TRADEMARKS AND SERVICE MARKS SELECTION, USE AND PROTECTION OF TRADEMARKS / SERVICE MARKS THE TRADEMARK ACT
A slogan or fanciful name or mark used on or in connection with the sale of goods or services can constitute a trademark or service mark and rights therein (common law trademark rights) are established by using the mark in selling goods or services.
Such rights in a mark are created by actual use (with some exceptions) of the mark in connection with the sale of the goods or services that are sold under that particular mark. Thus, a trademark symbolizes the goodwill established in a mark by the producer of the goods or services that are sold under that mark. State and/or Federal registration of the mark is available before or after the mark is used in view of recent 1988 changes in the law. Also, a few states and many foreign countries do not require use before registration of a mark.
A Federal registration provides a number of advantages which are as follows:
- A registration provides constructive notice of your prior rights to the mark for your goods or services as of the date of registration. This means that a later user/infringer who innocently adopts the same or similar mark for the same or similar goods cannot raise the defense that he did not know about your mark and registration. Without a registration, innocent adoption of a mark can be a good defense, and, if it is adopted in an area which you have not penetrated with your mark, the second user could establish rights to the use of the mark in that area superior to your rights.
- The Federal registration gives you the option to bring suit in Federal Court or State Court.
- After five years of exclusive and continuous use of the mark, you can file Affidavits to that effect to make your rights to the mark and registration substantially incontestable.
- Your Federal registration prevents others from registering confusingly similar marks.
- It enables you to place the notice of registration, ®, after the mark whenever you use the mark.
- The registration provides the owner thereof with a prima facie presumption of validity of, ownership of, and exclusive right-to-use the mark for, the goods or services stated in the registration which presumption can mature into a conclusive presumption after five years of use of the mark.
- You can also register your Federally registered mark with U. S. Customs and obtain added legal protection against illegal uses of your mark by an infringer shipping goods into the USA.
- Lastly, it enables you to prevent the importation of goods bearing a confusingly similar mark when, after you learn of such importation, you notify U.S. Customs officials of such importation.
A state registration can be of value in preventing others from obtaining registration in that state for the same or similar mark. This is particularly important in the many states which only check their registrations and do not check Federal registrations. In other words, someone could obtain a State registration even though you have a prior Federal Registration of and prior rights to the mark.
A trademark and the rights established therein if properly cared for last forever and if not, the mark and rights therein terminate. A Federal registration now need to be renewed every 20 years but after November 16, 1989 marks must then be renewed every 10 years. Also, after the first 5 years, and between the 5th and 6th years of registration (no extensions granted), an Affidavit affirming the continued use of the mark must be filed. Otherwise, the Federal registration will be canceled.
To Register your Federal or State trademarks we can assist you in preparing an application for same and file it with the appropriate fees together with an appropriate number of specimens of the mark (or photographs of the mark) as used on the goods.
It is most likely that objections will be raised against the application by an examining trademark attorney in an Office Action issued on the application, e.g., a rejection of the mark for being descriptive (see our letter on Choosing a Trademark), or for being confusingly similar to a registered mark. Again, contact us for assistance in responding to the Office Action.
The Government filing fee for an application for Federal registration of a trademark is presently $275.00.
Again, care should be taken in preparing the application in view of the legal ramifications of the statements you make in the application.
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SELECTION, USE AND PROTECTION OF TRADEMARKS / SERVICE MARKS
First of all, in selecting a trademark or services mark, you should wherever possible choose a mark that is distinctive or suggestive and not one which is merely descriptive, or worse yet, one which is the common descriptive or generic word for the product or service.
To establish trademark rights you must have a mark which is capable of distinguishing you and your goods from another and his similar goods and which in time can come to have a “secondary meaning”. The primary meaning of a mark is the everyday understanding of the word(s) forming your mark. The “secondary meaning” of a mark is you as the single source of origin for the goods sold under the mark.
After you have selected a trademark you should, to be on the safe side, arrange for a search on the availability of the mark to you for use with your goods or services. You may recall the NBC stylized N which was not searched and which was later found to have been first used by a Nebraska television station. We can make a simple Federal trademark registration search for you or a full search of trade name and trademark registration directories and State registrations as well as a search of Federal trademark registrations.
A mark should be used by itself on the goods or packaging therefor, use of a mark on a letterhead or on an invoice is not sufficient. Although not necessary, it is advisable to use the superscript of subscript TM after each use of your mark on a label, packaging, or nameplate or in advertising to specifically alert your purchasing public and competitors that you consider the name,. logo, etc. to be your trademark.
Please note that trade name use is not the same as trademark use. Thus, if your trademark is also your name, use it separately, e.g., “EQUITY” by itself is trademark use and “EQUITY INDUSTRIES CORP.” is trade name use.
Also, it is preferable to use the mark as an adjective of the descriptive name of the goods, e.g., “KLEENEX” brand facial tissues or KLEENEX® facial tissues.
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