Definition
A trademark is a distinctive combination of words, phrases, symbols, designs, numerals, logos, drawings, or even sounds or smells that identify and distinguish the source of your goods or services from that of another party, such as a competitor. This can include the “look and feel” of a good or service (this is called trade dress). A trademark cannot be a generic name and typically cannot be merely a descriptive name/phrase. A trademark does not protect an idea or the product/service itself. A trademark is not a trade name, although they can comprise the same text (e.g., Coca-Cola Company sells Coca-Cola soft drinks). A carefully selected trademark can be a very valuable asset. It can generate goodwill and instill confidence in your customers as to the quality and source of your products/services, while reducing competition and preventing copy-cats.
Types
Trade marks
Distinguish products or goods.
Service marks
Distinguish a service. A trademark could be a Trade Mark and a Service Mark concurrently.
Collective marks
Distinguish goods or services produced or provided by members of an association or cooperative. The goods or services usually need to meet the specifications defined by the members of the group (collective marks are less common).
Certification marks
Distinguish goods or services that have been certified by a certifying authority as complying with a set of standards and whose certification is not confined to members of a group, such as UL or LEED certifications (certification marks are less common).
How to choose a trademark
It is in your best interest to select a mark that is considered “strong” in a legal or trademark sense, i.e., a mark that will most easily allow you to prevent third-party use of your mark. Some marks are easier to protect than others and these are considered “strong” marks. For example, a made up word, like Xerox®, or a word that wouldn’t intuitively be applied to particular goods or services, such as Apple® for computers are strong.
On the other hand, if a mark is “weak,” it most likely is descriptive and others are already using it to describe their goods or services, making it difficult and costly to try to police and protect.
For any chosen trademark, a trademark search should be conducted prior to use to determine if anyone is already using an identical or similar trademark. Our office can help in that process.
Trademark registration
In the United States, you are not required to register marks to obtain protectable rights. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without the need for registration. However, owning a federal trademark registration provides a number of advantages over common law rights alone. Additionally, common law rights are usually confined to a particular geographic area. Further, each state has their own registration system to protect a trademark within a particular state.
FAQs
Among various requirements, a federal registration requires use of a trademark in interstate commerce. That means that the goods or services must be purchased by a user in a state outside Washington or in another country.
No. The United States Patent and Trademark Office will review the application and may issue various refusals, some of which can be overcome.
Once it is determined that trademark protection is appropriate for your goods and/or services, selecting an available and protectable trademark are important steps. A “clearance search” that looks for existing marks that may conflict with your proposed mark will help avoid possible infringement of another’s trademark and avoid having to change your trademark at a later point, which may adversely affect your business plan. Trademark rights exist when you are “using the trademark in commerce.” Those rights are typically protected through reliance on “common law” rights or “federal registration” rights. Common law rights exist automatically and provide limited geographic protection. Federal rights require the expense of filing for registration and, in the US, provide nationwide protection and presumptions/remedies upon infringement. Foreign trademark rights may also be appropriate depending upon various factors. Your Innovation Manager and the Copyright/Trademark Manager can discuss trademarks and clearance searches with you in more detail.
The filing fees for an application change over time, but currently fees begin at around $300 and can increase based on complexity of the application.
The total time for an application to be processed may be anywhere from six months to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.
Whether a common law, state registered, or federally registered trademark, there is an ongoing obligation to police and enforce the trademark against those that are using it in a confusingly similar way. We rely on the associated researchers to help identify these uses and help tell other people to stop using the trademark. Failure to do so can result in abandonment of the trademark.
Whether and when to apply for federal trademark registration is typically based upon: the nature of your product/service, your potential customer base, whether you are using the mark in commerce or intend to shortly use the mark in commerce, your business model/plan, and the timing of spinning-off campus (if you are a startup company). Having a federally registered trademark provides the following advantages:
– Constructive notice to the public of ownership of the mark.
– A legal presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.
– The ability to bring an action/suit concerning the mark in federal court.
– The use of the US registration as a basis to obtain registration in foreign countries.
– The ability to file the US registration with the US Customs Service to prevent importation of infringing foreign goods.
When to use trademark symbols ™ and ®
Each time you use your mark, it is best to use a designation with it. If federally registered, use an ® after the mark. If not yet federally registered, use ™ to indicate that you have adopted this as a trademark, regardless of whether you have filed an application with the USPTO.