Basic Information about U.S. Trademarks
What is a Trademark?
- A trademark is a word, phrase, symbol, or picture used in connection with the
sale of goods or services. A trademark identifies the goods or services as being
supplied by a particular source. As defined in section 45 of the 1946 Act, a trademark
"includes any word, name, symbol, or device, or any combination thereof adopted
and used by a manufacturer or merchant to identify his goods and distinguish them
from those manufactured or sold by others."
__ A trademark is different form a tradename or company
name because a trademark is always in view of the customer. For example, Kleenex®
is a trademark, but it is not a company name. Purchasers of these tissues may not
even know the name of the company selling them. Many company names (tradenames) are
used as trademarks, but this is not always the case and the distinction is important.
In the United States, trademark rights are inextricably linked to use of the trademark
in commerce. Trademark rights begin with use of the trademark and lapse when the
use of the trademark is abandoned.
__ Trademarks serve two functions: to indicate origin,
and to guarantee the quality of the goods or services bearing the mark.
- Choosing a Trademark
- A trademark should be carefully chosen. It is supposed to be distinctive, not
descriptive. The best trademarks are words that have no meaning until given meaning
as a trademark, e.g. XEROX®. These trademarks are said to be fanciful.
The next best type of trademark is what is called suggestive. These are words which
suggest the product, but do not describe it, e.g. Jaguar ®. A jaguar is sleek,
fast and powerful; so is the car which carries the name.
__ Poor trademarks include commonly used words like
Acme, Paramount, Universal, etc. Words which are purely descriptive have no trademark
value and cannot be appropriated, e.g. the word Cola for cola soda. However, Cola
could be a good trademark for something other than soda.
__ Names of persons and places fall under special rules
and should be avoided unless there is a special reason to use them.
__ Before investing money in advertising a trademark,
a search should be made to be sure the trademark is not already in use by another.
__ Once a trademark is in use, it should be identified
with the symbol ™ or the word Trademark. The registration symbol ® should only
be used after the trademark is registered.
- Trademark Registration
- A trademark used in interstate commerce may be registered with the United States
Patent and Trademark Office (PTO). Registration grants certain valuable legal rights
which are not otherwise available to the trademark owner.
__ Trademarks are registered by filing an application
with the PTO. The application must contain: (a) A drawing of the mark; (b) Five specimens
or facsimiles of the mark (e.g. labels); (c) The required filing fee; and (i) The
name of the applicant; (ii) The citizenship of the applicant; if the applicant is
a partnership, the names and citizenship of the general partners or, if the applicant
is a corporation or association, the state or nation under the laws of which organized;
(iii) The domicile and post office address of the applicant; (iv) A statement that
the applicant has and is using the mark shown in the accompanying drawing (or has
a bona fide intention to use the mark); (v) The particular goods on or in connection
with which the mark is used; (vi) The class of merchandise according to the official
classification if known to the applicant; (vii) The date of applicant's first use
of the trademark in connection with goods specified in the application (if used);
(viii) The date of applicant's first use of the trademark in connection with goods
specified in the application in interstate commerce (if used); (ix) The manner in
which the mark is used on or in connection with the particular goods specified.
__ Until recently, a trademark application could not
be filed until the trademark was first used in interstate commerce. In November 1989,
the PTO began allowing applications to register trademarks which were not yet used,
but which the applicant intended to use. In other words, the application may be filed,
but the trademark will not be registered until it is used in interstate commerce.
Once the trademark is registered, however, the applicant's rights in the trademark
will date back to the application date.
__ The fees charged for registering a trademark depend
on the number of classes of goods/services on which the trademark is used.
__ A trademark registration can last forever, but an
affidavit of continued use must be filed in the sixth year after registration and
the registration must be renewed after 20 years.
- Trademark Infringement
- The test for trademark infringement is whether or not the accused infringer's
use is likely to cause confusion, to cause mistake, or to deceive. The type of goods
involved is important. Cadillac cars and Cadillac dog food coexist without any confusion,
mistake or deception. Moreover, a tradename can infringe a trademark. If I call my
company the Kleenex Corp., I might be infringing Kimberly-Clark's trademark rights
in the Kleenex trademark.
THOMAS A. GALLAGHER, ESQ.
Registered Patent Attorney
30-605 NEWPORT PARKWAY • JERSEY CITY • NJ • 07310
TELEPHONE: 201-653-4269 • FAX: 201-653-4364
TELEX: 6504023049 • MCI MAIL: 402-3049
- The above is not intended to be legal advice, but is merely informative
of the copyright laws. Anyone interested in obtaining information about copyright
protection should seek the advice of a qualified attorney.