Last Updated May 8, 2007 3:55 PM EDT
A trademark is a distinctive word, phrase, symbol, or design used to make goods and services immediately recognizable by consumers; it implies a consistent level of quality or service. Companies use trademarks to differentiate their products and services from those of their competitors. This article looks at restrictions on what can be registered and protected by a trademark as well as how to register a trademark in the United States and abroad.
In the late 1800s, the concept of trademarks was developed to distinguish a company's products and services from those of its competitors, thereby preventing imitations that could divert sales and possibly damage the company's reputation. A trademark may be a brand name for a specific product or be representative of the business as a whole.
A trademark is a word, phrase, symbol, design, or a combination of those, unique to a company's goods, that identifies and distinguishes them from those of others. A service mark identifies and distinguishes a service rather than a product.
A business is not required by law to register a trademark or service mark. However, if your mark is registered, your use of it is protected; for example, if another business uses an identical or confusingly similar mark, you can sue for infringement of trademark. Without registration, a business must demonstrate that its reputation has been established with regard to that mark and that its use by others will damage this reputation, a much more laborious process.
In the registration process, a company lists the goods and services that it wants to protect, but the relevant legislation also protects the trademark against confusion with a range of goods, including those that may not be similar.
Cooperating countries recognize U.S. trademark registration as a basis for registering the mark in those countries; however, registration in the United States does not give automatic protection. In order to register your trademark outside the U.S., you must check the registration laws of each particular country. If you plan to trade overseas, investigate existing foreign trademarks before developing product literature or packaging that may infringe on trademarks already registered there.
A new trademark must be unique, distinct from all existing marks (including foreign trademarks protected in the U.S.) and from words and symbols used in the normal course of trade. A mark arising exclusively from the nature of the product or service, that gives it substantial value, or that is necessary to obtain a technical result cannot be registered. A mark cannot be misleading or contrary to public morality. Registered trademarks cannot consist of words or symbols in common usage or those that will unnecessarily restrict other traders' activities, unless it can be shown that the mark has become established as distinguishable through use. In addition, a trademark must not primarily be merely descriptive of the company's goods or services, primarily geographically descriptive, primarily a person's last name, primarily ornamental, or primarily descriptive in a deceptive way of the goods and services. The American Bar Association lists the specific requirements for filing for a trademark. For more complete information on the subject, visit the U.S. Patent and Trademark Office's Web site.
Before applying for a trade or service mark, you must search to see if marks already exist that would prevent your mark from being registered. You can search the trademark register at the U.S. Patent and Trademark Office (USPTO) or the USPTO Trademark Public Search Library or conduct a search online at the USPTO Web site. You can also search registered and pending trademarks at designated Patent and Trademark Depository Libraries located throughout the United States. Private trademark-search firms will also conduct a search for a fee.
You can file an application directly over the Internet by using the Trademark Electronic Application System available at the USPTO Web site. If you do not have Internet access, you can access the application system at any Patent and Trademark Depository Library or any public library with Internet access. Currently the filing fee is $335 per class of goods or services. The Patent Office prefers that you file an application electronically, but you may mail or hand deliver a paper application to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313–1451.
A registered trademark can be maintained indefinitely if the owner continues to use it in connection with the same goods or services and continues to file appropriate applications for renewal.
Use of the trademark designation (tm) alerts the public to your claim to a mark, whether or not you have registered the mark with the U.S. Patent and Trade Office. (The same applies to the service mark symbol SM.) However, you may use the (r) designation only after the Patent Office has registered your mark, but not while the application is pending.
In recent years, use of the Internet has resulted in a conflict between the allocation of domain names and trademarks. The Internet Corporation for Assigned Names and Numbers has attempted to resolve these conflicts through an administrative system. These measures have led to fewer cases of "cybersquatting" of trademarks in the generic top-level domains. Additional steps are now being taken to protect intellectual property at the level of the country code in top-level domains.
Before investing in registration, determine how many classes of goods and services you wish to apply for and whether they will require protection overseas, now or in the future. When designing product names and promotional literature, check what your competitors (or businesses in similar fields) have already registered to avoid possible complaints of trademark infringement later.
Your trademark should always be displayed in the form in which it was registered. Use the symbol (r) in conjunction with the trademark in countries in which it is registered and (tm) where it is not.
Failing to protect your mark against infringement can result in its common usage, so that later attempts to protect it will not be upheld. You can subscribe to a professional service that will notify you if a third party tries to register a trademark, company name, or domain name confusingly similar to yours.
Internet Corporation for Assigned Names and Numbers:www.icann.org
U.S. Patent and Trademark Office (USPTO): www.uspto.gov.uk