A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of another party. A “service” mark distinguishes the source of a service, rather than a good. The two are generally the same thing, and both are referred to as TRADEMARK or MARK. Trademarks are designed to protect a brand and consumers.
When you are the owner of a federally registered trademark, you are entitled to a presumption of ownership of the brand on a national level and a presumed right to use the brand nationwide. It will help block other confusingly similar marks from registering and file an action in Federal court or before the Trademark Trial and Appeal board. Once registered, the owner can use the ®.
A trademark protects a word, phrase, symbol and/or design that distinguishes the source of the goods A trademark, if maintained, can last forever.
A patent generally protects an invention, including the functionality or design. A patent typically gives the owner the exclusive right to manufacture products or employ processes covered by the patent for 20 years from the earliest priority date.
Copyrights, meanwhile, generally protect artistic works such as books, photographs, arts, movies and music.
Trademark rights are established by use under “common law”. Generally, common law rights are limited to the geographic area where the mark is used as opposed to the nationwide protection obtained when a mark is registered with the USPTO. In addition, if you sue under common law, you must sue an infringing party in every state. With a registration, you can sue in a federal district court in your county, which will cover all 50 states.
In addition, registered marks can be licensed, franchised, or sold. In sum, a registered mark is just like any other property of value.
There are five types of trademarks. Fanciful, arbitrary, suggestive, descriptive and generic.
Fanciful names are the strongest, followed by arbitrary names, and so no.
Fanciful: Xerox for a copy machine or Kleenex for a tissue. These types of names have no meaning in any language they are made up names, and thus, are considered the strongest trademarks.
Arbitrary: Apple for computers or Iron Maiden for a rock group. These types of names have dictionary meanings, but they have nothing to do with the product or service being offered.
Suggestive: Shark for legal services or Trap for cameras. These types of names are suggestive of the product or services being offered. These marks require a mode of imagination before coming to the type of good/service that is being offered.
Descriptive: Chipotle for Restaurant services. These marks describe the goods or service being offered. Unless used for at least 5+ years, these marks have to be registered on the supplemental register, are afforded low enforcement rights, and will not be able to act as a real trademark until secondary meaning is acquired.
Generic: CHAIR for furniture store services. These types of marks will never be registered.
A trademark search is important because it helps you determine whether your mark is available for registration or use.
The strongest protection is in your name. But, most companies register both to have the broadest protection possible.
After an application is filed, the trademark office will review it within 3 to 4 months. If there are no issues, your registration may issue within another 3 to 4 months.
If there are issues which must be addressed, the process may take additional time.
The first step is to send the infringing party a cease and desist letter. Often, infringers are not aware of the infringement, and will come to a quick and amicable resolution.
If the infringing party ignores the initial contact, you have the option of have infringing content removed from the internet via notice and takedown letters, initiate a domain name action, and/or sue in a federal district court.
Federal registrations provide many advantages, such as the legal presumption of ownership and exclusive rights to use a mark, the right to sue in Federal court, and the ability to use the highly sought after ® symbol.