     |
 |
    |
Find practical answers to common questions about trademarks in our... Trademark FAQ
Submit your question! Send a message to Jefferson Scher. About this FAQ: The analysis and resolution of trademark issues depends to a great extent on the facts and circumstances of the situation at hand. You should not rely on this information to make decisions critical to your business, as it may be incomplete or incorrect when applied to your particular circumstances. This general information does not constitute legal advice, and is not intended to replace the counsel of a trademark attorney. Traditionally, a trademark was a word, phrase or symbol that
functioned as a unique identifier of the source of a product. There is only one source of
Quicken® financial software. You know only one brand of shoes says
Just Do It® on the box. And you know this character — In the United States, trademark law also protects other symbols of consumer recognition, including jingles, unique scents, and even colors. Service marks are trademarks associated with services. And "trade dress," the overall appearance of the packaging, presentation, or design of a product or service, also may be protected under certain circumstances. Almost as important as what is a trademark is what is not a trademark. If the appropriation of a word or symbol by a single entity would unduly restrict competition, then the law will not grant trademark protection to such a word or symbol. For example, a term that the public recognizes as the common name of a product or service, such as shredded wheat or E ticket, is so fundamental to commerce that it can never become a trademark. However, such truly generic terms are rare: words that describe a feature or function of a product or service, such as LandCare for gardening or Windows for a graphical user interface, can evolve into protectable trademarks through extensive promotion and use in the marketplace. 2. What do ® and ™ and © mean? In the United States, the circle-R symbol can be used only with a trademark or service mark registered with the United States Patent and Trademark Office, and failure to use the symbol may limit the owner’s ability to collect damages for trademark infringement. Similar restrictions and requirements may apply to the use of this symbol in other countries. By contrast, the TM and SM symbols usually are used with unregistered trademarks to indicate a claim to proprietary rights in those terms. Unlike the notation "Patent Pending," a TM symbol does not necessarily indicate that a trademark application has been filed. Instead, it may be a claim to common law trademark rights, which arise merely as a result of use of a mark. Occasionally, you will see people mistakenly use the copyright symbol in place of a trademark symbol. Since it is not mandatory to use trademark markings, this does not prevent the proprietor from protecting its rights. 3. How do I trademark something? Trademark lawyers refer to two different methods for developing and protecting your rights in a trademark: use and registration. Generally speaking, a mark is used as a trademark when it is affixed to goods or used in the promotion of services. However, there are many fine points and uncertainties as to when the display of a mark constitutes technical trademark use. Furthermore, use of a mark may create rights only within the trademark holder’s trading area. For these reasons, most companies do not rely on use alone to secure rights to their marks. Instead, they file applications for Federal registration of their marks. Once registered, the mark will be deemed to have been put into use, and have nationwide priority, as of the date the application was filed. 4. What does it cost to register a trademark and how long does it take? If you use a lawyer, registering a trademark will cost more than $1,500. The upper end of the range depends on a number of factors, including the nature of the objections raised by the Trademark Office, objections raised by other entities, and the amount of time required to satisfy the requirement to use the mark prior to registration. If a mark is neither generic nor descriptive, and is not similar to any other trademark registered in the United States or in use, then the additional cost of registration is likely to be modest. The time required to register a mark typically ranges from 18 to 24 months, depending on the nature of the objections raised by the Trademark Office, and how quickly the products or services are brought to market after the application is filed. In many cases, the time period will be more than two years. 5. Do I need a lawyer to register a trademark? No, you can even file over the web with a credit card. Many studious applicants have been successful in overcoming objections raised by the Trademark Office or third parties, tackling those projects on their own with the guidance of self-help books and friends. However, a good trademark attorney can be an invaluable resource. The attorney’s highest "value add" is in her or his experience and judgment: advising you on whether your proposed marks might infringe the rights of others, helping you sort out your branding priorities, and maximizing the value of your trademark applications. Using outside counsel also saves you time and headcount in managing your legal affairs. 6. If I register a trademark do I own it? The certificate of registration is evidence of the owner’s exclusive right to use the registered mark. But there are limits to this right. First, the exclusive right to use the mark is limited to the goods and services listed in the application, and others may use the mark on different goods and services if there is no likelihood of confusion in the marketplace (unless and until your mark becomes famous). Second, a prior user of the mark retains its right to use the mark and may be able to cancel the registration and prevent the registrant from using the mark. Third, your rights might be diluted by third parties adopting similar or identical marks in closely related fields. This type of encroachment can reduce your ability to stop others who you deem to be infringing your mark. For these reasons, it is advisable to consult with counsel on how best to draft the application, to obtain an opinion that use of the mark does not conflict with any prior rights, and to develop a policing program to protect your brand. 7. Does a Federal registration protect me worldwide? Unfortunately, trademarks still reflect their territorial heritage. Protecting a trademark internationally requires filing a new application in each individual country. The European Union has created a Community-wide trademark system that covers its 15 member nations, but such rights are limited by earlier national registrations, and the various systems continue to operate in parallel. Even in the United States, a company can obtain the exclusive right to use a mark in a particular State by registering with the State trademark office — subject to the rights of earlier users of the mark. The Madrid Protocol, a treaty intended to simplify international trademark registrations, is expected to go before the Senate for ratification this year. However, it is unlikely to take effect before 2002, and it will introduce complexities of its own. 8. What is the connection between company names and trademarks? Many companies use their names (usually omitting the corporate ending) as a brand or "house mark," such as Microsoft and AT&T. Other companies may prefer to use their corporate names in a more limited manner, and eventually may change their relatively unknown corporate name to match their well known brand, such as MapQuest.com, Inc. (formerly GeoSystems Global Corporation). Company names may be protected either under the trademark laws, when the names are used as trademarks, or under the laws of unfair competition, or not at all, depending on the facts of the individual case. Where a company name is used as a trademark, it is desirable to obtain a Federal trademark registration. 9. What is the connection between domain names and trademarks? While some people still insist that a domain name is only an address and no more, the protection of dot com brands can be consistent with the principles of trademark law — if they are used as trademarks. Domain names given consistent emphasis as product, service or business identifiers, such as Amazon.com, will receive the greatest degree of protection. Domain names that appear in URLs sandwiched between the street address and phone numbers, may receive no protection at all. In any event, it is reasonably well established that simply registering a domain name does not constitute the use necessary to establish trademark rights. A number of companies offer "watching" services that alert you to trademark applications and domain names similar to your trademarks. You also can employ old-fashioned news clipping services, and their modern equivalents, to watch for names and marks that might infringe your rights. But consider whether you really want to know — in some cases, becoming aware of an infringing name or mark may require you to commence legal action sooner, rather than later, to avoid waiving your right to object. Should you decide to hire a watching service, it is wise to do some comparison shopping. The better known vendors in the field include Thomson & Thomson and CCH CORSEARCH. Your trademark counsel can assist you in selecting the service best suited to your needs and budget. For more basic information about
trademarks, consult our PowerPoint slide show: "Trademark
Strategy: Simple Rules for Choosing and Using Trademarks" by Sheila Fox
Morrison and Jefferson Scher - Spring 2000 (800 x 600 display). |
|||||
|
||||||
—
as the symbol of one particular portal.
