We have compiled practical answers to some of the most common questions about trademarks.
Important Note: 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 symbol – – refers to one particular web business.
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.
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.
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.
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 36 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 some cases, the time period will be more than three years. As you can see from the following simplified timeline, some of the steps in the trademark registration process are under the applicant's control, but others are not.
No, you can file an application 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 resources in managing your legal affairs.
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.
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 27 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, took effect in the U.S. in November 2003. Registrations made through the Madrid system may cost significantly less than individual national registrations, but Madrid filings are subject to unique limitations and vulnerabilities. Trademark counsel familiar with the system and its trade-offs will be able to recommend the best approach for an individual trademark holder. For more information about the process, consult our PowerPoint slideshow "Strategies for International Trademark Protection: Adding International Registrations to the Mix," or contact a member of the Trademark Practice Group.
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.
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.
When domain names are used as trademarks, there is a potential for confusion with similar marks. Even in the absence of trademark infringement, a registration that was made in bad faith may expose the domain owner to legal liability or potential loss of the domain. Any such disputes should be approached carefully, preferably with the advice of counsel. We represent a wide range of companies and individuals with respect to domain name disputes and transactions.
Twitter user names often signify businesses whose tweets are used for marketing and support. This usage creates the potential for conflicts with businesses already using the same or similar names. Twitter does not (yet) have a process for trademark owners to block user names and instead grants user names to the first person or company to apply for them. Registration on Twitter is free, so you may wish to register your company name as a Twitter user name to prevent others from doing so. It is a good idea to use the account periodically after registering, because inactive user names may be deleted.
If you find that another person has registered your company name on Twitter, we can assist. Although Twitter has a somewhat informal dispute resolution policy, it has been our experience that Twitter will transfer a user name if prior trademark rights can be demonstrated.
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 CompuMark and CT Corsearch. Your trademark counsel can assist you in selecting the service best suited to your needs and budget.
Searching for identical or similar names and marks should be considered part of your risk management strategy. If another person or entity has superior rights, you may well have to cease use of your mark and pay damages for infringement. The sooner you learn about the potential for such a claim, the better you can mitigate the risk.
In the United States, individuals or entities may obtain common law trademark rights through the use of a mark, without ever filing for registration. While the Trademark Office will search its own records of valid registrations and pending applications, it does not provide information about common law trademarks. Nor is there any guarantee that the Trademark Office's search will disclose all registered and pending marks relevant to your business.
With the advent of billion-page search engines, information about business activities has become much more readily available. Using a web search engine to supplement a TESS scan of USPTO records provides a broad view of the marketplace. However, it often is impractical to "drill down" through thousands of search results to uncover the most relevant references. That is why we often recommend a comprehensive professional search.
A comprehensive trademark search report supplements data from the USPTO and State trademark offices with a variety of sources selected to identify common law trademarks. These include company name directories, such as Dun & Bradstreet; domain name registrations under the most popular top level domains; trade press and trade directories; and selected web sources. While there is no guarantee that the report will reveal every potentially relevant reference, by working closely with our search vendors and conducting appropriate follow-up investigations, we can reach a greater degree of assurance about a mark's availability than is possible through informal searching.
E-mails like this are generally solicitations. The intent is to scare trademark owners into retaining the sender to register their names and trademarks as domain names in various Asian countries. We recommend refraining from engaging with these solicitors as showing interest could lead the sender to register the domains so they can own and sell them to you at a premium. The names used in this scheme are constantly evolving in an attempt to appear to be official notices from domain authorities in China; many include Network Information Center or NIC (e.g., global-nic.org, cn-nic.org, cnnic-group.org) or even appear to be from Chinese law firms (e.g., Yiyu Patent & Trademark Law Office, whose website is a clone of the well established firm Shanghai Patent & Trademark Law Office). You can view some sample notices sent to Carr & Ferrell about supposed carrferrell domain registrations.
If you are interested in registering — for your own use, or to preempt others — domains containing your trademark or company name, we can recommend a reputable domain name registrar if you do not currently have one. Or we can coordinate registrations on your behalf. Domain registrations are sold on a first-come, first-served basis, and dislodging current registrants may be expensive, time-consuming, or legally impossible. Because there are hundreds of TLDs (top level domains), you probably want to focus only on those most important to your business and we can provide counseling on strategic registrations.
A cottage industry has sprung up in unofficial registries. These are private databases or directories of marks in which you can list your trademark for an exorbitant price. You may receive invoice-like solicitations from WDTP, the Worldwide Database of Trademarks and Patents; WBIP, the World Bureau for Intellectual Property; USA Trademark Enterprises; GBO, Global Business Option; or others. These expensive listing services do not provide any legal protection for your trademark, so we do not recommend them.
WIPO, the World Intellectual Property Organization -- a legitimate agency which operates international filing systems for patents and trademarks -- maintains a large collection of what it calls fraudulent invoices for reference. You can view them at WARNING: Requests for Payment of Fees.
Search engines usually have guidelines, rules, and dispute procedures related to their advertising programs. However, the issue of whether a company is allowed to use a competitor's trademark to trigger advertisements for certain search terms, or keywords, is governed by Federal trademark law as well. Please see our Keyword Advertising FAQs for more information on the evolving law of keyword ads.
For more basic information about trademarks, consult our PowerPoint slideshow "Trademark Strategy: Simple Rules for Choosing and Using Trademarks," or contact a member of the Trademark Practice Group.