Trademarks

What is a trademark?

The term “trademark” (or “mark”) refers to any word, name, symbol or device, or any combination of these, that is used in commerce to designate, identify and distinguish the goods of one manufacturer or seller from the goods manufactured or sold by others, and to indicate the source of the goods. In common language, a trademark is a brand name or other brand-identifying device (such as the color pink used by Owens-Corning for its brand of fiberglass insulation, the Pillsbury doughboy, or NBC’s three-tone sound mark). Marks that are used to identify or advertise services rather than goods are often referred to as “service marks.” Rights in a trademark are acquired and maintained only by use; however, as discussed below, registration does provide you with additional benefits and rights.

The primary function of a trademark is to indicate the origin of goods or services. Trademarks also enable consumers to identify products and service-providers so that they can either look for them again or avoid them. In this way, a trademark represents the quality and uniformity of the goods bearing the mark. The goal of trademark law is to protect the source-identifying and quality-designating functions of trademarks. The first party that acquires rights in a trademark for a particular good or service (the “senior user”) owns certain exclusive rights in the mark – namely, the right to prevent others (called “junior users”) from creating confusion by using the same or a similar mark for similar goods or services. Some trademarks are so famous that third party use of them for any goods or services is likely to cause confusion and infringe the senior user’s rights.

Selecting a trademark

Businesses often desire to adopt a trademark that clearly evokes or describes their product. However, such marks may be impossible or very difficult to protect. Words that are the generic name for the user’s goods or services cannot function as trademarks at all. For example, the term “apple” cannot be appropriated as a trademark for apples. Words that are descriptive of the user’s goods or services may be protectible as trademarks, but only under certain circumstances which your attorney can explain to you. The most easily protectible trademarks are those that are arbitrary or fanciful when applied to the user’s goods or services. Kodak®, Xerox® and Exxon® are examples of fanciful marks, while “apple” used as a trademark for computers is arbitrary.

Before adopting a trademark it is advisable to have an attorney evaluate whether the term or device is eligible for trademark protection and conduct a “trademark search” to find out whether the mark is already owned by another party. While such searches do not guarantee that the desired mark is available for adoption, they minimize the risk that the mark you adopt will infringe a third party’s rights.

Many people believe that they automatically have the right to use the name of their corporation, LLC or other business as a trademark. This is not the case. Just because the state allows you to form a business entity under a given name does not mean the name does not infringe someone else’s trademark.

Registering your trademarks

Trademarks may be registered with the United States Patent and Trademark Office (“PTO”) and/or the Florida Secretary of State. Since trademark rights arise from use, registration is not necessary to create rights. However, by registering a trademark with the PTO, you can secure trademark rights in areas of the United States in which you have not yet used your mark. Federal and state registrations also provide advantages in lawsuits to enforce trademark rights. An attorney can advise you as to whether a federal and/or state registration would be advisable.

In order to be eligible for federal registration, a mark must be used in commerce that may lawfully be regulated by Congress – for example, interstate commerce – at the time the registration is granted. Generally speaking, the use that is required to register a mark for goods consists of placing the mark on the goods, or on their packaging, tags or labels; while, for services, the mark must be used or displayed in the advertising or sale of the services and the services must actually be rendered. You may file a federal application (not Florida) to register a trademark before you use it if you have a bona fide intent to use the mark, but the registration cannot issue until you commence actual use.

The total time for a federal trademark application to be processed may be from almost a year to several years, depending on the basis for filing and the legal issues which may arise in the PTO’s examination of the application. Federal trademark registrations must be renewed every ten years and certain filings are required between the fifth and sixth year following registration.

The federal registration symbol ® may be used once the mark is actually registered with the PTO or, in some cases, if the mark is registered in a foreign country. Use of the ™ and SM symbols is not required, but may discourage others from infringing your mark; these two symbols may be used before the mark obtains federal registration.

Enforcement of Trademark Rights

Infringement of a trademark occurs when someone other than the trademark owner uses the mark, or a similar mark, on goods or services in a manner that is likely to cause confusion concerning the source or origin of the parties’ respective goods or services or to suggest an affiliation or an endorsement of the junior user’s goods or services by the owner of the mark. Dilution occurs when someone uses a similar mark in a manner likely to diminish the distinctiveness of or tarnish a famous mark. Enforcement of federally registered marks can take place in either federal or state court; while enforcement of Florida-registered marks typically takes place in state court. A mark that is not registered may still be eligible for protection in federal and/or state court depending upon factors which a trademark attorney can explain to you. The remedies available to a successful trademark owner in an infringement lawsuit may include an injunction; a monetary award; impoundment and destruction of infringing items; and, in exceptional cases, recovery of the trademark owner’s attorney’s fees. Special procedures and remedies, including potential criminal liability, apply in cases involving counterfeit goods or goods labeled with counterfeit marks (such as counterfeit purses).