By definition, a trademark is “a distinctive sign or indicator used by an individual, business, organization or other legal entity to identify products or services to consumers with which the trademark appears originate from a unique source.” Companies or individuals register their trademarks to protect it from being used by other entities, which is considered trademark infringement.
After a trademark is registered, it is usually designated with one of the following symbols:
• ™ (for an unregistered trade mark, that is, a mark used to promote or brand goods)
• ? (for an unregistered service mark, that is, a mark used to promote or brand services)
• ® (for a registered trademark)
A trademark does not have to just be a symbol. It can also be a name, word, phrase, logo, image or a combination of these elements. Trademarks can also include the shape of goods, packaging, color or a combination of colors, a smell, sound or even a movement. The only stipulation is that such items must be used exclusively to identify a commercial source or origin of products or services to be considered a trademark.
The concept of using a trademark is said to date back to the Roman Empire and the blacksmiths who made the swords and placed their stamps on them. One of the oldest registered trademarks is “The Bass Red Triangle”, which was trademarked in 1875 in the United Kingdom.
Two basic requirements must be met for a mark to be eligible for trademark protection: it must be in use in commerce and it must be distinctive. The first requirement, as defined by the Lanham Act, is that a mark be used in commerce. With common law and under traditional Lanham Act registration procedures, exclusive rights to a trademark are awarded to the first to use it in commerce.
The second requirement is that the mark be distinctive. A trademark that is categorized as descriptive is only protectable as a trademark if it has acquired a secondary meaning in the minds of the consuming public. Secondary meaning is also necessary to establish trademark protection for a personal name or a geographic term. Generic terms are never eligible for trademark protection because they refer to a general class of products rather than indicating a unique source.
Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea of this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.
Owners of registered trademarks can protect the unauthorized use of that trademark. Unregistered marks may only be protected within the geographical area within which it has been used or in geographical areas. A registered trademark is considered by law to be a form of property.
In the United States the trademark registration process entails several steps prior to a trademark receiving its Certificate of Registration. First, an Applicant, the individual or entity applying for the registration, files an application to register the respective trademark. An attorney for the U.S. Patent and Trademark Office examines the trademark to make sure it complies with all requirements. Requirements include making sure the applicant’s goods or services are identified properly and that the mark is not merely descriptive or likely to cause confusion with a pre-existing applied-for or registered mark.
There is then a 30-day waiting period in which third parties who may be affected by the registration of the trademark may step forward to file an Opposition Proceeding to stop the registration of the mark. If this happens, a proceeding is filed before the Trademark Trial and Appeal Board. If there is no third-party opposition, the registration becomes completed.
Trademarks rights must be maintained through actual lawful use of the trademark. These rights will cease if a mark is not actively used for a period of time, normally 5 years in most jurisdictions. Failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable for the removal of the trademark from the register. It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential. This is designed to prevent owners from continually being tied up in litigation for fear of cancellation.
In the US, due to the overwhelming number of unregistered rights, trademark applicants are advised to perform searches not just of the trademark register but of local business directories and relevant trade press before applying for a registered trademark. There are specialized search companies perform such tasks prior to application.
Steven Medvin is the Executive Director of SMP Advance Funding, LLC, which provides lawsuit funding to individuals who need a lawsuit loan for pending lawsuits. For more information please visit: http://www.smpadvance.com