Brandt D. Madsen 2013-02-01 02:42:11
Trademark FAQs Business owners routinely ask questions about the names and phrases they use to sell, advertise, and promote their goods and services. A brief review of the most frequently asked questions (FAQs) can be beneficial to anyone addressing these trademark issues and may provide direction as to how to proceed. 1. What is a trademark? Simply stated, a trademark is a word, symbol or marking that indicates the source of a product or service. It helps identify a person or a business as the source of certain goods and services offered for sale and to distinguish that source from others in the marketplace. Trademarks are tied to goodwill as they assure the consumer that goods or services offered under the mark are from a particular source and will be of a known quality. 2. What can be trademarked? A name, word, phrase, logo, symbol, design, image, or any combination thereof that a business associates with its goods and services can be protected as a trademark. For example, McDonalds Inc. uses several trademarks, such as the name “McDonalds,” the phrase “I’m lovin’ it,” and the logo of the “golden arches,” among others, all in an effort to distinguish its restaurants and products from those of its competitors. And, although used less frequently, a trademark may also be a color, smell, or sound. For example, NBC uses its famous three-note chime “G –E – C” to distinguish its programming from competing programming, and Owens Corning uses the color pink to distinguish its insulation products from those of its competitors. 3. What cannot be protected as a trademark? Generally, a trademark that is descriptive of the goods and services associated therewith or that is too similar to an established trademark is not eligible for trademark protection and should be avoided. In particular, beginning to use a trademark that is too similar to another established trademark can lead to trademark infringement. 4. Why should I get a trademark? Trademarks perform at least a dual role for a business; not only do trademarks add value to the business through branding, but they also protect the goodwill associated with the business. Trademarks increase brand recognition by distinguishing the product of a business from those of its competitors and making it easier for customers to identify the source of the product. In addition, trademarks are enforceable against competitors that try to encroach on the goodwill of the business and confuse customers by selling a competing product of lesser quality under the same brand name. In this dual role, trademarks become “intangible” assets that build the value of the business. Indeed, if the business is ever sold or taken public, valuations of the business will include the intrinsic worth of any trademarks and the goodwill associated therewith. 5. How do I get a federal trademark? Assuming that the proposed trademark qualifies for protection (see FAQ 3 above), rights to the trademark begin as soon as the trademark is “used in interstate commerce” in association with goods and services. “Use in interstate commerce” generally means the actual sale of a product to the public with the trademark attached and involves sending the goods across state lines. With regard to services, it means offering a service to customers in another state or providing a service that affects interstate commerce. 6. Now that I am using a trademark, do I need to register it? Yes, at the federal level. While registration at the state level provides little, if any, benefit, registration of the trademark with the United States Patent and Trademark Office (USPTO) gives a company the right to use and to protect the registered trademark nationwide. Additionally, other advantages of a federal trademark registration include: • Public notice of your claim of ownership of the trademark; • A legal presumption of your ownership of the trademark and your exclusive right to use the trademark nationwide on or in connection with the goods/services listed in the registration; • The ability to bring an action concerning the trademark in federal court; • The use of the U.S. registration as a basis to obtain registration in foreign countries; • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; • The right to use the federal registration symbol ®; and • Listing in the USPTO’s online databases. 7. Can I get a trademark before I use it? No, but before a company begins to use a trademark, the company can reserve rights to the trademark. The company must file a federal trademark application at the USPTO and indicate it has a bona fide “intention to use” the trademark in interstate commerce. Once reserved, the company has up to three (3) years to actually begin using the trademark in interstate commerce and prove to the USPTO that it is doing so. 8. Do I need to trademark my company name? The majority of business owners use the name of the company in association with the products the company sells, thus creating a trademark in the company name. As such, the company name should be registered as a trademark at the USPTO. On the other hand, if the company does not use its name in association with the products being sold, but instead uses another name, slogan, etc. as the trademark, then the company should federally register that trademark. Nevertheless, a company oftentimes will utilize one or more trademarks, including its company name, on the products it sells. Each of these trademarks, including the company name, should be federally registered. 9. Does TM mean the mark is registered? No, but it does mean the company is claiming rights in the trademark. If a company wishes to claim rights to use a trademark, the company should use the “TM” (trademark) or “SM” (service mark) designation to alert the public to the claim of ownership of the trademark, regardless of whether the company has filed an application for federal registration with the USPTO. A company may only use the federal registration symbol “®” after the USPTO actually registers the mark, and not while an application is pending. 10. When is a trademark search advised? A trademark search is advised any time a company proposes to use a new trademark. A search can help determine if the company will be the first to use the trademark in association with the particular goods and services. If an adequate search is not conducted, the company runs the risk of beginning to use a trademark that may infringe on another’s established trademark, which may result in unnecessary lawsuits, as well as having to rebrand, destroy inventory, or pay significant licensing fees. 11. How long does it take to get a federally registered trademark? While the actual federal trademark registration may take more than a year to acquire, priority in the trademark is established at the time of filing the application. Schmeiser, Olsen & Watts LLP provides free initial consultations to help business owners evaluate whether it may be advantageous to pursue trademark protection of the business name, or other source indicator, that may serve to distinguish the business, as well as its goods and services, from those of others. Brandt D. Madsen is an associate intellectual property attorney in the law firm of Schmeiser, Olsen & Watts LLP and is based in the firm’s Mesa, Arizona office. He represents clients in intellectual property litigation and in all stages of patent and trademark prosecution. He focuses his practice in the areas of the mechanical-related arts. Brandt earned a J.D. from The Franklin Pierce Law Center (now The New Hampshire School of Law) with concentrations in intellectual property law (cum laude) and a B.S. in mechanical engineering from Brigham Young University.
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