What is a Trademark and how do I obtain one?

Trademarks

Trademarks or service marks can account for a substantial portion of a business' value. A trademark can be a word, name, symbol or device which indicates the source of goods and is capable of distinguishing those goods from goods of others. Trademarks are property. (Service marks are considered trademarks, which relate to services rather than goods). They can be used for competitive advantage in the marketplace, often influencing buyer behavior and helping to create market dominance. As purchasers become brand conscious, trademarks become valuable. Businesses zealously protect these assets, especially when the marks represent a business' quality and goodwill.

Examples of Trademarks

Unlike patents or copyrights, when properly used and protected, trademarks have infinite duration. Some well known examples include the following:

KODAK for film Single word (fanciful)
APPLE for computers Single word (arbitrary)
LAND O LAKES for butter Word string
IT'S THE REAL THING for Coke Slogan
PILLSBURY for cake mix Name
COKE for soft drink Name
IBM for computers Letters
4711 for cologne Numbers
Gerber baby face Drawing
Orange back pocket tab for LEVI jeans Device
NBC chimes for broadcasts Sounds
Golden arches for restaurant Sign
Circular thermostat for Honeywell thermostat Product Design
Pinch Bottle for Whiskey Package design
Pink for insulation Color

Selection of Trademark

Selection of a trademark is important in terms of an owner's ability to obtain registration, distinguish goods or services, and prevent others from using the mark. The more arbitrary or fanciful (i.e., EXXON, KODAK, SHELL gasoline, CAMEL cigarettes) the better. Avoid "genericide," or generic use of a mark (i.e. ZIPPER, ASPIRIN, ESCALATOR, NYLON) or risk losing trademark status. Genericide occurs from using the mark to identify an entire class of products instead of a particular product brand. One should not name their new chair invention "CHAIR."

Infringement of Trademark

The test for trademark infringement is whether the accused infringing mark is "likely to cause confusion, or to cause mistake, or to deceive." The "likelihood of confusion" is as to source, affiliation, connection or sponsorship.

Actual confusion or deception of purchasers is not necessary for trademark infringement, but proof of actual confusion can be conclusive in proving a likelihood of confusion. A lack of intent is not a defense to trademark infringement.

Remedies for Trademark Infringement

Remedies for trademark infringement include Preliminary Injunctions, Permanent Injunctions, Damages (both actual and punitive), Accounting of Profits, Freezing of Assets, and Impoundment or Destruction of Articles.

Trademark Searches

Avoid infringing someone else's trademark by conducting a trademark search. Adopting a mark already in use may be trademark infringement and may result in a significant damage award, including destruction of all trademark materials and an injunction to halt further use. A search can save on expenses of preparing signs, advertisements, packaging, letterhead, yellow page advertisements, and eliminate awards for infringement damages.

A preliminary trademark search can be completed quickly (within hours). Frequently, proposed marks are determined to be unavailable because of existing federal or state registrations. More detailed searches may be performed to cover state and federal registrations, trade journals, telephone books, company name listings and other source directories. The cost of a full search is insignificant compared to the risks of adopting a mark that is confusingly similar to another mark.

Certain basic research can be conducted by yourself, including review of local phone and business directories, client surveys, and inquiry with the Secretary of State's Office.

Trademark registration

Trademark registrations can be either state or federal.

Wisconsin

In Wisconsin, a registration is evidence of adoption of the mark and the facts necessary to register the mark. Rights to a mark are acquired through use and not merely by registration. A business using a mark for a number of years without registering it could have rights over a business just beginning to use it, regardless of the new firm's registration with the Wisconsin Secretary of State's Office. Rights may be acquired by using a mark to such an extent that the public comes to associate it with a particular party so far as a certain product or service is concerned. However, until a court determines exactly who has such rights, no party has exclusive rights to a mark regardless of whether the mark has been registered with the Secretary of State.

Wisconsin Statutes do not require the registration of marks with the Office of the Secretary of State. Consequently, many marks are in use without being registered, therefore the Secretary of States Office has only a partial listing of those in use by businesses operating in Wisconsin. Other sources should be investigated.

Federal

Trademark rights are acquired through use and not merely registration. "Use" requires that the mark be placed in any manner on the goods or their containers or the display associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale. Use of a service mark includes the use or display of the mark in the sale or advertising of the services.

Advantages of Federal Registration

Registration gives extra value and protection to the mark, including:

Nationwide constructive use;
Use of the "®" designation;
Evidence of the registrant's exclusive right to use the mark;
Right to exclude goods with the Bureau of Customs;
Establishment of "incontestability" status after five years continuous use;
Ability to bring lawsuits in federal court;
Special remedies, including injunctions, damages, attorney fees and triple damages;
Criminal penalties for counterfeiters; and
Establish priority of Internet domain names.
Procedure for Federal Application

Federal registration requires filing an application in the Patent and Trademark Office (PTO). The PTO performs a search of existing trademark applications, registrations and various general business resources. A trademark examiner also conducts an examination of the application to determine whether any statutory grounds for refusal to register the proposed mark exist.

If there are no grounds for refusal to register at the end of examination, the mark is published in the Official Gazette to allow members of the public to oppose registration. If no one successfully opposes registration of the trademark, the PTO issues a certificate of registration and enters the mark on the U.S. Principal Trademark Register. Such registration last for a term of ten years. The ten-year term is renewable indefinitely, assuming continuing use of the mark and filing of appropriate documents and payment of fees. Some of the appropriate documents include submission of an affidavit or declaration of continued use of the mark which is filed between the fifth and sixth anniversaries of registration.

Fees for Federal Registration

As of October 1, 2000, the filing fee (per classification of goods/services) is $325. There are several classifications of goods and services (i.e., paper and paper articles - Class 16; clothing - Class 25; beer, ale and porter - Class 32; communication services - Class 38). If your mark is used in a variety of classes you may decide to file in multiple classes and pay multiple fees.

If you use the service of an attorney or law firm you can expect to pay their fees to properly prepare the application materials and to shepherd the application through the PTO. Consideration should also be given to maintaining existing registrations to avoid cancellation.

Intent To Use (ITU) applications require an additional $100 fee per class for filing an amendment to allege use or filing a statement of use. Renewal application fees per class are $400.

Intent To Use Applications

There are two types of federal trademark applications: Use-based, and intent-to-use (ITU) applications.

As of November 16, 1989, federal trademark applications may be filed up to three years (theoretically) prior to actual use of the mark in commerce. Thus, applicants may effectively "reserve" trademarks. The applicant must have a bona fide good faith intention to use the mark in commerce. Actual use of the trademark is required for final trademark registration.

Requirements For Filing Federal Application

In order to file a federal application you must either have actually used the mark on your goods or services in interstate commerce or have a bonafide intent to use the mark in interstate commerce if filing under an intent-to-use (ITU) based application. Generally interstate use requires the sale of a product across state lines. Something more than a token use simply performed to claim an interstate commerce use will not suffice. If you are providing a service, it is best that such service also be provided on more than one state. A mark shall be deemed to be used in interstate commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one state or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

Tips & Information

The information provided on this site and in any associated links are intended for general guidance only. Because professional legal advice must always be specific to the facts and circumstances of a particular client, the information on this site and any associated links cannot and should not be relied upon as legal advice. ©2000,2004,2008 Anthony J. Bourget. All rights reserved.