and SM. The ® symbol is used when the Patent and Trademark office has placed the trademark or service mark on the principal or secondary register. If the trademark has not been placed on one of these registers, TM may be used for trademarks and SM for service marks (trademarks are associated with goods, while service marks are associated with services). The latter symbols provide a small amount of legal protection. Mainly, they suffice to let anyone using the trademark or service mark that the owner is seeking federal trademark protection.
Important dates and how to ensure that your mark is kept active.
A trademark may become abandoned if it has not been used and the owner does not intend to use it. Non-use of the trademark for three consecutive years is considered strong evidence that the mark is abandoned. If the owner of the mark allows the term to become the generic term for a product, the mark may become abandoned. Continued use of the mark and preventative steps taken to stop others from using similar marks will prevent the trademark from becoming abandoned.
If the applicant applied for a trademark with an intent-to-use application, the applicant must send three copies of specimens showing the trademark in use to the Patent and Trademark Office within six months of the trademark's allowance. In addition, the applicant must send another fee and a statement showing the date the trademark was used in interstate commerce, a description of the goods or services specified in the notice of allowance, a description of the mode or manner in which the mark is used on or in connection with such goods or services, and a statement that the mark is in use in commerce. The six month period may be extended for up to 24 months.
The "Section 8 and 15 Affidavit": A trademark can become "incontestable." Incontestability gives the trademark owner certain rights (the copyright act states that the registration of an incontestable mark "shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce."). The mark must be in use for five consecutive years, there must not be any pending claims in the court or the PTO about the mark, the mark must not be or has become generic, and the affidavit must be submitted on time. The time to submit this affidavit begins the fifth year after the notice of allowance and ends the sixth year after the notice of allowance. For instance, if the author received a certificate of registration on January 1, 2000, the author would be able to send in the affidavit any time between January 1, 2005 and December 31, 2005.
Even if the applicant doesn't file the Section 8 and 15 Affidavit, the applicant must send a statement to the PTO showing the trademark in use and informing the office which goods and services on which the trademark is being used. This statement must be received by the PTO during the fifth year (the time period is the same period as for incontestability).
Finally, each certificate of registration lasts ten years, and renewal must happen three months before the registration expires.