TRADEMARKS AND SOME FAQS

A trademark is a word, name, slogan, design, symbol, device, or combination thereof, that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.  Said another way, a trademark lets consumers know that the goods or services come only from you and not from someone else.  Essentially, a trademark is a brand.  It distinguishes your goods and services from those of your competitors.  A trademark helps consumers decide what to buy when choosing between similar or related products and is designed to associate consumer good will and loyalty with said trademark.

“What is the difference between a trademark and service mark?”

A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. For example, a trademark identifies the source of goods (like, shoes or laptops) and a service mark identifies the source of services (like, landscaping or accounting).  The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.   Although “trademarks” are legally different from “service marks,” it is generally considered ok to informally refer to a service mark as a trademark.

“What is the difference between a patent, a trademark, and a copyright?”

If you have watched television series, Shark Tank, you may have heard the terms trademark, patent, and copyright used.  In many instances

A trademark is a brand used on goods and services.  A patent typically protects inventions, like a medical device or a consumer product.  A copyright typically protects original artistic and literary works, like songs and movies and books.  Although trademarks, patents, and copyrights can all be used together, the protections they provide are not the same.  For example, if you invent a new type of television, you might apply for a patent to protect the invention itself.  You could apply to register a trademark to protect the brand name of the television.  And you might register a copyright for a commercial you use to market the television or the user’s manual used to describe the television.

Those are three different types of protection for three separate types of intellectual property: brands, inventions, and artistic works.  They’re all equally important and protect different parts of your intellectual property portfolio.

“Are domain names or trade names capable of trademark protection?”

As discussed previously, a trademark is typically a brand or slogan or design that identifies the source of goods and services.  A domain name is the web address that identifies a website.  USPTO.GOV, for example, is the domain name for the USPTO’s website.  Registering a trademark is different than registering a domain name.  Trademarks are federally registered through the USPTO; domain names are registered through a domain name registrar.  They are not the same thing.  One identifies the source of goods and services; the other is a web address.  Registration of a domain name with a domain name registrar does not give you trademark rights.  In fact, if you register a domain name with a domain name registrar that includes the trademark of another party, you may have to surrender that domain name.  That said, a domain name can also function as a trademark, so long as the domain name is used in such a way that it also identifies the source of particular goods and services.

There is also a difference between a business or trade name and a trademark.  A business name is simply the name under which you do business in a particular state or jurisdiction.  However, a business name registration with your state does not grant you trademark rights; it merely means that a particular state allows you to do business under that name.  That said, a business or trade name can be a trademark, depending on how it is used.  Said another way, if you use your business name to identify the source of your goods and services and distinguish them from the goods and services of another party, that would be considered trademark use.

To avoid confusion, make sure you have this straight: Trademarks are brands, Patents protect inventions, Copyrights protect original artistic works, Domain names are web addresses, and Business names are entity names under which you do business.  They may be related, and sometimes overlap, but they are all different legal concepts.

And all handled by different organizations.  Patents and federal trademarks, for example, are handled by the USPTO.  Copyrights are handled by the U.S. Copyright Office, part of the Library of Congress.  Domain names are handled by private companies who are domain name registrars.  And business names are handled by local Secretaries of State.

“Do you have to file a trademark application?”

To enjoy the nationwide rights offered by a federal trademark registration, you must file a federal trademark application and receive a registration from the USPTO.  Individual states also offer to register trademarks, but any protection granted is limited to that state.  You generally have what is called “common law” rights to a trademark when you start using that mark in connection with particular good(s) or service(s).  Your rights are generally limited, however, to the geographic areas in which you sold those good(s) and rendered those service(s).  Moreover, without a registration of a trademark, it might be more difficult to enforce those rights than it would be if you have a federal or state registration.

So, obtaining a trademark registration is not required, but will enhance your rights. Specifically, federal registration of your trademark on the Principal Register provides the following advantages:

  • It gives you a legal presumption of the exclusive right to use your mark nationwide on or in connection with the goods and services identified in your registration (this is in contrast to a state trademark registration that only gives rights within the borders of that particular state—Federal registration will give you a presumption of rights throughout the United States and its territories);
  • It creates a legal presumption that you are the owner of the mark. That is a real advantage if you need to enforce your registration either in or out of court.  That said, be aware that even with that legal presumption of ownership, someone else could prove that they are the rightful owner because they started using the mark before you;
  • It puts the public on notice that you are the owner of the mark. If there is a question as to who owns the mark, it can be looked up in the USPTO’s online database;
  • Being listed in the USPTO’s database means that others considering potential marks can find your mark when they search the USPTO database to see if their mark is available. The existence of your mark in the database can help others to avoid selecting a mark that is too similar to yours.  Additionally, the USPTO relies on the same database for its own search and will find your mark when examining someone else’s application.  The USPTO will cite your registration against a confusingly similar mark in a later-filed application, preventing a potentially conflicting trademark from registering;
  • A federal trademark registration gives you the ability to record your trademark with U.S. Customs and Border Protection. That agency will use your trademark registration to help prevent importation of infringing or counterfeit foreign goods;
  • Having a federal trademark gives you the right to bring additional legal action concerning the registered mark in federal court;
  • You have the ability to use your U.S. trademark registration as a basis for applying for a trademark registration in many foreign countries; and
  • A federal trademark registration means that you have the right to use the coveted ® symbol with your mark, something you cannot do unless your mark is federally registered. This symbol is typically placed on the right side of a mark and indicates that you have federally registered your trademark with the United States Patent and Trademark Office.  It puts the public on notice that your mark is registered and that you have nationwide rights in it.

In sum, Federal registration provides a lot of benefits and it probably explains why the USPTO has registered millions of trademarks from both domestic and foreign applicants over the years.

 

We, at The Intellectual Property Law Firm, would be happy to answer any questions not answered above and/or to assist you with performing any trademark-related services.  Please contact us by telephone at (888) 201-8001 or (954) 507-4500, or by email at Info@JohnsonDalal.com.  We look forward to being YOUR intellectual property attorneys.