January 1, 1900
Q: What is a trademark?
A: Under federal law, a trademark is defined as "any word, name, symbol or device or any combination thereof, adopted and used by a manufacturer or merchant to identify its goods and distinguish them from those manufactured or sold by others." 15 U.S.C. ?1121. The definition under New Jersey law is very similar. NJSA ?56:3-13.1. Most commonly, trademarks are names, but they can also be symbols, logotypes, colors, fragrances, numbers, sounds, and slogans, among others. Trademarks indicate to a purchaser that the source of a particular good is the same as other goods which bear the same trademark. Proper use of the trademark in connection with the good is critical to the protectability of the mark. Examples of acceptable uses include placing the mark directly on the good or on packaging labels or a hang tag affixed to the good. Other protectable marks include service marks, certification marks, collective marks and house marks.
Q: What is the difference between a trademark and a service mark?
A: A service mark is a trademark that is used to identify services (rather than goods) of a merchant. Trademarks and service marks are legally treated very similarly for most purposes.
Q: What is the function of a trademark?
A: A Trademark creates an association between the quality of the goods/services with which they are associated. It also symbolizes the source of the goods/services, even if the source is unknown to the purchaser. For example, you (as a purchaser) may identify a certain quality to MINUTE MAID orange juice, but you may not know that MINUTE MAID orange juice is actually manufactured by The Coca-Cola Company.
Q: How are trademark rights acquired?
A: Generally, federal trademark rights are based on use, not on registration. Federal trademark rights exist from the moment a mark is used to buy or sell goods or services across state lines. To maintain such rights the use of the mark must be continuous and reasonably substantial. In certain cases, substantial use in advertising may be enough to show sufficient use to establish trademark rights. The use of "TM" or "SM" next to a word, symbol, slogan, etc. indicates that the user claims that element as a trademark or service mark. The use of "®" means the mark is federally registered. While there are important benefits to federally registering a trademark, registration is not required to create trademark rights.
Q: What are some of the benefits to federal registration?
A: Federal registration with the U.S. Patent and Trademark Office (PTO) gives the world constructive notice of the owner's claim to the mark. It also permits the owner use of the widely recognized "®" symbol in connection with the owner's goods or services. Federal registration also eases certain procedural burdens in infringement actions because it creates a presumption of ownership and right to use. Federal registration also begins the time period after which a mark may become "incontestable" and, thus, challenged under very limited circumstances. Finally, in some cases, owners of federally registered marks can recover their attorneys fees and treble damages in infringement cases.
Q: How do you choose a mark?
A: Customarily, advertisers want the trademark to describe the goods or services so that the purchaser will quickly make the association between the trademark and the product. Typically under such an approach the mark stands out in speech and text. It suggests favorable qualities of the product and reinforces the product's positioning against competitors. Unfortunately, such a method may not prove the best way to develop a legally strong trademark. One way to develop a trademark is to develop a variety of phonemes using the words that describe the goods/services. The phonemes are then rearranged in a variety of ways. This can create a fictional word that may, subliminally, create an association in the minds of the consumer between the trademark and type of goods/services. There are companies and computer programs that can do this for you. Namestormers and Macroworks each offer such services.
Q: How is the strength of a trademark determined?
A: The strength of a mark is determined on the following scale:
Weak <--------------------------------------------------------------------------> Strong
These words are terms of art that have special legal meanings with regard to trademarks.
Generic - generic words (i.e., the word by which something is commonly called) are so weak that they are not protectable as trademarks. For example, you could not use the word CHAIR as a trademark for chairs.
Descriptive - descriptive marks convey an immediate idea of the characteristics of the goods/services (e.g., CHAPSTICK for lipstick for chapped lips).
Suggestive - suggestive marks require imagination or thought to reach a conclusion about the characteristics of the goods/services (e.g., RENT-A-WRECK for car rental services).
Arbitrary - arbitrary marks have meanings independent from their use as trademarks, but their ordinary meaning is unrelated to the goods/services (e.g., BABY RUTH for candy bars).
Fanciful - a fanciful mark does not have meaning independent of its use as a trademark (e.g., KODAK for photographic goods and services).
Secondary Meaning - a mark can acquire secondary meaning when the association between the mark and its related goods or services becomes very strong in the minds of consumers in the market place (e.g., XEROX for photocopying goods and services). If that association becomes too strong, the market place may no longer distinguish between the trademark and the goods or services. If this happens, the mark could become generic and lose trademark protection (e.g. THERMOS, CELLOPHANE, ESCALATOR, KEROSENE and YO-YO were all originally trademarks which became generic).
Q: How can I find out whether someone else is using a trademark?
A: Many companies offer trademark search services. Generally, these searches will help identify other companies that are using similar marks for similar goods or services. A good search should cover not only the U.S. Patent and Trademark Office records, but also state trademark records as well as a variety of other sources (e.g. magazines and trade journals) as well as domain name registrations. These searches can be used to evaluate whether to adopt a trademark as well as to uncover potential infringers of a trademark already in use. Depending on the time frame, most professional searches start at about $400. We customarily use Thomson & Thomson to perform these searches. You can also search federal registrations at the U.S. Patent and Trademark's website.
Q: What is the Federal registration procedure?
A: There are two alternative paths to Federal registration. Trademarks may be registered based upon either (a) use of the mark in interstate commerce or (b) a bona-fide intent to use the mark in commerce. Typically, the trademark owner's attorney would prepare and file a registration application along with the PTO's applicable fee (currently, $375 for single class of goods/services). It is not uncommon for the Examining Attorney at the PTO to have objections to the application which can be addressed by the trademark owner's attorney. Once the application is approved, the mark will be published in the Official Gazette giving third party's notice of the pending registration of the mark. If no third party files a Notice of Opposition within the prescribed time period, the mark proceeds to registration and the PTO will issue a certificate of registration. In the event that a Notice of Opposition is filed, registration will be delayed until the opposition is addressed to the satisfaction of the PTO. In the case of an intent-to-use application, the Examiner, after receipt and satisfactory review of the application publication in the Official Gazette, will issue a Notice of Allowance. The applicant will have six months (subject to extension) to begin actual use of the mark. The mark will not proceed to registration until it has been used in trade and interstate commerce. Upon such event, the applicant must file a sworn Statement of Use as to the date of first use and specimens of use. Depending upon the strength of the mark whether based on use or intent to use, the mark will be registered on either the Principal Register or Supplemental Register.
Q: How long does federal registration take?
A: While every application is different, most applications take between 12 - 18 months to mature to registration
Q: How much does federal registration cost?
A: While all applications are different, the cost for registering a word mark ranges between $3,000 - $5,000 over the 12 - 18 month application process.
Q: What if my trademark is registered as a domain name by another party?
A: Trademark owners possess certain rights with respect to registered domain names which contain their mark or a confusingly similar mark. In an overwhelming number of cases, the World Intellectual Property Organization (WIPO) and U.S. courts under the Anticybersquatting Consumer Protection Act (ACPA), have upheld the rights of trademark owners to register their trademarks, cause others to transfer or cancel their domain name registrations and, in some cases, collect monetary damages.
Posted in: Intellectual Property & Technology