Trademark: Any word, name, symbol or device, or any combination thereof used by a person to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
Service mark: Any word, name, symbol or device, or any combination thereof used by a person to identify and distinguish the services of one person from the services of others and to indicate the source of the services, even if that source is unknown.
Before adopting and using a trademark or service mark, we recommend that a search be conducted to determine whether the proposed mark is available for use or whether it has been adopted and used by another in connection with related goods or services. Determining the availability of a mark before using it can save time and money, as well as help to avoid a legal action for trademark infringement. Counsel with expertise in trademark law can conduct the necessary searches and provide you with an analysis of the legal risks associated with the mark(s) you are considering.
Rights in a mark begin when that mark is used on or in connection with goods or services. Registration is not a requisite of trademark or service mark ownership; however, the rights in an unregistered mark are geographically limited to the territory in which the mark is actually used. Rights in a mark that will be used in interstate commerce can be reserved before actual use of the mark begins by filing an intent-to-use application with the United States Patent and Trademark Office.
Registration of your mark at the state or federal level has several advantages. A registration is evidence of your claim of ownership of the mark, your mark will appear in mark availability searches conducted by others, and there are procedural and substantive advantages if you have to file an infringement action. A state registration is recommended if your business is limited to a single state. If your goods or services travel in interstate commerce or foreign trade, a federal registration is recommended. In addition to the advantages cited, a federal registration confers nationwide priority in the mark over those who later adopt a similar mark from the filing date of the application; it gives federal courts jurisdiction to hear infringement and related unfair competition claims; the registration can be recorded with U.S. Customs to prevent importation of goods bearing infringing marks; and, five years from the date of registration, the mark can become incontestable, providing significant procedural and substantive advantages in enforcing your trademark rights.
Trademarks and service marks have no set term. So long as the mark is not abandoned or permitted to lose its trademark significance by becoming a generic term, a trademark can last for generations. If the mark is registered, certain filing requirements relating to establishing continued use of the mark and/or renewal of the registration must be met in order to maintain the registration.
Generally, the first to use a mark in commerce is the owner of that mark. The primary exception to this rule is where an intent-to-use application for a similar mark is filed prior to the adoption and use of the mark by another.
Yes. Trademarks and service marks can be licensed for use by others so long as the owner of the mark has the right to control the manner of use of the mark and retains the right to control the quality of the goods or services sold under the mark. A trademark or service mark can be sold or transferred, but the goodwill of the business represented by the mark, as well as existing registrations or pending applications, must be included as part of the sale or transfer.
Infringement of a trademark or service mark is unauthorized use by another, of the same or a confusingly similar mark, on or in connection with the same or closely related goods or services. The test is whether, because of the similarity in the marks and goods or services of the parties, consumers would be likely to mistakenly believe that the parties are in some manner related or associated such that the goods or services share a common source.
Dilution is the unauthorized commercial use of a famous, distinctive trademark or service mark which lessens the mark’s exclusive association with the owner’s goods or services, even if no consumer confusion as to a common source has occurred. The unauthorized user may be liable for dilution when the mark is used on unrelated goods or services, thus “diluting” the unique link between the mark and its owner, or when the use tarnishes or degrades the positive associations of the mark.
Sometimes. A domain name can function as a trademark or service mark if it is used as a brand in connection with the sale of goods or the rendering of services. Your real-space trademark or service mark does not necessarily entitle you to use that mark as a domain name, however. Domain names are assigned on a first-come, first-served basis, and another entity may establish valid prior use of the name in connection with unrelated cyberspace goods or services. We recommend early acquisition and federal trademark registration of domain names.
A foreign registration program is an important consideration if your mark is used in international trade because in most countries, ownership is based on registration, not use. Registration in all twenty-seven member states of the European Union is available through a single European Community Trademark Registration. Elsewhere, international trademark protection is generally available only on a country-by-country basis.