Trademarks

SUMMARY. A trademark is a logo, name, word, slogan or symbol used by a manufacturer or merchant to identify the source of the goods and services which the merchant places in commerce. In some cases (called trade dress) the appearance of a product or its packaging can also be protected as a trademark. Trademarks identify goods and Service Marks identify services. The term of a Trademark or Service Mark is 10 years.

Examples of Trademarks include the following:

  1. A word: “Exxon” for petroleum products.
  2. A phrase or slogan: “It’s the real thing” for soft drinks.
  3. A symbol: “Tony the Tiger” for cereal, or the Exxon tiger.
  4. A shape: the shape of the Coca-cola bottle.
  5. In some cases, a fragrance, sound or even a color combination (pink fiberglass insulation).

More Detailed Information:

What are Trademarks and Service Marks?

The term trademark or trade name is used to distinguish a product of one company from a product of another company. They may be either a word, phrase, symbol, design, logo or a combination of words, phrases, symbols, designs, or logos.

The term service mark or service name is used to distinguish a service of one company from a service of another company. They may be either a word, phrase, symbol, design, logo or a combination of words, phrases, symbols, designs, or logos.

Generally, one would consider the brand name of a product/service to be the trademark/service mark of the company.

Also, the shape of an article, e.g., a bottle, or a sound, e.g., Tarzan yell, have been used as trademarks to distinguish a product/service of one company from another. However, instances of this are not as common as other forms of marks/names mentioned above.

Comparison of Trademarks, Patents and Copyrights.

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks. Must all marks be registered? No, but federal registration has several advantages, including a notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.

A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.

The Trademark Division of the United States Patent and Trademark Office (USPTO) handles trademarks only, and, is separate from the Patent Division of the United States Patent and Trademark Office (USPTO) which handles patents only. For information on patents, please see the appropriate pages of this web site.

Establishing Trademark Rights.

The right to a trademark generally arises by (1) using the mark in business or (2) filing a trademark application to register the mark with the USPTO and either stating that the applicant is currently using the mark in commerce or that he has a bona fide intention to use the mark in commerce. It is not necessary to Federally register a mark to establish rights in a mark, nor is Federal registration required to begin use of a mark. However, as previously mentioned, federal registration has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. One who federally registers a mark is presumed to be the owner of the mark described in the registration for the goods and services specified in the registration, and, also, to be entitled to nationwide use of the mark.

The right to register a mark usually belongs to the first party who either uses the mark in commerce or files an application in the USPTO and has the ultimate right to register that mark and it should be understood that the USPTO’s authority is limited to determining the right to register. However, many lawsuits have been borne from disputes over the right to use of a mark, and, this can become a major problem when a first begins to use a mark at the same or approximate time as another party before either party has registered the mark. In these cases relief must be sought in a court of competent jurisdiction over the right of use of the mark. The type of relief sought might include the issuance of an injunction or award of damages for infringement.

Federal registration can provide significant advantages to one party versus another party who are involved in a court proceeding. The USPTO does not provide advice concerning one’s rights in a mark and a qualified attorney such as George Williamson should be sought for advice. Trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services, assuming the owner files the proper paperwork with the USPTO to document the continued use of the mark. The basic term of a federal trademark registration is 10 years, with 10-year renewal terms, but, as previously stated, indefinite life can be attained if the registrant, between the fifth and sixth year after the date of initial registration, files an affidavit of continued use setting forth certain information to keep the registration alive. However, if no affidavit of continued use is filed, the registration is canceled due to abandonment.

Who Can file for a Trademark?

The application for federal trademark registration must be filed in the name of the owner of the mark. This will usually be an individual, corporation or partnership. The owner can submit the application for trademark registration, or be represented by an attorney such as George Williamson. An application filed by anybody else will be declared void after it becomes known they are not the owner. Regarding ownership, generally, the person who uses or controls the use of the trademark, and controls the goods and services the trademark represents, is the owner of the mark.

Applicants not living in the United States must designate in writing the name and address of a person residing in the United States. The USPTO will send your domestic representative all notices and communications regarding your mark, unless you are represented by an attorney in the United States. A minor can file for trademark registration depending upon state law. If the person can validly enter into binding legal obligations in their state, then that person may sign a trademark application. Otherwise, a parent or legal guardian must sign the application, clearly setting forth their status as a parent or legal guardian of the applicant.

Importance of a Proper Trademark Search.

There is no legal requirement to do a trademark search of prior trademarks before filing a trademark application or before one can use a mark. However, you may get sued for trademark infringement if you begin to use the trademark owned by another party if you don’t do a proper trademark search. Also, it makes no sense for a company to incur the time and advertising expense associated with developing a trademark and then have to change the name at a later date after you find out another company already has been using the mark or has registered the mark. Also, money will be saved if the mark you plan to register is either the same, or is similar to another company’s registered trademark for identical or similar goods and/or services because the application will be denied by the USPTO and the registration fees will not be returned.

Major problems can arise if you don’t do a proper trademark search before using a name, or filing either an “in-use”, or “intent to use”, trademark application. First, if use occurs prior to a proper search being conducted, a trademark owner with prior rights in and to the mark you began using may require you to immediately cease using of the mark, destroy all paper, advertising materials, and products containing the mark, and potentially sue for monetary damages such as lost profits, as well as other statutory damages such as for willful infringement which may include attorneys fees and costs and treble damages. The courts have considered failure to have a search conducted to be a factor in finding “willful infringement”. If you are merely filing an “Intent to Use” application, and the use of the mark has not commenced, one may argue that the liability is minimal because without actual use of the mark there are no profits. However, various courts have found such defendants liable for willful infringement on the ground that they intentionally ignored the advice of counsel who recommended a trademark search be conducted. George Williamson almost always recommends that a proper trademark application be done before either using a mark or seeking registration of the mark.

How to Keep Your Trademark Alive.

According to USPTO regulations, in order for a trademark registration to remain valid, an Affidavit of Use (Section 8 Affidavit) must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the Section 8 Affidavit within a grace period of six months after the end of the sixth or every tenth year, with payment of an additional fee. The registrant must also file a Section 9 renewal application (Section 9 Renewal) within the year before the end of each successive 10-year period following the date of registration, or within a grace period of six months thereafter, with payment of an additional fee. Assuming the Section 8 Affidavit and Section 9 Renewal are timely-filed as indicated above, the registration will be renewed for a 10-year term. If the Section 8 Affidavit and Section 9 Renewal are not timely filed, the registration will be cancelled. Registrations cancelled due to the failure to file a Section 8 Affidavit and Section 9 Renewal cannot be revived or reinstated.

Use of the “TM,” “SM” and ” ® ” Symbols.

The symbol “TM” stands for trademark, while “SM” stands for service mark. These symbols may be used for any mark which a person claims rights to, even if they have not officially filed a registration with the United States Patent and Trademark Office. The symbol “®”, on the other hand, cannot be used without a mark being first officially registered, as it is the federal registration symbol. The use of such a symbol can only occur after the United States Patent & Trademark Office (USPTO) registers a mark, meaning that an application pending status does not grant power to use the registration symbol. After registration of a mark is granted, an individual is free to use the federal registration symbol for whatever goods and/or services are outlined in the registration filings.

Registration by the State of Alabama.

Trademarks and Service Marks may be registered in the State of Alabama, or other state, just as in the United States. As previously stated, the purpose of a “mark” is to distinguish goods and services from those of others. Trademark, Service Mark, and Trade Name registrations are administered at the state level in the Office of the Secretary of State. Trademark and service mark registrations were codified in 1981. Trade name registrations were codified in 1988.

Although the term “Trademark” is often used to refer to both trademarks and service marks, the two marks serve different purposes. A trademark is used to identify goods made or sold. A service mark is used to identify services rendered. A trade name is used to identify the business, vocation, occupation, or profession.

Trademarks, service marks and trade names may be registered by submitting an application for registration, three specimens and the registration fee. The effective term for mark registrations is five years. Trademarks, service marks and trade names may be renewed by submitting an application for renewal, one specimen and the renewal fee. If the owner of a mark changes as a result of lawful transfer of the mark, a notarized statement of assignment must be filed in this office with the assignment fee.

Rejection/denial of mark registration by this office does not prevent use of the mark. Rights of ownership are achieved through the common laws of adoption and usage in Alabama. The Common Law of Alabama states that once you adopt and use a mark and are documented as the first to use such mark, you are entitled to exclusive rights to that mark. Any conflict of ownership is handled outside the Secretary of State’s Office and is an issue for the courts.

You may search online records of the State of Alabama to retrieve information for all marks registered in the state.