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Trademarks FAQ

What is a “trademark” and/or “service mark”?

A “trademark” is a word, design or combination used by an individual or a business to identify its goods or services.  In some cases a trademark can also be a sensory mark–a sound, a color or a smell.  While marks identifying services rather than goods are technically referred to a “service marks” we will use the term trademarks to include service marks.  Trademarks protect names used to identify goods (or services) and their source of origin.

A mark is any word, name, symbol, or design that identifies a product or service.  A trademark identifies a product (for example, Coca‑Cola).  A service mark identifies a service (for example, Holiday Inn).

How long do trademark rights last?

Potentially a trademark can last forever, provided the owner continues to use the mark and comply with renewal requirements.  However, if you stop using for three years or more, this may be considered “abandonment” and you may lose the trademark unless you can demonstrate a good reason for the non-use

Can trademarks be cancelled?

The Trademark Office may initiate proceedings to cancel a trademark that was improperly obtained.  The Federal Trade Commission (FTC) has the statutory power to cancel trademarks it finds generic or prohibit the use of trademarks it finds constitute false advertising.  However, in 1980, Congress denied the FTC appropriations to proceed with a cancellation for generic reasons when it sought to cancel the “Formica” trademark.  The Food and Drug Administration also has the authority to prohibit the use of trademarks it finds illegal under the Food and Drug Laws.

I thought up a great name. When should I use or register it?

For many years it was necessary to first make a bona fide commercial use in interstate commerce of the name or mark before you were able to register a trademark.  Only after you made such use, could you file for registration.  Changes in U.S. trademark law also permit you to file on the basis of “intent to use” and to maintain that application for up to three years.  However, registration still requires that the applicant prove use has occurred.

How can I protect my trademark other than registration?

Employ a professional “watch” organization or your trademark lawyer to review trademarks being published for opposition in the Trademark Office and notify you of similar marks;

  • Ask your employees, friends and customers to report any similar marks;
  • Issue demand letters to those who are using similar marks and sue them if they do not discontinue their infringing behavior; and
  • File your trademarks with the United States Customs Office.  Customs will prevent infringing goods from entering the country

Are markings suggesting trademark protection essential?

No, but they are important and should be used.  It is suggested that the trademark claimant use “tm” or “sm” (servicemark) for marks which are claimed as the exclusive property of the trademark owner, but not yet registered.  If your client has registered its mark, it may use ® (or “Registered in the U.S. Patent and Trademark Office” or Reg. U.S. Pat & Tm. Off.”) which should be placed somewhere near the trademark or the legend asterisked to the mark itself.

What are the benefits of marking?

Marking provides certain procedural advantages to the owner when attempting to enforce the mark.  You cannot obtain lost profits and damages, if you don’t use the notice.  However, marking need not be made each and every time the mark is used.  It need only be used in a fair representative number of cases.  Marking may also be important if you have a weak unregistered mark and you are attempting to build secondary meaning in your mark in order to get it registered.  Similarly, if you have a very popular mark which is in danger of becoming generic, make sure you mark it.

Is there a danger that my mark can become “generic”?

If the owner of a mark permits widespread use of the mark to describe a general class of products, the exclusive right to the mark may be lost.  Two examples are cellophane and aspirin.

What procedures should you follow when you wish to adopt a name for use as a trademark?

  • Determine if the mark is capable of registration and protection;
  • Search to determine if someone already owns the mark;
  • Begin the registration process for the mark as soon as possible, either on the basis of use (if you have made use), or “Intent to Use” if you intend to use in the future.  The “Intent to Use” law requires a “bona fide intent to use”.  Bona fide intent is not generally questioned.  The purpose of requiring such intent is to prevent someone from filing a bunch of trademarks and “warehousing” them, for purposes of later resale; and
  • “Police the Mark,” i.e. set up procedures to watch for infringes and to take appropriate action to get them to stop such infringing uses.

What is the procedure for registration in the U.S.?

Application for trademark registration occurs before an administrative tribunal.  The Trademark Office examines your application and permits it to go forward or denies it.  If you lose your arguments for registration, you may then appeal that adverse decision to the Trademark Trial & Appeal Board.  After you clear the examination hurdle your mark is published in the Official Gazette for Opposition.  Third parties may then engage in a trial like proceeding (an Opposition) to prevent the registration of a mark.  These are all “administrative” proceedings which affect only registration and not use in the market place.  You must go into Federal Court to get an injunction or damages.

How do you search to see if someone else has already adopted a trademark?

You can try to search for a trademark on your own to see if any obvious problem pops up as a first step, but if you expect your business or product to become major, and the name will be important to you, you’ll want to retain an experienced trademark lawyer to do it the right way.

If you wish to proceed on your own, the sources you should check include:

  1. Lexis, Dialog or other computer services which provide on-line searching;
  2. The Federal Trademark Register, a book, published yearly, which lists all federally registered trademarks (as of the book’s publication date).  Computer searches are more up-to-date and useful;
  3. All telephone books in your area and in major cities.  Using a CD-ROM of business names is more up to date and comprehensive;
  4. Trade journals from your industry;
  5. Trade Associations, which sometimes maintain lists of trademarks in their industry;
  6. State and local assumed name certificates and doing business as filings;
  7. Corporate registers in your state and the other 49 states.  Please note partnerships, LLPs, LLCs may be listed on separate registers and a corporate name search may not turn up all company names which are registered.

Do you really have to search?

Case law is increasingly indicating that failure to “adequately search” will leave the “innocent” infringer liable to pay over profits and perhaps even pay punitive damages and attorney’s fees.

What remedies are available for infringement of intellectual property rights?

The owner of the mark may ask the appropriate court to grant a Temporary Restraining Order and a Preliminary or Permanent Injunction to prevent and/or stop further infringement.  Allegedly infringing items or articles can be impounded while the action is pending and may be ordered destroyed or subject to other disposition if there is an infringement.  An infringer can be liable for actual damages plus additional profits of the infringer or statutory damages.  An infringer could be held liable for injury to business reputation or the dilution in the value of the copyright, patent, or trademark.  Costs and attorneys’ fees sometimes also may be awarded to the prevailing party.

How are damages calculated?

If your trademark has been infringed, you may sue to recover:

  1. Actual damages, including lost profits, and injury to reputation.  (While the Court has the discretion to double or triple this award if it deems it appropriate in the interests of justice, such awards are not frequently made.) or;
  2. Defendant’s profits (plaintiff need only prove defendant’s gross sales, which will be awarded in their entirety unless defendant proves deductions for costs),
  3. Attorney’s fees, plus
  4. Post-Judgment Interest

What may not serve as a trademark? What is not registerable?

Certain words or symbols cannot be appropriated as a trademark, and may not be registered under the Federal law known as the Lanham Act.  The following are examples:

  • Generic words such as piano, concrete, cigarette, or car;
  • Descriptive or geographical terms cannot be registered unless they have acquired a secondary meaning.  A mark acquires a secondary meaning when, through long usage; the public identifies the mark with a particular product.  For example, Best Western Motels involves a mark which has a secondary meaning;
  • Geographically descriptive marks, for example, the name of any state, city or foreign nation.  You may register such a mark if it is not generally identifiable as a source of the goods, or if you build secondary meaning over time through sales and advertising;
  • A surname, except if you build secondary meaning over time through sales and advertising;
  • Immoral or deceptive marks;
  • Scandalous, immoral or used in a disparaging matter;
  • Suggesting a false connection with persons, institutions, beliefs or national symbols;
  • Flags, coats of arms or other insignia of the U.S.;
  • Trade names, unless used on goods or services in the same way a trademark is used; and
  • Certain words and phrases covered by special statutes providing for exclusive use by certain organizations, such as trademarks of the Boy Scouts, the American Legion, the Veterans of Foreign Wars and the Daughters of the American Revolution and any symbols of the “Olympics”.

Can we use our corporate name as a trademark?

A corporate name may serve as or become a trademark if it is affixed to goods or used to identify a service (in advertising, on business cards, or letterhead).

What is secondary meaning?

Secondary meaning arises when consumers have come to identify a trademark with you over time.  In that case a descriptive mark that you would not have been able to register initially may achieve trademark status and be subject to registration, at some time in the future, after sufficient use has been made to prove secondary meaning.

What is “trade dress”?

Trade dress is the total appearance of a product, including its packaging, label, shape, and size.  Trade dress may also include physical structures associated with a particular product or service, such as the “golden arches” of McDonald’s.  Trade dress may qualify as a protected trademark or service mark if it is distinctive and identifies the source of a specific product or service.

Inside Trademarks FAQ