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Trademarks are distinctive marks that are used to both identify and protect the quality and/or reputation of the goods and services of particular manufacturers and merchants. A trademark can be a name, such as ADIDAS; a symbol, such as McDonald's golden arches; or a combination of the two, such as a logo like the NIKE name with the swoosh symbol under it. It can even be a sound, such as the NBC chimes. A trademark in its most narrow sense is a mark on a product or its packaging that identifies the product. A service mark (e.g. HARRODS) is the same as a trademark, except that it identifies a service and normally appears in advertising for the service. "Trademark" is used to refer to both kinds of marks in this publication.

Consumers rely on trademarks to make informed decisions about which products and services to buy and trademark owners rely on their names and symbols to advertise and market their products. Companies invest a great deal in both the creation and protection of their trademarks. A trademark acts as a guarantee of the quality and origin of a good or service and helps to prevent confusion to consumers. If a competing manufacturer uses another company's trademark, consumers and the trademark owner may be harmed.

  • Example: A vendor on the streets of Washington, D.C., is selling watches to tourists. The watches are imprinted with the name Rolex, but only cost $25. It is highly unlikely that the watches were made by the Rolex Company, or are of similar quality to Rolex watches. Buyers are likely to be disappointed, and may become angry at Rolex and tell others not to buy Rolex watches.

The right to use a particular trademark can arise from using the mark or filing an application to register the mark with the US Patent and Trademark Office (USPTO). While registration is not necessary, it has advantages, such as notice to the public of the registrant's claim of ownership of the mark, and the exclusive right to use the mark. It also is possible to register a trademark with a state, but the mark will only be protected in that state, while federal registration provides nationwide protection and certain rights regarding registration of the protected mark in foreign jurisdictions.

Before beginning to use a name or symbol, a business should conduct a search, or hire a lawyer or search firm to conduct a search, to ensure that the trademark is not already in use. This will reduce the possibility of infringing on a mark belonging to someone else. Infringement on a registered trademark allows the owner of the mark to file a lawsuit to stop the infringing party from using the mark, and may be able to collect money damages. One of the purposes of trademark law is to prevent confusion to consumers, and the likelihood of confusion is one factor the court will consider when deciding whether trademark infringement has occurred.

  • Example: The Amazon Bookstore, a small local bookstore that has been in business for thirty years, sued Amazon.com, the online bookseller, for trademark infringement. Amazon Bookstore received many phone calls from customers who were attempting to reach Amazon.com with questions about their orders. The bookstore also experienced many walk-in customers who attempted to use Amazon.com gift certificates. To be successful this case, Amazon Bookstore would need to show that consumers were confused by the similar names, and that it had been harmed economically.

The owner of a trademark must put the mark into use in interstate commerce before the USPTO will register the mark. This means, for example, that the product or service must cross state lines, such as during shipping; or be sold from a catalog nationwide; or be a facility used by interstate travelers, such as a restaurant. An applicant who intends to use a mark, but has not yet done so may file an "intent-to-use" application. After the applicant has used the mark, he or she must file a full trademark application document and pay the appropriate fee to begin the registration process. This can now be done electronically, using the USPTO's Trademark Electronic Application System (TEAS), accessible via the USPTO website. An examining attorney will review the application, and if the mark meets all of the requirements, the mark will be registered. Once a trademark is registered, it can last indefinitely if the owner files an affidavit of use between the fifth and sixth year following registration, and then renews the registration every ten years (twenty years for registrations granted before November 16, 1989).

A mark registered with the USPTO may be identified by the symbol ®. A party may indicate that it is claiming rights to a mark by using a TM or SM symbol. It is not necessary to have registered the mark to use one of these symbols, but protection and infringement remedies will not be as accessible if the mark is not officially registered.

For a mark to be protected, it must be distinctive in some way. Similar to the novelty requirement for patents and originality requirement for copyright, the distinctive requirement for trademarks must serve the function of identification of the product's source, and consequently, reducing consumer confusion.

Potential trademarks can be categorized, in order from most distinctive to least distinctive, as arbitrary or fanciful, suggestive, descriptive, or generic. The strongest marks are those that are arbitrary and fanciful. Arbitrary marks are common words used in an uncommon way, such as Camel to refer to cigarettes, and Dial to refer to soap. Fanciful marks are invented words, such as Kodak and Exxon.

Suggestive terms, those that require consumers to use their imaginations to make the intellectual jump between the name and the product, are somewhat less strong when used as trademarks. Examples of suggestive marks are Orange Crush (orange-favored drink) and Ivory (white soap).

A descriptive term, such as "Brooklyn Dodgers," may only become a trademark after long use makes it distinctive. Because the name was used for many years, it came to represent the professional baseball team in the eyes of the public, and acquired trademark protection.

Words that are generic, such as 'ball' or 'light bulb', cannot be trademarks. Further, adding an 'i' or an 'e' before a generic term to indicate some form of electronic commerce or internet application, is unlikely to make the term any less generic. To give trademark status to the generic name of a product would prevent all other manufacturers of the product from identifying it. Some marks that do not begin as generic may become generic if the public adopts the mark as the general name for the product. "Aspirin" and "cellophane" are examples of names that have become generic.

If you have questions regarding trademark registration or trademark infringement, an experienced trademark lawyer can provide sound advice and legal guidance tailored to your situation.

Learn More: Reasons to Contact an Intellectual Property Attorney

To read and print out a copy of the checklist, please follow the link below.

Reasons to Contact an Intellectual Property Attorney

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DISCLAIMER: This site and any information contained herein are intended for informational purposes only and should not be construed as legal advice. Seek competent counsel for advice on any legal matter.

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