Overview of Trademark Law
A trademark is “a word, name, symbol, or device that is used in trade with goods to indicate the source of goods and to distinguish them from the goods of others”. A trademark right prevents others from using a similar mark that could possibly lead to confusion of who provides a service or product; however, it does prevent others from providing the same services or products under a different mark.
The right to a mark can be established, without registration, by using the mark in commerce. However, there are advantages to owning a federal trademark on the Principal Register. These advantages include:
- Public notice of the claim of ownership of the mark;
- A legal presumption of ownership or the mark and your exclusive right to use the mark nationwide on or in connection with goods/services listed in the registration;
- The ability to bring a claim regarding the mark in federal court; the use of U.S. registration as a basis to obtain register in foreign countries
- The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol ®; and
- Listing in the United States Patent and Trademark Office’s online databases.
When there is a claim to use a mark, the “TM” symbol may be used, regardless if an application has been filed with the United States Patent and Trademark Office. The distinction exist because the federal registration symbol ® can only be used after the mark has actually been registered and not while the application is pending.
A standard application to register a trademark includes the following: owner of the mark, name and address for correspondence, depiction of the mark (i.e. the drawing), goods/services, application filing fee, basis for filing, specimen for use-based applications, and signature. About 3 months after the application is filed, an attorney will examine the application and determine whether federal law permits registration. If the attorney sends an office action explaining the reasons for refusing the registration, a response must be submitted with 6 months of the date of the office action. Some of the most common reasons for refusal of registration are the potential for confusion with a mark that is already registered, the name is descriptive of goods/services or it is a geographical term.
In order to maintain a trademark registration, a maintenance document has to be filed before the end of the 6th year after the registration date and other maintenance documents thereafter. Trademark rights can last indefinitely if there is continuous use of the mark and the necessary maintenance documents are file on time.
Trademark infringement occurs when a party uses a mark which is identical or confusingly similar to a trademark owner. The trademark owner may bring a claim to court against the infringer. If the marks are not identical the court in determining infringement will look to likelihood of confusion.
Trademarks are very common and are helpful in allowing people to recognize different services and products.