A trademark is a word, phrase, symbol, or design (or some combination of the foregoing) that designates origin of a product or service and distinguishes it from competitors.
What is eligible for trademark?
Trademark registration can be granted on distinctive names, logos, and slogans.
What is the difference between a registered and unregistered trademark?
No doubt you have seen the ® and the ™ symbols, and wondered about the difference between the two. The ® symbol is used to designate a trademark that has been registered with the United States Patent and Trademark Office (USPTO); the ™ symbol is used to designate either pending marks, state marks, or a common law trademark that is unregistered and isn’t susceptible to the entire bundle of rights available to a registered mark.
How do I register a trademark?
To register a trademark requires filing an application with the USPTO. To register a trademark requires a detailed trademark search for conflicting senior marks prior to registration, as well as knowledge of the goods and services categories. As a result, it is in your interests to hire an experienced trademark lawyer.
Q: And now it’s time for a question based on the information above: Suppose I have been using my trademark, Acme-Zenth, to market my widgets for the past 10 years without ever registering it. Now another user has come along and begun marketing its widgets under the same name. Can I stop them? Can I stop them from using the word “Acme” to market an entirely different class of goods or services?
A: The answers are yes and no. Your prior use of the mark should serve to prevent a later user from using your mark or a confusingly similar mark for a class of goods and services that is identical or similar to, your goods and services. However, your use of the mark for widgets does not prevent a later user from legitimately using a similar mark (or even the same mark) for goods that are unrelated, say, sealing wax, rather than widgets.
What rights do I gain if I register my mark?
By registering for U.S. Federal Trademark protection, you’ll be eligible for several benefits, including:
• Treble damages in some cases of infringement
• The right to use ® in your trademark
• A streamlined process for securing your domains and usernames at social sites like Facebook, Twitter, and YouTube
• Significantly stronger protection than ‘common law’ (aka. unregistered) marks. This can make it much easier to recover your property, if someone happens to use your company name as their Twitter handle.
Can I register sounds, smells, or colors?
If they are distinctive, yes. The NBC chime is a registered trademark. So is Dow-Corning’s distinctively hued pink insulation. And certain perfume fragrances have also been trademarked.
Use it or lose it
Once your trademark has been registered it should be used. If your mark is not put to use, its registration is liable to be cancelled on the application of a third party who can show that it has not been used. In most countries, a mark will not be cancelled unless it can be established that there has been at least three years of non-use. In this context, it would be advisable to check the legal position in the country or countries for which your mark has been registered.
The contents of this piece are not legal advice. Consult with an attorney prior to embarking on any legal matter. Barry Scholl is a business litigation and corporate governance attorney and can be contacted at 801-531-2000 or firstname.lastname@example.org.