Trademark Basics

I.Outline Trademarks vs other Types of Intellectual Property Types of Trademarks How to Obtain Trademark Protection The Basic Trademark Application Process Marking – “TM”, SM” or ®? Maintenance and Renewal Enforcement II. Trademarks vs other IP Trademarks are one type of intellectual property, as are patents and copyrights. An earlier post comparing the three is located here. A trademark is used to identify goods or services and distinguish them from other goods or services. Examples of trademarks are the words GOOGLE, MCDONALDS, and APPLE. Non-word marks include the familiar Coke bottle silhouette and the Mercedes Benz hood ornament. A trademark identifies and distinguishes the source of the goods of one party from those of others.  A service mark identifies and distinguishes the source of a service, as opposed to goods. However, the  term “trademark” is often used to refer to both trademarks and service marks. Unlike patents or copyrights, trademarks can last forever, assuming they are continuously used. III. Types of Trademarks Words such as APPLE or STARBUCKS are typical of trademarks or service marks, but there are other ways to use trademarks. Examples include: letter strings (such as IBM) logos (the Starbucks “Siren”) a combination of words and a logo colors (pink for Owens Corning insulation) product shapes (such as the Coke bottle) sounds (the MGM lions roar) IV. How to Obtain Trademark Protection In the United States, certain common law trademark rights are created simply from actual use of a mark. However, to obtain the greatest protection for a mark, it is almost always advisable to register the mark, either with the federal government, if possible, or with a state government. The Trademark Operation of the United States Patent and Trademark Office (USPTO) handles US trademark registrations. V. The Federal Trademark Application Process There are three basic steps in the federal trademark application filing process: Filing an application with the US Patent and Trademark Office Prosecution of the application by addressing any objections or concerns that the US Trademark Attorney may have after he or she reveiws the application and compares it to other previous trademarks If it is approved by the US Trademark Attorney, Publication of the application for opposition by any party who believes it may be damaged by registration of the mark Issuance of the application into a registration, if it is not successfully opposed VI. Marking – “TM”, SM” or ®? A mark which is registered with federal government may be marked with the ® symbol. Unregistered trademarks may be marked with “TM”, while unregistered service marks may be marked with a “SM”.  Failure to do so does not in and of itself waive any trademark rights. VII. Maintenance and Renewal A U.S. trademark registration is valid as long as it is properly maintained. Between the fifth and sixth year following registration, a “Section 8 Declaration” must be filed, indicating that the registrant is continuing to use the mark.  If appropriate, a Section 15 Declaration may also be filed. After that, every ten years after registration the registration must be renewed by filing an applications for renewal under Section 9. VIII. Enforcement A mark is infringed under U.S. trademark law when another person uses a mark so as to cause confusion as to the source or sponsorship of the goods or services involved. Multiple parties may use the same mark only where the goods of the parties are not so similar as to cause confusion among consumers. Where a mark is protected only under common law trademark rights, the same marks can be used where there is no geographic overlap in the use of the marks. Federally registered marks have a nationwide geographic scope, and hence are protected throughout the United States. On the other hand, marks not federally registered may be restricted in protection to their geographic area of use.†Unlike patents, trademarks can be enforced in either state or federal courts.