The Most Common Trademark Questions from Clients

Sausser Summers, PC Profile Image

When researching a new name or applying for a trademark you will have questions about the necessity, process, and implications of registration. Here are the answers to some of the most common questions.

What is a trademark?

In basic English, a trademark is a source identifier. It identifies the source of where a product or service originated. When you go to the store to purchase a can of COCA-COLA (also commonly referred to as COKE), you want to make sure you receive a can of COCA-COLA. You don’t want a can of PEPSI and you don’t want a can of DR PEPPER. You want a can of COCA-COLA. Well both COCA-COLA and COKE are federally registered trademarks of the Coca-Cola Company, which manufactures the can of COCA-COLA you want. In other words, it identifies the source of the can you just purchased to ensure that you received what you intended to purchase.

Services are the same. When you go to the VERIZON store to purchase a phone service, you are going to the Verizon store with the intention that Verizon will be providing you your phone service. You don’t want SPRINT to provide the service and you don’t want AT&T. You want VERIZON. Well, VERIZON is a registered trademark of the Verizon Trademark Services LLC, and it identifies the source of the service you are wanting to purchase.

Do you need a trademark?

The simple question to ask yourself is whether you sell or offer a good of service to others? If the answer is yes, then chances are you already have a trademark. The trademark is the name of your company or product that manufactures and/or provides the service in which you are distributing or offering.

In the United States, the mere use of a name in relation to offering a good or service automatically creates a trademark in that name. The question is whether you need to federally register that trademark with the United States Patent and Trademark Office (also referred to as the USPTO). Another question is whether your use of that trademark is potentially infringing on an already-in use trademark. Keep in mind that your use of a mark does not have to be identical to become infringement. Rather, the question is whether your mark is confusingly similar to another trademark. Because these questions are tricky to determine, it is strongly suggested that you contact an attorney that is well-versed in this area of law. They will need to assess your current circumstances to determine whether a federally-registered trademark is in your best interest.

What is the difference between the TM and the register symbols?

This question trademark attorneys are asked often. In both cases, the TM and the register symbols are used to identify a trademark. The purpose is to put others on notice that you are claiming exclusive rights in the name. The difference is, the TM symbol anyone can use to identify their trademark. Whereas the register symbol are reserved for those marks who have federally registered trademark with the USPTO. In other words, you are not supposed to use the &reg symbol until you receive a federal trademark registration from the USPTO. Such use could possibly be considered fraud.

There is also the SM symbol. This symbol represents a Service Mark. This symbol is similar to the TM symbol, which represents a Trademark. Although many service providers use the TM symbol, the technically proper way to indicate your service mark where you do not yet have federal registration is by way of the SM symbol. The TM symbol is used for goods.

What about the copyright symbol?

The copyright symbol indicates a copyright. A copyright is different than a trademark. A copyright protects original works of authorship. This can include a literary, dramatic, musical or artistic works. It can be a book that you have just written, or the code to software you just wrote. Questions related to copyrights are outside the scope of this article, but if you have questions it is suggested that you contact a trademark and/or copyright lawyer for more information.

Can you trademark a catch phrase, or slogan?

If the catch phrase can be associated with a good or service, then yes you can! One good example is JUST DO IT, the famous catch phrase of Nike, Inc. There is also I’M LOVIN IT, which is registered by McDonald’s Corporation. In both cases, these catch phrases identify a source to a good or product and therefore can be trademarked.

Issues can arise where the catch phrase you want to trademark has become well known to the relevant purchasing public for reasons other than as a source identifier. For example, BOSTON STRONG or BLACK LIVES MATTER. The problem with these types of phrases is the relevant purchasing public does not associate a particular good or service to such slogans. Rather, they associate an event or occurrence with the catch phrase. In such instances, the USPTO will refuse registration because it conveys only an information social, political, religious, or similar type of message. In other words, it does not function as a trademark.

How long does a trademark last?

Technically speaking, trademarks can last for an eternity. All that is required to maintain trademark rights is the continued use of that mark in relation to the goods or services you offer. Once use stops, or your intention to use the mark ceases, then your trademark will be abandoned. This is different to copyrights and patents, which have expiration dates and eventually enter into the public domain.

It is also important to note that when you register your trademark with the USPTO, there are renewal filings that are required to be filed for the trademark to continue being active on the database. Specifically, these filings are required during the fifth and sixth year of registration, during the ninth and tenth year of registration and every ten years thereafter. Failure to file these applications will not result in the abandonment of your trademark in the common law sense, but it will result in cancellation of the trademark with the USPTO.

If you are unsure if you have continued use of a trademark, or whether you have renewal filings due with the USPTO, it is important that you contact a lawyer that is well-versed in trademark law to know what your next steps should be.

Does my U.S. federally registered trademark protect me in other countries?

The simple answer is no. Trademark law is jurisdictional. This means that each country has their own laws and processes to acquire a trademark and rights to a trademark. As a result, if you want to acquire trademark rights in other countries, you will need to register the trademark in that country. To do this can be tricky, and very expensive.

Also keep in mind other countries laws differ. For example, in the U.S. trademark rights are established based on first use, not first to register. This is different than in China, where trademark rights are established by the first to register. A famous company that made this mistake was TESLA, when an individual by the name of Zhan Baosheng filed for the TESLA name in relation to vehicles in China. Fortunately, Tesla Motors, Inc. was able to come to a settlement with this individual, but not without overcoming expensive legal hurdles first.

If you are questioning whether international trademark registration is right for you, it is again important that you seek advice from a lawyer well versed in trademark law.

From the Author: Trademarks

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