Trademarks
A trademark is a word, phrase, symbol or design, or any combination of these that distinguishes one product or service from another. This form of intellectual property protection is used to protect consumers by clearly indicating the source of goods or services and differentiating them from the goods or services of another provider. A servicemark is a form of trademark that is used to distinguish a service. Trademarks are commonly labeled with the symbols ™ or ® to indicate ownership of a particular mark.
For example, many of the words and slogans we see used to describe popular products such as soft drinks and automobiles are marked with an ® to indicate registered trademarks. Did you know that corporations using these marks run the risk of losing their trademark rights if these words or phrases are consistently used to describe generic products?
For more information regarding trademarks, please refer to our questions section. If the information you are seeking is not available on this website, please feel free to Email us, or refer to the U.S. Patent and Trademark Office Website.
Look Before You Leap
Preserving your Rights in the Intellectual Property Marketplace.
Introduction
Obtaining protection for intellectual assets is important to individual inventors and multinational corporations alike. Yet, most inventors are unfamiliar with the many forms of intellectual property protection available and the rights afforded under them. Knowing your rights and the ways in which these rights may be challenged or waived is critically important to the development and preservation of any intellectual property asset.
Many opportunities for obtaining intellectual property protection can be lost or severely limited by your action, by your failure to act, or by events which may or may not be under your control. No case is the same; therefore, an experienced patent attorney should be consulted in all intellectual property matters. However, your familiarity with the information contained in this article will greatly improve your chances of obtaining adequate protection for your ideas
Trademarks
A trademark is a word, phrase, symbol or design, or any combination of these that distinguishes one product or service from another. This form of intellectual property protection is used to protect consumers by clearly indicating the source of goods or services and differentiating them from the goods or services of another provider. A servicemark is a form of trademark that is used to distinguish a service.
The rights to a particular trademark or servicemark may be secured two ways: (a) through use of the mark in the United States to distinguish goods or services in the ordinary course of trade, or (b) by obtaining a Federal registration of intent to use the mark in commerce.
Commerce includes the interstate sale of goods or services, the sale of goods or services between the United States and a foreign country and many activities that appear to be entirely within one state.
First bona fide use of a mark creates a right of priority that may prevent other users from offering particular goods or services under confusingly similar marks. Yet, trademark and servicemark rights may be lost or restricted in a variety of ways. Several common ways in which trademark rights are lost or restricted are provided below.
Modifying the mark or using the mark on other goods
Trademark and servicemark rights are extended to the owner of the mark only within the scope of use defined by its original use and/or the classification of goods or services stated in the Federal register. Applying the particular mark to other goods or services may result in forfeiture or restriction of trademark or servicemark protection.
Deliberating with foreign use
Foreign use of a particular trademark or servicemark has no effect on United States priority. Similarly, use of the mark within the U.S. may be insufficient to claim priority in a foreign country. The opportunity to register a mark in a foreign country may be lost if the potential owner of the mark fails to be the first to use the mark or fails to be the first to file for registration in that country.
Failure to oppose similar registrations
In the United States, opposition to similar trademarks or servicemarks must be made within 30 days after publication of the mark on the Principal register. To ensure the broadest possible protection for a specific trademark or servicemark, potential “confusingly similar marks” should be challenged immediately. Failure to oppose such marks may result in the loss of some or all rights afforded under trademark laws.
Failure to prove actual use
After filing an application for registration based upon a bona fide intent to use a trademark or servicemark in commerce, actual use of the mark must be proven to preserve the rights and protection provided under Federal registration. Evidence of such use must be provided to the proper authorities within 6 months of approval of any Intent to Use application. An affidavit of continued use of the mark must be filed during the 5th year after registration.
Failure to renew
Trademark registration does not last indefinitely. Consequently, without timely renewal, Federal registration of a particular mark, and all those rights associated with such registration, may be lost. Filing for renewal of trademark or servicemark registrations is permitted only in the period beginning at 9 years 6 months from the date of registration and ending at 10 years 3 months from the registration date.
Failure to enforce
Trademarks and servicemarks protect consumers by clearly indicating the source of goods or services and differentiating them from the goods or services of another provider. A mark loses its distinctiveness and significance when an owner fails to take timely action against infringers. Consequently, every attempt should be made to enforce proper use of the mark and prevent the use of “confusingly similar” marks.
Abandonment
Trademark rights cease to exist after nonuse coupled with an intent not to resume use. Misuse of the mark, for example, the formation or execution of a license agreement without proper quality controls may constitute abandonment. A court may presume abandonment in cases where conditions of nonuse have existed for 2 or more consecutive years.
Misuse of the mark
Several improper applications of a particular trademark or servicemark may constitute misuse of a mark and result in the cancellation of registration. For example, registration may be cancelled if the mark has become the generic name for the goods or services for which it is registered. In addition, registration may be cancelled if the mark has been used so as to misrepresent the source of goods or services with which it is associated. As a result, trademarks and servicemarks should be selected and used in a manner that clearly distinguishes the particular mark from the generic title of the goods or services to which they are applied.