Trademarks are words, symbols or devices used to distinguish the goods or services of one business from those of
others. Throughout this article the word "mark" us used to mean both Trademarks and Service Marks; the difference is the type of basic use, either for goods or services. What I state for marks generally applies to both. THE LAW: § 45 (15 U.S.C.. § 1127). The term “trademark” includes any word, name, symbol, or device, or any combination thereof-- (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. Service mark. The term “service mark” means any word, name, symbol, or device, or any combination thereof-- (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. To understand the above we also need the following: Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor. The word “commerce” means all commerce which may lawfully be regulated by Congress. The term “principal register” refers to the register provided for by sections 1051 to 1072 of this title, and the term “supplemental register” refers to the register provided for by sections 1091 to 1096 of this title. Person, juristic person. The term “person” and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term “juristic person” includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.The term “person” also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity. The term “person” also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any non-governmental entity. Trade name, commercial name. The terms “trade name” and “commercial name” mean any name used by a person to identify his or her business or vocation. Enough definitions for now. Trademarks are The Business: If your product or service has a name, that name is its Good Will. For example, if you seek investors for your business, the investors would want to know, in return for their funds, stock or other remuneration, that the mark is valid. It is the trademark this is the name that will sell your goods and services. Witness marks like KODAK®, Xerox®, Green & Green®. How would these sell if there was news that your products were not good? Or how would you get investors if the Mark was involved in claimants making claims against manufacturers, producers, distributors and others making and selling your products because the mark was not useable or was not secure? We help secure the Trademark with the owner, prosecute infringement actions against infringers, and protect it from such litigation or other disputes. Is YOUR mark Infringed? The basic standard of infringement is whether there is "likelihood of public confusion." Marks can be licensed, bought and sold for fees and/or licensed for royalties. They can serve as the basis for licensing a product. They create distinctiveness, a mood, a theme or set a standard for excellence or a solid foundation for consistent advertising and "branding." Marks proclaim to the public the quality, Good Will, and nature of the goods and services behind the name and of the integrity of those behind the name. On the internet Trademarks go and come fast and their use is international. On the other side of the world a person could attempt to register or use a mark owned by another and use it on the internet without permission. So that a person with a website bearing a Trademark in one part of the globe may have infringed the rights to a mark that originates far away. This presents questions of Jurisdiction (power of a Court to judge the case) that are complex and expensive to work through. What can a Trademark be? A mark can be a color, or a distinctive sound. It can be a "sound alike," a face, a character, words, drawing (logo), and many "trade dress" styles can be distinctive of a restaurant, or "package dress" as a way of packaging software, by way of examples. It can be a smell or label. A mark must not be descriptive or functional. As is defined above, a Trademark needs to be USED in COMMERCE. In the USA, that is what is required. The first to use a mark is the first to own it. But how do you PROVE that you were the first user? If another uses your mark or if you want to use a mark, how do you know that it is OK? The answer is - REGISTER your Trademarks. That way a court will fully acknowledge your ownership. Registration shifts the burden to the claimant to prove the mark is not yours. This saves many hours of potentially expensive litigation costs, compared to the "proof" of first use, in commerce and ownership. Registration: For a Trademark to get registered should be as fanciful as possible; witness: "Kodak®" that 100 years ago might be a misspelling for a bear (kodiak) and is famous for camera products; likewise, XEROX® for photo copiers. GREEN & GREEN ® for legal services. These marks do not describe the products. They are fanciful. A mark may fall within the spectrum of Fanciful (allowed) to Descriptive (not allowed) and be "Suggestive" of the goods or services. Registration in the USA (and most countries) is done by applying to the US Patent and Trademark Office (PTO). Only a governmental agency can register a mark officially in any country. Beware of trickster private companies that profess to register your mark. Register your Marks if you Value them. To qualify as a registrable mark one must properly use it. A "Use in interstate or international commerce" and "commerce that can be regulated by Congress" is the key to U.S. rights. Especially today where Domain Name rights and trademarks are interwoven, registration is imperative. Trademark rights in the U.S. have "some territorial effect" in the rest of the world, depending on registration in other countries and fame in use there. International use is Internet use. Instantly. Other uses, the older methods, include putting the mark on the goods, on packages or labels for the goods, a point of sale device, in advertising, and a few other methods. NOTE that mere registration of a Domain Name (URL) is NOT a "use" in commerce of the words in the URL. It is a right to use an address that will direct a user to a particular web site and no more. A URL can become a Mark if used in the technical sense. Note that registration is NOT essential to establish rights (in the USA only) but failure to register may render useless any complaint if another gets a similar URL. IN that case, you will need the registration to prove ownership to WIPO and to cut the cost of your proof in Court. Registration is usually on the Principal Register, for marks that qualify, that are "fanciful" and getting real "use." A mere posting of the mark on a site for purposes of "branding" without a real service performed is not good enough. Place an "SM" (for services) or "TM" for goods near the mark until it is registered. There is a "supplemental register" for marks that may be deemed "suggestive" and may not qualify for the principal register. Registration is essential to secure a mark and notify the world of the Registrant's exclusive rights to the use thereof and to quickly establish a prima facie exclusive, nationwide and world-wide right to use, sell, license, assign or buy, settle, mediate and litigate a mark used in international and/or interstate commerce. What are the benefits of registration? 1. In Federal court, one can ask for Customs seizures of goods bearing infringing marks, damages based on the infringer's profit, injunctions and the owner can press criminal charges. 2. A registered mark may be registered with the Treasury Department to prevent importation of goods bearing an infringing mark. 3. It is impractical to have a great mark if the owner cannot move quickly to stop an infringer. Therefore the need for federal registration is great, for without it, one may only have a "colorable" right in the mark and spend thousands more, wasting time, and have to go through an expensive and time-consuming proof of FIRST use and other proof of facts behind it. 4. Federal registration is absolutely necessary in any program to protect the rights of a trademark owner, both defensively and offensively. Without it, a claim against another person for using your mark in another country will come to deaf ears. a WIPO arbitration will not likely fly at all. 5. A registration, has "registration priority" so that a later comer to the PTO may find his attempt to register your mark blocked and made more difficult. REGISTRATION MUST BE MAINTAINED and we do the maintenance for our clients. If a mark registration is not maintained it can be Cancelled by the PTO. CAUTION> 5th to 6th year: the owner MUST make a declaration of continued use in the 5th year – 6th with proof of use by sending in a specimen, or the registration is cancelled under Section 8. CAUTION> 10th year after registration. Marks are renewable very 10 years (if not renewed they Expire on the Register). Trademarks are Valuable: Marks are "property" of a corporation, LLC or other business and need to be insured by registration against loss from such things as: infringement, dilution, importation of "bogus" goods, international piracy, "passing off" their identity as yours, and many other types of rip-off. Marks can be Licensed – used by a contractually permissible user for a payment (royalty, flat or other) for a limited time and in limited territories. Marks may be Assigned (sold) -- which is an outright transfer to another with no limits. Marks can be Mortgaged, or used as collateral for a loan. Famously, Ford used its famous Trademark to avoid Federal bailout, and repaid the loan. Stay tuned for other articles on the many aspects of Trademarks. |