FEDERAL TRADEMARK OR SERVICE MARK BASICS
A trade or service mark is an arbitrary sign or symbol which maintains goodwill when it accompanies products or services as the case may be. A trademark or service mark must be applied directly to the goods, its containers, tags, or labels or the documents which accompany services. If the nature of the goods makes placement of the mark on the good impracticable, the law permits the use of the trademark on documents which are associated with the goods or their sale. The use of a trade or service mark in advertising on letterheads, etc. is not use on or in connection with goods. Therefore, if possible, make sure the trade or service mark is affixed to the goods or accompanies services. A trade or service mark symbolizes the goodwill which pertains to the sale of a particular product or service. Two different merchants may lawfully use the same mark on different goods or services so long as there is no likelihood of confusion. For example, Lexus automobiles and Lexis research services are so distinct, there is no likelihood of confusion. Thus, each has been registered.
BENEFITS OF REGISTRATION
Registration of a trade or service mark provides the following major benefits:
- Constructive notice to third parties of the use of the mark by the trademark owner;
- A statutory presumption of the trademark owner’s exclusive right to use the mark; and
- The right to record the registration with the U.S. Customs Service to bar importation of goods bearing an infringing trademark.
STRENGTH OF A TRADEMARK OR SERVICE MARK
Trademark or service marks have what is known as a spectrum of strength.
Obviously, the stronger the mark, the more protection afforded that mark. The types of marks from strongest to weakest are as follows:
- Fanciful marks – a mark which has no meaning except as a trade or service mark. It is a word created for the purpose of a trade or service mark. Examples are Xerox, Kodak, Exxon, Clorox.
- Arbitrary marks – an arbitrary mark is one which has common usage and meaning in the language but is without meaning as applied to a product. For example, Camel Cigarettes is an arbitrary mark.
- Suggestive marks – a suggestive mark is one which suggests the product or describes the quality of the product. For example, automatic radio, park-n-fly, the uncola, Citibank.
- Descriptive marks – a descriptive mark is one which identifies or describes the qualities, ingredients or characteristics of the product. Generally, these types of marks cannot be used as a trade or service mark. For example, flowers-by-wire, lights or lite (for beer), multi-state bar examination, superglue. A mark may be descriptive if it is “laudatory”. For example, Best, Gold Medal.
POLICING YOUR TRADEMARK OR SERVICE MARK
It is important to protect your mark once it is registered. Many trade or service marks have lost their distinctiveness and therefore have become generic and descriptive thereby losing their registration. This occurs when the owner fails to protect his or her mark and the public treats the mark as descriptive. Examples of generic marks are: aspirin, cellophane and shredded wheat. You may have noticed that Xerox takes out full page adds in the Wall Street Journal informing the public that Xeroxing and photocopying are not interchangeable. This is an effort on the part of Xerox to protect its mark. Consequently, it is always good to “police” your mark and make sure that no one is using it, not only to protect your profits but also to protect the value of the registration and the value of the mark, its reputation and the company behind it.
Further, should you change your mark, you should immediately amend your registration. Once the mark is registered, you should always reproduce the mark in the exact context as in the registration application and the symbol ® include an R in a circle next to it.
Before registration is completed, place TM or SM (as the case may be) next to the mark.
TRANSFERRING YOUR TRADEMARK OR SERVICE MARK
Trade or service marks are property and therefore they can be assigned, sold and licensed. However, when transferring a mark, since it is the symbol of the owner’s goodwill, the mark cannot be transferred separate from that goodwill. Thus, a trade or service mark can be assigned so long as it is assigned with the goodwill of the business. This assignment must be in writing and should be recorded with the Patent and Trademark Office upon assignment, only then will the assignee obtain all of the rights of the assignor.
Trade or service marks may be licensed provided that the licensor maintains adequate control over the quality of the goods and services sold under the trade or service mark. Uncontrolled licensing may result in the involuntary forfeiture of your registration and trade or service mark rights. For your convenience we have a prepared standard Trademark Licensing Agreement should you wish to license the use of your mark to others.
Where a mark is reproduced or copied which causes confusion, mistake or may deceive, an infringement occurs. The basic test for infringement is the likelihood of confusion.
Likelihood means probable not possible. In order to prevail on a claim of likelihood of confusion, you need not show actual confusion. However, evidence of actual confusion is strong evidence of likelihood of confusion. The key test is whether a reasonable and prudent buyer would confuse the conflicting marks.
Should infringement occur, there are various remedies available to the injured owner of the mark. In addition to a claim for direct infringement, a cause of action exists for unfair competition, false advertising and product disparagement. In addition, other damages may be available for damage to the value of the mark, lost profits, etc. Injunctive relief is also available in order to stop an infringer from continuing to use a conflicting mark.
You do have Common Law trade or service mark rights prior to registration. In order to protect your mark pending registration, I strongly advise that you place a SM or TM (as the case may be) after your mark anywhere you use the mark, such as letterhead, packaging materials, marketing materials, etc..
In the event you are interested in proceeding, please give us a call.