Trademark Law

Trademark law protects a word, name or symbol, the trademark, that is used to identify the goods of a company so as to build brand identity and distinguish a company’s goods from the goods of competitors.  A service mark is the same, except that it relates to services provided by a company instead of products sold by the company.

Trademark law is sometimes grouped with copyright law and patent law.  These three areas of law are sometimes referred to as “intellectual property law.”  Each of the three areas of intellectual property law are; however, quite different from each other and serve different purposes.

A copyright protects original works of authorship which have become fixed in a tangible form.  That includes novels, poetry, movies, songs, and computer software.  Architectural plans also have more limited rights.  There is a more complete discussion of copyright law on the Copyright Law Practice Area page of this web site.

A patent is the grant of a property right to an inventor.  The Harrison Firm, PC practices trademark and copyright law, but not patent law.  Basic information about patents can be found on the web site of the United States Patent and Trademark Office  of the Department of Commerce.

The difference between an assumed or fictitious name of a business and a name used as a trademark or service mark is often misunderstood.  An assumed or fictitious name is frequently used for businesses conducted in the form of a proprietorship.  That is, Joe Blow doing business as XYZ Company.  It is usually inadvisable to conduct business in the form of a proprietorship.  An assumed or fictitious name is sometimes used instead of the actual name of a corporation or other form of business entity.  Each state has its own requirements regarding use of assumed or fictitious names.  You should consult with a lawyer in your state regarding the form of entity in which you should conduct business and the requirements for using an assumed or fictitious name.

A trademark or service mark is used to identify the product or service of the company.  An assumed or fictitious name is used to identify the company itself.  This is an important distinction because a trademark or service mark can be lost if it not used to refer to the products or services of the company.

A trademark or service mark arises from use and not from registration.  It is possible for a company to have what is known as a “common law” trademark or service mark.  A common law trademark or service mark is a right under state law which has developed by courts in deciding cases.  States also have a statutory system of registering marks which grants rights in that state.

Marks can be registered on a federal basis with the United States Patent and Trademark Office of the U.S. Department of Commerce.  Marks registered with the USPTO must be renewed every 10 years.  There are significant advantages in registering a mark with the USPTO.  Marks can be registered on the “Principal Register” of the USPTO or on the “Supplemental Register.”  It is much more advantageous for a mark to be registered on the Principal Register.  Marks registered on the Supplemental Register are descriptive marks that have not acquired “secondary meaning.”  Secondary meaning refers to otherwise descriptive marks that have been used in commerce for at least five years and because of such use have come to be known to the public as being associated with the goods or services of a particular company.

A few of the significant advantages of registering a mark on the Principal Register of the USPTO are that the mark has nationwide priority, there is an automatic right to sue in federal court, and a successful plaintiff may recover money damages.

Registration on the Supplemental Register also gives the registrant the right to sue in federal court, as well as the right to use the symbol ®.  Registration on the Supplemental Register will also block a subsequently filed application for the same, or confusingly similar mark, from being registered for the same or similar goods or services.  An applicant with a common law mark having prior use will not only have to file an application for registration, but it will also have file a legal proceeding to cancel the mark on the Supplemental Register.  This increased cost can serve as a deterrent to subsequent applicants, even those who can establish prior use.

After five years of continually using a mark which is registered on the Principal Register, it is then possible to file to have a mark declared “incontestable.”  That’s a bit of a misnomer, because being declared incontestable does not cut off all claims, for example that your mark has become a generic term.  Being declared incontestable does add significant rights over just being registered on the Principal Register.  Some of those benefits are that others cannot argue that your mark is “confusingly similar” to another mark, that it is “functional”, or, for a descriptive mark, that it lacks “secondary meaning.”  If any of those assertions were proved, a court could order that registration of the mark be cancelled.

When considering registration of a mark, it is important first to have a qualified professional conduct a search for marks which your proposed mark might infringe.  That search should include not just marks registered with the USPTO, but also marks registered under state law.  Since the priority of a trademark or service mark arises from use, it is important when considering registration of a mark also to conduct a search of common law marks.

Not all trademarks are equal.  Some are stronger than others.  The strongest marks are those that are “fanciful,” followed by those that are “arbitrary,” then those that are “suggestive,” with the weakest being “descriptive” marks.  Words or phrases that are, or later become, “generic” are not entitled to registration or protection.

The mistake many companies make is that they come up with a name or phrase which is descriptive of their product or service and want to trademark that name or phrase.  Words or phrases which are merely descriptive of the product or service are not entitled to registration on the principal register unless it can be shown that the word or phrase has been used in commerce and over time has acquired a “secondary meaning” by which it has come to be associated with the company’s goods or services.  Even if is possible to register a descriptive mark, it is a weak mark.  Its scope is more likely to be limited by a court and it would generally be better to come up with a different mark to register.  It is much wiser to include a lawyer experienced in trademark law in the initial planning process of the company when selecting an appropriate trademark for it’s business.

For a general discussion of the strength of marks and an example of what can go wrong in registering a descriptive mark, see the article “Don’t Fall in Love with Your First Idea” by David G Harrison which is posted in the “Newsletter” category on this web site.

If the product is also to be sold in foreign countries (or the service is to be performed in foreign countries), it is also possible to apply for registration of a company’s trademark or service mark through a standardized procedure in those countries which are parties to the “Madrid Protocol” treaty.  There are presently 87 such countries. The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland, administers international registrations.

The above comments are intended to illustrate general principles only.  There are often exceptions to general rules which apply in certain circumstances.  Laws change over time by subsequent enactment of legislation and by court decision.  Legal principles can differ from one jurisdiction to another.  Particular factual circumstances may result in a different legal conclusion.  If you have a question about a particular factual situation you should consult with an attorney.

David Harrison has significant experience with trademark applications, and with opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the USPTO.  He has also represented companies in trademark matters in federal court.  He has advised companies, large and small, regarding trademark matters.

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