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#Trademark Legal Basics

What is a trademark?

A trademark is a word, slogan, symbol, design, or combination of these elements, which identifies and distinguishes the goods or services of one party from others. The word trademark or trademark law is frequently used generically to encompass similar identifiers of origin such as service marks, collective marks, certification marks, trade dress, and trade name.

What is the purpose of trademark law?

The primary purpose of the trademark laws is to prevent unfair competition by applying a test of consumer confusion and providing rights and remedies to the owner of the trademark.

The test for consumer confusion is to assure that the consumer can be confident that when buying a product or service bearing a particular trademark the product or service expected is actually delivered. In other words, the consumer relies on a standard of quality established by the association of the trademark in the marketplace with the owners product or service.

If the owner of a trademark has spent time and money in presenting a service or product to the consumer, the owner should be able to protect this investment by being allowed to prevent others from using the trademark and profiting from the owners investment. The value of the trademark is determined by the strength, or goodwill, of the association between the trademark and its source, and it is the consumer who determines this value.

Although the trademark identifies the source of the product or service, that source can be the manufacturing source, the selling source, or in case of universities, the source of sponsorship or authorization.

How do trademarks differ from copyrights and trade names?

Trademarks are identifiers of commercial products or services; business names, or trade names, identify a business for non-marketing purposes; and copyrights protect individual, original works of expression.

The non-marketing uses of trade names include uses on stock certificates, bank accounts, invoices, letterhead, contracts, i.e. uses which identify the entity. Trade names can also be trademarks when used to identify specific goods and services.

Copyrights do not generally protect individual words or slogans but will protect creative designs. Therefore, a logo design could be protected by both copyright law and trademark law.

A copyright does not exclude others from developing similar or even the same design as long as the creation is independent from and the creator has not had prior access to the other design. Similar trademarks, however, might not be permitted if the public would be confused or if the value of a strong mark would be diminished or tarnished (dilution).

The owner of a trademark is the first to use the mark in interstate commerce and requires continuous use in commerce to retain ownership. The owner of a copyright, depending on the circumstances, is either the creator or the employer and no publication, use or distribution is required.

The copyright owner has rights for a term of 50, 75, or 100 years depending on the entity owning the copyright. The trademark owners rights are indefinite as long as the trademark is properly used and protected by the owner.

What types of marks receive trademark protection?

Trademark law provides the greatest protection to the marks, which are distinctive, that is, out of the ordinary. Types of inherently distinctive marks include: unique logos (the Nike® swoosh); made up words (Kodak®); fanciful marks, words that give an imaginative image (Airstream® for motor homes); arbitrary marks, words that are surprising or unexpected (Apple® for computers); and suggestive marks, words that cleverly describe the qualities of the product or service (Contact® for self-adhesive shelf paper).

Words that are common or ordinary receive less protection unless they have developed public recognition due to their long use in the market place. These type of marks are said to have acquired a secondary meaning.

Generic marks are common words that describe the product itself and can not be protected by trademark laws. For example, the words Cheese and Noodles could not be protected by trademark if used on a food product consisting of cheese and macaroni.

How is a trademark protected?

Preventing infringement is the best defense in protecting a trademark. Preventative measures which can be taken include:

federal and state registration: A trademark does not need to be registered for the owner to prevent others from using a trademark or from using a confusingly similar mark. Federal registration provides certain legal advantages to the owner when pursuing infringers. One advantage is that it provides a constructive notice to the public which prevents anyone from claiming that they did not know the mark existed. Federal law preempts state law so any state registration performed in addition to federal, is for purposes of notice only.

A trademark can be federally registered if it is used in interstate commerce. The trademark is registered in the class of goods or services for which it is used. It is possible to have multiple owners for similar trademarks as long as 1) the goods and services are not related, 2) there is no consumer confusion as to the source of the goods and services, and 3) there is no dilution of a strong mark.

use of notices: Using the ™, SM or ® provides additional notice to the general public. A registered mark may display the words Registered in U.S. Patent and Trademark Office or Reg. U.S. Pat. Tm. Off. or ®. These displays may only be used with the registered trademarks and on the goods and services actually stated in the Certificate of Registration. It is illegal to use the registration notice on unregistered trademarks or on unregistered goods and services. Recovery of profits and damages in an infringement suit may not be available to the owner if a proper notice of registration is not given. Proper notice is either the use of one of the three registered notices or actual notice as would be the case in a letter sent to the infringer stating that the mark is a registered trademark or as sometimes seen in documents where an asterisk is used to refer the reader to a footnote providing the notice.

™ or SM can be used with a non-infringing trademark without any formalities and can be used on any goods and services for which the owner wants associated with the trademark.

controlled licensing: The law permits a trademark owner to license its marks as long as the owner controls the nature and quality of the goods or services bearing the marks.

pursuing infringers: Abandonment of a trademark can occur if the owner does not take action against infringers.

strong marks can claim dilution: Dilution of a mark is a type of infringement in which the infringing use does not necessarily cause confusion but tarnishes the image or blurs the distinctiveness of the owners mark.

Proper use of the trademark by the owner is also important to its protection. The quality of the goods and services must be maintained for consumer confidence and for strengthening the trademark. The owner should not weaken its own trademarks by using many alterations and blurring its distinctiveness. The more distinctive, the stronger the mark. The trademark owner can create a family of marks which keeps certain elements common among them. If these common elements become recognizable by the public as trademarks of the owner, than it is possible for the owner to have broader protection for other marks that incorporate these same common elements.