Intellectual Property Law
Trademarks: Definition, Benefits of Registering, and How to Apply for One
A trademark, in simplest terms, is a "mark" that is used in trade. It identifies a particular product or manufacturer to distinguish it from others. Generally trademarks are words, symbols, logos, sounds, or phrases, but may also extend to include other aspects of a brand such as scents, colors, and patterns. As long as consumers associate the aspect with a particular manufacturer or source rather than the product itself. For example, a certain shade of robin’s egg blue has been the trademark of Tiffany and Co. for years. Thier registered trademark on this particular color prevents other jewelry manufacturers and stores from using the same color in their advertising and packaging. Thinking of opening a hardware or building supply store? Don’t use the color orange in your logo or lettering or The Home Depot may have a case for trademark infringement. The Burberry fashion house markets a wide array of fashion accessories using it’s trademarked tartan pattern, one of the most widely copied patterns (albeit illegally). When you see a sleek car cruise by, and there’s a shiny silver cat leaping from the hood, you know exactly what you’re looking at. A car, of course, but one that is manufactured by the multinational Jaguar Land Rover company. The Jaguar symbol is an important part of the company’s branding and marketing efforts. The brand sells, the name and logo alone drawing buyers like flies. Indeed, trademarks can add exponential value to any company’s net worth and in many cases constitute the core and backbone of their success and longevity.
Trademarks are an important part of any business endeavor. Having a design for a product or an idea for a service is only the first step. Branding and creating an identity for your product or service is a crucial part of any business plan. Trademark registration not only protects the rights of the manufacturer or service provider to which they belong, but is beneficial in protecting consumers also. Consumers have a right to know where their goods and services are coming from. Trademarks help consumers identify products and service providers, differentiate between various options, and ultimately make more informed decisions. If there were no regulation, consumers would fall prey to deceptive marketing practices and businesses would find themselves unable to develop a competitive edge and solid identity.
Registering your trademark or servicemark with the United States Patent and Trademark Office (USPTO) is not required in order to use the mark and you can establish rights in the mark simply by using it in the merchandising and promotion of your goods and services. It is always wise to perform due diligence and make sure the mark is not already registered or in use before using it or you can run the risk of trademark infringement. Filing your Trademark with the USPTO can be a long and costly process, but ultimately worthwhile. Trademark registration provides the following benefits:
Registration allows the trademark owner to initiate a lawsuit in federal court
The ability to secure trademarks in foreign companies based on your U.S. registration
Notice will be served to the public that you are the owner of the trademark via your listing in the USPTO databases.
Registration grants you the right to use the Rights Reserved symbol which is the federal registration symbol
Registration gives you a legal basis to your claims of ownership should you be challenged in court
Registration allows you the ability to exclusively use the mark nationwide and online in marketing your goods or services. If your business plans to expand beyond your local area or establish an online presence, registration is highly recommended.
The USPTO website is extremely helpful in providing information about the registration process but we’ll give you a brief overview.
When applying for your Trademark, first you must distinguish between the two types of Trademarks; a trademark and a servicemark. Trademarks are labels on goods, while a servicemark is a company logo associated with a service, such as a cleaning service. When you apply, you will have to provide a design of the mark and submit a specimen or demonstration of your good or service that shows your trademark. This is extremely important because that specimen or demonstration is your proof of use.
Proof of use:
Trademarks do not depend on who filed first, so don’t worry about racing to the USPTO to protect your brand name. Instead, Trademarks depend on who starts using the brand first, and the application process depends upon proof of usage. “Use” means that you can prove that you have attached the mark to the good which has been sold as marketed. Specimens must meet very specific conditions. They must be on the item and they must show the use of the item. A flyer advertising your new kitchen equipment line will not suffice. A label used on all of the kitchen items however will.
You will either file a “use in commerce” a “1(a)” application under 15 USC § 1051(a) or an “intent to use” under 15 USC § 1051(b). The first is for service trademarks, the second for regular trademarks. You will have to specify the types of goods/services that the trademark will be attached to. Be very careful with your application, after filing there are some things that cannot be changed. Be broad enough in your description that you won’t have to refile a trademark if you expand your business, but at the same time specific. Kitchenware would not suffice, kitchenware such as plates and glasses would.
Within three to four months of filing, the USPTO will review your application and contact you with any problems. This could range from a phone call, to an NOA, a Notice of Office Action explaining the problems with your application, if any, which you then have six months to respond to (although this can be extended at $100 an extension). Once your Trademark is approved, there will be a 30-day opposition period, when complaints can be raised against your Trademark. If that passes, then finally, your Trademark will be registered.
How to Maintain and Sell
The USPTO website states, "For a trademark registration to remain valid, an Affidavit of Use (Section 8 Affidavit) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration."
One can sell or license a trademark in many ways as if it were a tangible good, although special rules apply.