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WHAT IS A
TRADEMARK?
 A trademark or service mark identifies and
distinguishes a party's goods or services from those
of another. A trademark or service mark may be a
word, design, sound, color or even scent.
Trademark law originated in response to a perceived
need to protect consumers by providing them with
assurance that when they purchased a product bearing
a particular mark in the marketplace, they could be
certain that the product came from the same source
as when purchased previously. Trademark law was not
built on the premise that a company’s investment in
its brand should be safeguarded. Trademark law
developed to protect the public, not the trademark
owner. The Lanham Act fosters this purpose by
prohibiting use of a mark likely to cause confusion,
mistake or deception. 15 U.S.C. § 1114.
HOW DO
I SELECT A MARK?
Not all marks are the same. Some marks are
inherently stronger than others because of the
mark’s distinctiveness.
A mark can be classified into one of four categories
depending upon its distinctiveness. Each category
provides different levels of protection for the mark
owner.
Fanciful or Arbitrary Marks
A fanciful mark is a term that is invented by the
owner for the sole purpose of being a trademark and
is not a word in any language (i.e. KODAK, EXXON).
An arbitrary mark is a word, picture or symbol that
is in use, but bears no relationship to the goods or
services to which it is applied (i.e. APPLE for
computers, IVORY for soap). These are the strongest
types of marks and are protectable without proof of
secondary meaning.
Suggestive Marks
A suggestive mark is a term that requires the
consumer to exercise some imagination to draw a
conclusion as to the nature of the goods or services
(i.e. COPPERTONE for tanning lotion, CATERPILLAR for
tractors). Suggestive marks are protectable without
proof of secondary meaning.
Descriptive Marks
A descriptive mark identifies a characteristic or
quality of a good or service, such as color,
function, ingredients or size (i.e. VISION CENTER
for eyeglass store). A descriptive mark is not
registerable or protectable unless secondary meaning
can be proven.
Generic Terms
A generic term is a common name of a particular
class of goods or services that does not identify
the source of the good or service and distinguish
them from another (computers, hotels). These terms
can never be registered or protected as trademarks.
WHAT
IS SECONDARY MEANING?
Secondary meaning signifies that the consuming
public has come to identify a particular good or
service and distinguish it from others. This can be
proven through substantially exclusive and
continuous use of the mark in commerce for five
years, 15 U.S.C. § 1052(f), or through evidence of
extensive advertising and sales, or through a
consumer recognition survey.
IS
SOMEONE ALREADY USING MY MARK?
Prior to introducing a new mark, it is advisable to
run a "clearance search" to determine if someone
else is using that mark or a similar mark that is
likely to cause confusion. This will help assess the
risk of potential infringement suits and the
probability of obtaining a registration for the new
mark.
A search cannot completely eliminate the risk of
suit because it is impossible to guarantee that all
relevant marks are listed in the areas searched.
However, the risk of suit will be substantially
reduced by obtaining or performing a competent
search of all registered marks, brand names,
slogans, business and corporation names, and
Internet domain names.
You can perform a preliminary search on the U.S.
Patent and Trademark Office’s website at
http://www.uspto.gov/main/trademarks.htm
(Trademark Electronic Search System). This website
provides a database of all federal trademark
applications and registrations.
Additionally, you can perform a preliminary search
of domain names to determine whether someone may be
using your proposed mark at
http://www.networksolutions.com.
The Internet provides a number of additional
websites where you can perform a trademark search.
For one of these, see: EarthLink -
http://home.earthlink.net/~patentlaw/freetm.htm.
HOW DO
I PROTECT MY MARK?
First, contrary to popular misconception,
registering a mark does not grant the rights to use
the mark, except in very limited situations. The
right to use a mark comes from actually using the
mark in commerce. Although federal registration does
create certain legal presumptions in favor of the
mark owner that cannot be obtained merely through
common law use of the mark, registration is not
required for use of the mark or for assertion of an
owner's rights to that mark.
Second, there are two methods of obtaining
protection for your mark through a registration of
the mark – a federal trademark registration and a
state trademark registration. The protections
afforded by each registration, are quite different.
Federal Registration
Federal trademark registration may be obtained
through either actual use of the mark in commerce or
the filing of an intent-to-use application in the
U.S. Patent and Trademark Office ("USPTO"). To apply
for federal registration, see the USPTO’s website at
http://www.uspto.gov/main/trademarks.htm.
An owner of a mark used in commerce may apply to the
U.S. Patent and Trademark Office for registration on
the Principal Register by filing a written
application. The application must specify the
applicant's domicile and citizenship (for
corporations, the jurisdiction of incorporation),
the date of applicant's first use of the mark and
its first use date in commerce, a description of the
goods or services in connection with which the mark
is used and the mode or manner in which the mark is
used in connection with the goods or service. The
application must be verified by the applicant, or an
officer of the applicant corporation, with a
statement of ownership of the mark, that the mark is
in use in commerce, and that, to his or her
knowledge, no other entity has the right to use the
mark. A drawing of the mark and specimens must also
be submitted with the application, along with the
appropriate fees. Lanham Act § 1 (a), 15 U.S.C. §
1051 (a).
An application may also be filed on a proposed mark
if the applicant has a bona fide intention to use
the mark in commerce. Such an "intent to use"
application must specify the goods or service in
connection with which the applicant has a bona fide
intention to use the mark, and the intended mode or
manner of use of the mark. The application must also
contain a verifying statement by the applicant
similar to that described above. A drawing of the
mark and the appropriate fees are also required.
Lanham Act § 1(b),15 U.S.C. § 1051(b).
A mark cannot be registered on the Principal
Register without first having been used in commerce.
Therefore, if an intent to use application is
accepted by the Patent and Trademark Office, the
applicant must submit a statement of use within six
months of receiving a Notice of Allowance on the
mark. This period may be extended up to three years
from the date of the Notice by a showing of good
cause by the applicant. Lanham Act § 1 (d), 15 U.S.C.
§ 1051 (d).
The Benefits of Federal Registration
A certificate of registration of a mark on the
Principal Register is prima facie evidence as to the
validity and ownership of the mark and registrant's
exclusive right to use the mark in commerce on, or
in connection with, the goods or services designated
in the certificate. Lanham Act § 7 (b), 15 U.S.C. §
1057 (b). A federal registration confers nationwide
priority rights from the application's filing date
and serves as constructive notice to other potential
users.
State Registration (Montana)
Montana’s statutes provide that "a person who adopts
and uses a mark in this state may file in the office
of secretary of state, on a form to be furnished by
the secretary of state, an application for
registration of that mark . . .." Mont.Code Ann. §
30-13-311 (2001). For the application form, see the
Montana of Secretary of State’s website at
http://www.sos.mt.gov/BSB/Business_Forms.asp.
A Montana state trademark registration is effective
for a term of 10 years from the date of
registration, and may be renewed within 6 months of
the expiration of the term for another 10 years.
Mont.Code Ann. § 30-13-313 (2001).
State Trademark Registration Benefits
A Montana state trademark application does not go
through as rigorous of a review process as a federal
application. Consequently, the benefits of a state
registration are much more limited. The two primary
benefits are:
a. the registration may provide notice to someone
conducting a trademark search of the registrant’s
right to use mark in Montana; the state registration
may dissuade someone from using the mark on a
national level; and
b. the registration gives the registrant certain
remedies against an infringer. Mont.Code Ann. §
30-13-333 & -335 (2001). These remedies are
restricted to an owner of a state registered mark.
HOW DO I WARD
OFF WOULD-BE INFRINGERS OF MY MARK?
The legal status of a federally registered trademark
should be indicated whenever the mark is used by
following it with registration symbols such as "®",
"Reg. U.S. Pat. & Trad. Off.", or "Registered in the
U.S. Patent & Trademark Office." The status of an
unregistered or state registered mark should be
indicated with the symbol "™" or an asterisk
indicating "A trademark of ______________ Company."
The word "brand" can also be used to emphasize the
trademark character of the term, as in "Scotch®
brand cellophane tape" and "Pyrex® brand heat
resistant glass." The trademark should also be
distinguished from surrounding text by a distinctive
type face, quotations marks, solid capital letters,
or at the very least, capitalization of the first
letter, so the public will recognize it as a
trademark.
The trademark should be used to indicate the source,
manufacturer or quality of a product, and should not
be used like a name for a product. Advertising
should refer, for example, to "riding an ESCALATOR®
brand moving staircase", not "riding an Escalator",
and "cleaning the rug with a HOOVER® brand vacuum
cleaner, not to "Hoovering the rug." Additionally,
the integrity of the trademark should be preserved
by not using it in the possessive form (TEFLON’S
surface, SEVEN-UP’S taste), in the plural form (MIXMASTERS,
LAND-ROVERS), or as a verb (to SIMONIZE, to XEROX),
and by avoiding prefixes, suffixes, additions or
deletions.
Finally, the use of the trademark by the media, the
public, trade publications, competitors, the U.S.
Patent and Trademark Office, and others should be
monitored, and any misuse or infringement of the
mark should be challenged. Where an individual or
entity has begun using an identical or confusingly
similar mark for similar products or services, you
should demand that the individual or entity cease
and desist from further use and/or seek injunctive
relief if necessary. The registration of confusingly
similar marks should be contested by filing
oppositions or cancellation petitions in the U.S.
Patent and Trademark Office.
by
Shane A.
Vannatta
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