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A trademark is a word, phrase, symbol or design, or combination
of words, phrases, symbols or designs, which identifies and
distinguishes the source of the goods or services of one party
from those of others. Examples of well-known trademarks include
Coca-Cola for soft drinks, Kodak for film, Nike for footwear,
and Microsoft for software.
Full
Service Trademark Counseling
The attorneys at Malin Haley DiMaggio Bowen & Lhota are experienced in protecting and enforcing common
law trademark rights as well as those subject to federal and/or
state registration.
The attorneys at Malin Haley DiMaggio Bowen & Lhota provide full-service counseling in determining the
availability of marks and the feasibility of obtaining federal
or state registrations for trademarks or service marks. We
conduct computerized searches for previously registered marks,
and pending applications which might bar an application.
The firm handles all aspects of Trademark Law including
the preparation of amendments in response to communications form the PTO, the maintaining and
monitoring of extensive domestic and international trademark portfolios and the handling of
litigation involving the unauthorized use of trademarks and service marks, trade dress, as well
as unfair competition and false advertising claims under Section 43(a) of the Lanham Act
Trademark
Rights
Trademark rights arise from either
actual use of the mark, or from the filing of a proper application
to register a mark in the Patent and Trademark Office (PTO)
stating that the applicant has a bona fide intention to use
the mark in commerce regulated by the U.S. Congress. Federal
registration is not required to establish rights in a mark,
nor is it required to begin use of a mark. However, federal
registration can secure benefits
beyond the rights acquired by merely using a mark. For example,
the owner of a federal registration is presumed to be the
owner of the mark for the goods and services specified in
the registration, and to be entitled to use the mark nationwide.
There are two related but distinct
types of rights in a mark: the right to register and the right
to use. Generally, the first party who either uses a mark
in commerce or files an application in the PTO has the ultimate
right to register that mark. The right to use a mark can be
more complicated to determine. This is particularly true when
two parties have begun use of the same or similar marks without
knowledge of one another and neither has a federal registration.
Only a court can render a decision about the right to use,
such as issuing an injunction or awarding damages for infringement.
It should be noted that a federal registration could provide
significant advantages to a party involved in a court proceeding.
Federal
Trademark Registration
American companies can have trademark
rights under both state and federal law. Under state law, the
first to use a particular mark is the legal owner of that mark.
A trademark owner can gain valuable additional rights by registering
his trademark under the federal Lanham Act. The Lanham Act is
administered by the PTO. To be eligible for federal registration
the mark must be used in interstate or foreign commerce. It
also must not fall into certain forbidden categories listed
in the Lanham Act. For example, it is forbidden to use the flag
of a foreign country or the name of a living person without
that person's permission. Additionally, inaccurate geographic
terms cannot be used as trademarks, such as Idaho for potatoes
grown in Maine. Most importantly, the general name for a type
of product cannot be a trademark. Every maker of that product
must be free to use that word. For example, Sony is a well-known
trademark for televisions and radios, but no one can have trademark
rights to the words television or radio for such products.
Life of a
Trademark
Unlike copyrights or patents, trademark
rights can last indefinitely if the owner continues to use
the mark to identify its goods or services. The term of a
federal trademark registration is 10 years, with 10-year renewal
terms. However, between the fifth and sixth year after the
date of initial registration, the registrant must file an
affidavit setting forth certain information to keep the registration
alive. If no affidavit is filed, the registration is canceled.
What
Trademarks Cannot Protect
Trademark law cannot cover descriptive or generic
words or phrases, which are unregisterable because these word and phrases are common and are
allowed to remain in the public domain. For example, "Hardware and Home Supply Center"
cannot be registered as a trademark since the phrase describes the product and services it is
associated with.
Take the
Time to Search
An applicant is not required to
conduct a search for conflicting marks prior to applying with
the PTO. However, it is recommended and often an invaluable
business decision. Consumers often make their purchasing choices
on the basis of recognizable trademarks. Consequently, a registered
trademark may influence purchasing decisions and is therefore
a recognizable business asset that may contribute to the value
of a company. It is an unwise business decision to launch
a new product or service without commissioning a comprehensive
trademark search. Your company may lose its rights to its
business name, trademarks and service marks if they are not
carefully selected and properly used. Companies often invest
considerable sums of money promoting a new product or service
only to be forced to destroy their marketing materials and
start over because the mark was already in use by another
company. It is advisable to avoid costly errors in new product
and service development by taking the time to properly protect
your company's trademark assets.
In evaluating an application, attorneys
at Malin Haley DiMaggio Bowen & Lhota will conduct a comprehensive
search and notify you if a conflicting mark is found. To determine
whether there is a conflict between two marks, the PTO determines
whether there would be likelihood of confusion, that is, whether
relevant consumers would be likely to associate the goods
or services of one party with those of the other party as
a result of the use of the marks at issue by both parties.
The principal factors to be considered in reaching this decision
are the similarity of the marks and the commercial relationship
between the goods and services identified by the marks. To
find a conflict, the marks need not be identical, and the
goods and services do not have to be the same.
Types
of Applications for Federal Registration
An applicant may apply for federal
registration in two principal ways. (1) An applicant who has
already commenced using a mark in commerce may file based
on that use (a "use" application). (2) An applicant
who has not yet used the mark may apply based on a bona fide
intention to use the mark in commerce (an "intent-to-use"
application). For the purpose of obtaining federal registration,
commerce means all commerce which may lawfully be regulated
by the U.S. Congress, for example, interstate commerce or
commerce between the U.S. and another country. The use in
commerce must be a bona fide use in the ordinary course of
trade, and not made merely to reserve a right in a mark. Use
of a mark in promotion or advertising before the product or
service is actually provided under the mark on a normal commercial
scale does not qualify as use in commerce. Use of a mark in
purely local commerce within a state does not qualify as "use
in commerce." Trademark rights can also be obtained by
filing a proper application to register a mark in the PTO
stating that the applicant has a bona fide intention to use
the mark in commerce regulated by the U.S. Congress.
A United States Trademark registration
provides protection only in the United States and its territories.
If the owner of a mark wishes to protect a mark in other countries,
the owner must seek protection in each country separately
under the relevant laws.
TM, SM or
®
Anyone who claims rights in a mark
may use the TM (trademark) or SM (service mark) designation
with the mark to alert the public to the claim. It is not
necessary to have a registration, or even a pending application,
to use these designations. The claim may or may not be valid.
The registration symbol, ®, may only be used when the
mark is registered in the PTO. It is improper to use this
symbol at any point before the registration issues.
After conducting its own examination
of proposed trademarks, the PTO publishes these trademarks
in a magazine called the Official Gazette. This permits members
of the public to object if they think the trademark should
not be registered.
The owner of a mark may sue an infringer
and is entitled to an injunction forbidding the infringer
from continuing to use the mark. In certain cases, the trademark
owner may also be entitled to an award of monetary damages.
Even if the marks are not identical, or even if they are used
on different types of products, a court can still declare
an infringement if it finds that the public might be confused.
Courts look at many different kinds of evidence to decide
if the public might be confused. Relevant factors include
consumer familiarity with the plaintiff's trademark and the
intent of the defendant. If a trademark is considered famous,
the owner of that mark may prevent others from using it, even
if the public would not be confused. This is to prevent the
dilution of the trademark.
Domain
Names
Although you may have registered
your company's domain name, there is no guarantee that the
name has not already been taken by another business as a trademark.
Without proper protection, your company's reputation and goodwill
can be held hostage by cyber squatters. (people who register
a domain name on the Internet and ransom it for sale) Registering
your company's trademark provides swift and effective recourse
not only to exact duplications of your mark, but also to confusingly
similar marks.
Full
Service Trademark Counseling
The attorneys at Malin Haley DiMaggio Bowen & Lhota are experienced in protecting and enforcing common
law trademark rights as well as those subject to federal and/or
state registration.
The attorneys at Malin Haley DiMaggio Bowen & Lhota provide full-service counseling in determining the
availability of marks and the feasibility of obtaining federal
or state registrations for trademarks or service marks. We
conduct computerized searches for previously registered marks,
which might bar an application, as well as review records
in the United States Trademark Office for design marks.
The firm handles all aspects of Trademark Law including
the preparation of amendments in response to communications form the PTO, the maintaining and
monitoring of extensive domestic and international trademark portfolios and the handling of
litigation involving the unauthorized use of trademarks and service marks, trade dress, as well
as unfair competition and false advertising claims under Section 43(a) of the Lanham Act.
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