Trademarks

"Trademarks can now be protected economically all over the world!"
~ Holland & Bonzagni P.C.

Q1. What is a trademark?

A1. Trademarks, often known and used as brand names, are a part of everyday life. They can be a word (e.g., CRANE^®), logo ("MOSSBERG" logo), slogan (e.g., "JUST DO IT"), package design (e.g., old-fashioned COKE^® bottle) or other source indicator (e.g., color "Tan" for heavy-duty tool storage chests), or combination of them (e.g., THE GOLDEN ARCHES^® with MCDONALD'S^® brand).

Q2. What are the main purposes of a trademark?

A2. The main purpose of a trademark is to prevent the public from being confused about the true source of goods. By doing this, a trademark also helps to assure that the trademark owner, and not an imitative competitor, will reap the many rewards associated with a desirable product. Trademarks also let the public know that the quality of the goods (e.g., a DELL^® laptop) is the same no matter where you buy it.

Q3. How are U.S. trademark rights established?

A3. Rights in a trademark are established by usage in the United States. Such usage can occur either before or after an application for trademark registration is applied for at the U.S. Patent and Trademark Office. Such applications can be filed based upon actual usage of the mark or just a bona fide intent to use it.

Q4. What other types of marks can be federally registered?

A4. Besides trademarks (which identify products), there are other marks that can be registered - service marks, certification marks, and collective marks. Service marks are used in the sale or advertising of services (e.g., FRIENDLY'S^® for restaurants); certification marks are used to certify regional origin, mode of manufacture, accuracy, quality or other characteristics of the goods or services of someone other than the certifier (e.g., UL^® certifies quality of goods); and collective marks are used by cooperatives or other collective groups or organizations (e.g., NHL^® hockey league) to signify membership in the association or to identify goods or services sold by members of the association.

Q5. Our company has a proposed trademark that we intend to use. Should we have a search performed to see if it is available?

A5. Yes, before you invest any money in advertising the mark. That way, if it turns out that your proposed mark would conflict with an existing mark, you can change your mark now before you have invested a great deal of money in it. This search should be done by a trademark specialist.

Q6. Do we have to register our mark to protect it in the U.S.?

A6. Theoretically no. Trademark rights in the U.S. can be protected under common law without a registration. However, to enforce these common-law rights, it usually requires a large expenditure of money to prove and establish common-law ownership. In dollars and cents, it is more practical to obtain a federal registration for your mark. Should you have to protect your mark, this registration is proof that the U.S. Trademark Office has determined that you own the mark.

Q7. Do we have to register our mark to protect it in foreign countries?

A7. Yes, as foreign trademark rights are generally established by registration not use.

Q8. Is it costly to file for foreign trademark registrations?

A8. The answer was yes, until recently. Separate trademark applications had to be filed in each foreign country in which a manufacturer or retailer wanted to prevent someone from using its brand. Now a single, relatively inexpensive, International Application can be filed under the "Madrid Protocol" to cover over 65 countries. See HPs_for_Web_ Fall_03_revised.pdf for a detailed description of the "Madrid" application process and resulting benefits.

Q9. Someone recently started using our company's main brand as a "domain name." They're diverting business to a competitor. Can we stop them?

A9. You should be able to stop that company fairly easily. There is an administrative proceeding called "UDRP" or "ICANN" for resolving such domain name disputes. By it, a true company can secure its domain name, usually with little hassle or expense. See nl_fall2001.pdf for details.

Q10. Does licensing our brand make sense?

A10. Licensing trademarks can be extremely lucrative, but it is not for everyone. Licensing can bring in revenues from new products or "new" countries. Such licensing can also extend the scope of your brand's protection to encompass the new products. There is a catch however: your company must be willing to monitor the quality of any licensed product, and the licensed usages of your trademark, to ensure that your main brand is not diluted or lost.

Practical Advice About Trademarks

Three concerns for clients in connection with trademarks are:

1. whether a proposed mark is available;
2. whether that mark can be federally registered; and
3. whether an existing mark infringes someone else's.

There is a simple question that you can ask yourself when any one of these three concerns arises: Would the use of your mark create a likelihood of customer confusion with anyone else's preexisting mark? For instance, if customers probably would be confused that your mark is somehow connected to, or authorized by, the owner of a prior mark, then you cannot federally register the mark (in the United States) and may be liable for trademark infringement.

If you are unsure of the answer to this question, consult a trademark specialist.